The Parties
The Complainant is Petróleos Mexicanos, Mexico, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Marta Ramos, United States of America. 2. The Domain Name and Registrar
The Disputed Domain Name (the “Disputed Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2019. On April 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 25, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2019. An informal email communication from the Respondent was received by the Center on May 12, 2019. No further Response was submitted. The Center notified the Parties that it would proceed to panel appointment on June 3, 2019.
The Center appointed John Swinson as the sole panelist in this matter on June 6, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is Petróleos Mexicanos, a company incorporated in Mexico. According to the Complaint, the Complainant was founded in 1938 and is one of the largest oil companies in Latin America.
The Complainant owns a number of trade marks for PEMEX (“Trade Mark”) including:
- Mexican registered trade mark number 522165 for registered on May 16, 1996;
- United States registered trade mark number 4711044 for PEMEX, registered on March 31, 2015;
The Complainant also owns a number of domain names incorporating the Trade Mark, including which was registered on June 22, 1995.
The Respondent is Marta Ramos of the United States of America. No formal response was received from the Respondent and therefore little information is known about the Respondent. The Disputed Domain Name was registered on December 18, 2009. The website at the Disputed Domain Name currently resolves to a pay per click parking page. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Disputed Domain Name incorporates the entirety of the Trade Mark, with the addition of the words “English” and “Library”. These descriptive terms do not prevent a finding of confusing similarity with the Complainant’s Trade Mark as the Trade Mark is clearly recognizable in the Disputed Domain Name.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name because:
- There is no prior business relationship between the parties. The Complainant has not authorised the Respondent to use the Trade Mark in the Disputed Domain Name.
- The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name has previously resolved to a website titled “Pemex English Digital Library” which purports to offer information about the Complainant’s commercial oil and gas activities. The website offered users the ability to browse and download some of Pemex’s technical documents and regulations.
- The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name as the Respondent has offered translated documents belonging to the Complainant through its website. It is reasonable to assume that the Respondent has been making a profit from these documents.
Registered and Used in Bad Faith
The Disputed Domain Name was registered and is being used in bad faith. The Trade Mark is highly distinctive and the Complainant has developed considerable reputation in the Trade Mark as a result of its widespread use over the past 79 years.
The Respondent has engaged in a pattern of abusive conduct by registering a number of domain names incorporating the Trade Mark.
The Respondent is using the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s Trade Mark. The Respondent has used the Disputed Domain Name to provide documents which belong to the Complainant, in an attempt to deliberately cause confusion amongst Internet users. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant even though the Respondent failed to submit a response. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name incorporates the entirety of the Trade Mark, with the additions of the words “English” and “Library”. Where the relevant trade mark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) do not prevent a finding of confusing similarity under the first element (see section 1.8 of the WIPO Overview 3.0). In this case the terms “English” and “Library” do not dispel such similarity, as they are descriptive terms.
The Trade Mark is clearly recognizable in the Disputed Domain Name and therefore the Complainant succeeds on the first element. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel considers the Complainant has made out a prima facie case. This finding is based on the following:
- The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name has previously resolved to a website titled “Pemex English Digital Library” which purports to offer information about the Complainant’s commercial oil and gas activities. The website offered users the ability to browse and download some of the Complainant’s technical documents and regulations. The Respondent has not been authorised by the Complainant to provide such documents.
- The Panel accepts the Complainant’s submission that the Complainant has not authorised or otherwise given the Respondent permission to use the Trade Mark in the Disputed Domain Name.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation to this name. The Complainant concedes that the Respondent registered a company name for “Pemex English Library”, however this is no longer valid.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The website at the Disputed Domain Name currently resolves to a pay per click parking page. However, the Complainant has submitted evidence that the Disputed Domain Name previously resolved to a website which provided the Complainant’s documents. The Panel accepts the Complainant’s submission that it is reasonable to infer that the Respondent is or was obtaining commercial gain from the website.
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Respondent registered the Disputed Domain Name on December 17, 2009. This is 13 years after the Complainant commenced using the Trade Mark.
Previous UDRP panels have found that where the reputation of a complainant in a given mark is significant and the mark has strong similarities to the Disputed Domain Name, the likelihood of confusion is such that bad faith may be inferred (see, e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909 and cases cited therein). Given the Complainant’s reputation, and the content displayed on the Respondent’s website, the Panel finds it highly unlikely that the Respondent was not aware of the Trade Mark at the time the Respondent registered the Disputed Domain Name.
This is reinforced by the Respondent’s use of the website at the Disputed Domain Name. Whilst the website at the Disputed Domain Name currently resolves to a pay per click parking page, the Complainant has provided evidence that the website at the Disputed Domain Name was previously used to provide unauthorised copies of the Complainant’s documents.
The Panel considers that the Respondent is intentionally attempting to attract, for commercial gain users to its website by creating a likelihood of confusion with the Trade Mark, which is evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
The Complainant has also provided evidence that the Respondent has previously registered a number of domain names which infringe the Complainant’s Trade Mark. The Panel considers that the Respondent has engaged in a pattern of conduct of registering domain names to prevent the Complainant from reflecting their trade marks in those domain names, which is a further indicator of bad faith registration and use under paragraph 4(b)(ii) of the Policy.
In light of the above, the Panel finds that the Complainant has succeeded on the third element of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainant.
John Swinson
Sole Panelist
Date: June 18, 2019
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