Complainant is Petróleos Mexicanos of Mexico City, Mexico, represented by Hogan Lovells (Paris) LLP, France.
Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Gerardo Miramontes of Mexico City, Mexico, self-represented. 2. The Domain Name and Registrar
The disputed domain name is which is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2017. On December 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 29, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 10, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 12, 2018.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on January 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 5, 2018. On February 5, 2018, Respondent sent an email communication in which it expressed its intention to settle the dispute. Further to the possible settlement email sent to the Parties by the Center on February 6, 2018, Complainant did not submit a request for suspension. Accordingly, on February 14, 2018, the Center notified the Parties that it would proceed to the panel appointment.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on February 23, 2018. This Panel finds that it was properly constituted. This 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
Complainant is a Mexican state-owned entity, created in 1938, engaged in exploration, exploitation, refining and marketing of oil and hydrocarbons generally.
Complainant has rights over the PEMEX and design trademark for which it holds, among others, registration No. 522165 with the Mexican Institute of Industrial Property (“IMPI”), registered on May 16, 1996, in class 4, and also has rights over the PEMEX trademark for which it holds registration No. 4711045 with the United States Patent and Trademark Office, registered on March 31, 2015, in classes 35 and 42.
On May 27, 2011, such Complainant’s PEMEX and design trademark was declared to be a famous mark in Mexico by the IMPI.
Complainant is the registrant of the following domain names: created on May 31, 1995, created on December 19, 1997, and created on July 24, 2009, among others.
The disputed domain name was registered on June 25, 2012. At the time the Complaint was filed, the website associated to the disputed domain name showed, among others, the legends “Bienvenido a PEMEX.TV” and “Sitio en venta”, and displayed a background image of airplanes leaving smoke trails in green, white and red. 5. Parties’ Contentions A. Complainant
Complainant’s assertions may be summarized as follows.
Complainant, commonly known as “Pemex”, is one of the world’s leading oil companies. Since it was founded in 1938, Complainant has been the exclusive producer of Mexico’s oil and gas.
Complainant operates around 454 production fields, 30,000 production wells, 300 oil platforms, 6 refineries, 8 petrochemical complexes, 17,000 kilometers of oil and petrochemical pipelines, 9 gas processing centers, and 20 LPG distribution terminals. In addition, Complainant operates more than 11,500 service stations throughout Mexico.
In 2012 and 2013 Complainant was ranked 8th amongst the world’s 25 biggest oil companies, according to Forbes magazine, placed 34 in Fortune’s Global 500, and ranked 7th crude oil producer worldwide and 11th overall, according to Petroleum International Weekly’s Top 50 Rankings of the World’s Oil Companies.
Complainant’s PEMEX brand has been extensively used for nearly 80 years and has acquired and developed considerable goodwill and renown worldwide. In 2011, the IMPI issued a declaration certifying that PEMEX is a famous trademark, which was updated in 2017. PEMEX’s status as a famous trademark was also recognized in several court decisions, including, for instance, in Canada, the United States and Spain.
Complainant owns numerous domain names consisting of the term Pemex, including which points to its main website, as well as, for instance, , , , , and . Complainant has made substantial investments to develop a strong presence online by being active on the different social media forums available, including Facebook, Twitter, LinkedIn and YouTube.
The term Pemex, made up from the first syllable of each word of Petróleos Mexicanos, is inherently distinctive and is exclusively associated with Complainant. All search results obtained by typing the term Pemex into the Google search engine refer to Complainant.
The disputed domain name points to a website stating “Bienvenido a PEMEX.TV” and offering the disputed domain name for sale, and displaying a background image of airplanes leaving a coloured smoke trail, clearly evoking the Mexican flag with the red, white and green colours which are central to Complainant’s branding. The website associated to the disputed domain name also displays several social media icons, such as Facebook and Twitter, allowing Internet users to advertise on their social media page that the disputed domain name is for sale.
The disputed domain name is identical or confusingly similar to Complainant’s PEMEX trademark. The disputed domain name wholly incorporates the PEMEX trademark. A Top-Level Domain (“TLD”), such as “.tv”, is immaterial for the purposes of assessing whether a disputed domain name is identical or confusingly similar to a trademark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not an authorized dealer, distributor or licensee of Complainant, nor has Respondent been otherwise allowed by Complainant to make any use of its PEMEX trademark in a domain name or otherwise. Respondent cannot conceivably assert that it is commonly known by the term Pemex, given the distinctive character and renown of Complainant’s PEMEX trademark and its exclusive association with Complainant.
There is no evidence of any attempt by Respondent to use the disputed domain name in connection with a bona fide offering of goods and services. Respondent’s use of the disputed domain name to point to a website ostentatiously offering the disputed domain name for sale cannot possibly be considered a bona fide offering of goods or services. Given that the disputed domain name identically reproduces Complainant’s PEMEX trademark, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name that would not be illegitimate.
The disputed domain name was registered and is being used in bad faith. It is inconceivable for Respondent, who is based in Mexico and has strong ties with Mexico (as strongly suggested by the fact that the associated website is in Spanish and displays the colours of the Mexican flag and aircrafts from the Mexican air force), to argue that it was unaware of Complainant and its rights at the time of registration of the disputed domain name. Respondent had actual and constructive knowledge of Complainant and its rights at the time of registration of the disputed domain name and thus registered the disputed domain name in bad faith.
Respondent’s use of the disputed domain name to point to a website offering for sale the disputed domain name leaves no doubt as to the fact that Respondent deliberately registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to Complainant or one of its competitors, being reasonable to infer that Respondent intended to do so for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name.
By using the disputed domain name, Respondent is causing “initial interest confusion” amongst users searching for Complainant. Internet users would expect to find a website that is affiliated to or sponsored by Complainant at a domain name incorporating the exact PEMEX trademark.
Respondent is attempting to misappropriate the goodwill and reputation attached to Complainant’s PEMEX trademark. Respondent’s use of the disputed domain name to point to a website offering the disputed domain name for sale is very strong evidence that Respondent is using the disputed domain name for commercial gain, to unduly take advantage of the goodwill and renown attached to Complainant’s PEMEX trademark.
Given the strength and renown of Complainant’s PEMEX trademark there simply cannot be any actual or contemplated good faith use of the disputed domain name by Respondent. The fact that Respondent deliberately chose to conceal its identity by means of a privacy protection service is another strong indication of Respondent’s bad faith.
Complainant requests that the disputed domain name be transferred to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. In response to the Center’s Complaint notification, on February 5, 2018, the Center received an email communication from the email address corresponding to Respondent as per the WhoIs, which in essence contains the following: “My name is Gerardo Miramontes Carrillo, from Compañía Comercializadora Teknodigital S.A. of C.V. who is the legitimate owner of the rights of the Pemex.TV site […] they are not interested in having a legal battle for the rights of the Pemex.TV site, given that it was a business initiative to provide consultancy services several years ago […] we are willing to deliver the aforementioned sites, as well as the twitter account in exchange for compensation that you propose and that would be put to the consideration of the shareholders’ meeting of Comercializadora Teknodigital S.A. of C.V.”. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
As regards who is the proper Respondent in this case, pursuant to paragraph 1 of the Rules “Respondent means the holder of a domain name registration against which a complaint is initiated”. The Complaint filed with the Center on December 28, 2017, named Registration Private, Domains By Proxy, LLC as respondent. A printout of the corresponding WhoIs attached to the Complaint showed the latter as the registrant of the disputed domain name. At the Center’s request, the Registrar sent its registrar verification on December 29, 2017, disclosing Gerardo Miramontes as the registrant of the disputed domain name, and thus on January 12, 2018, Complainant filed an amended Complaint adding Gerardo Miramontes as respondent. Due to the above, this Panel decides to have Gerardo Miramontes as the proper respondent and thus further references to Respondent herein shall be understood to Gerardo Miramontes.1
The informal email communication from Respondent referred to above cannot be deemed as an official response since it does not comply with the requirements set forth in the Rules, paragraph 5(c). The lack of response from Respondent does not automatically result in a favorable decision for Complainant (see Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465). The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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. A. Identical or Confusingly Similar
It is undisputed that Complainant has rights in the PEMEX and the PEMEX and design trademarks.
The disputed domain name consists of the word “pemex” in its entirety and the specific TLD “.tv”. Since the addition of a TLD suffix after a domain name is technically required, such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a mark. Further, it is well established that a domain name can only consist of an alphanumeric string, and cannot incorporate figurative, or device elements of a mark (see, for instance, Boehringer Ingelheim Pharma GmbH & Co. KG v. Azura Abendroth,WIPO Case No. DTV2015-0003 and Park Place Entertainment Corporation v. Mike Gorman,WIPO Case No. D2000-0699). Based on the above, it is clear that the disputed domain name is identical to Complainant’s trademarks.
Thus this Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
The evidence in the file shows that the PEMEX and design trademark has been used in commerce for a number of years and that it was declared famous by the IMPI before the registration of the disputed domain name. Further, for this Panel it is a notorious fact that, at least in Mexico, Complainant is commonly and widely known as “Pemex”. Complainant asserts that it has never authorized Respondent to use its trademarks, and that Respondent is not commonly known by the disputed domain name.
This Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name.2 In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name by Respondent.
Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith, which Respondent chose not to rebut.
Taking into consideration that Complainant has been widely known as “Pemex”, that its PEMEX and design trademark was deemed as a famous trademark in Mexico by the IMPI and that Respondent is domiciled in Mexico, this Panel is of the view that Respondent must have been aware of the existence of Complainant and its trademarks at the time it obtained the registration of the disputed domain name. Prior UDRP panel decisions have found that registration and use in any form of a famous trademark which belongs to somebody else, without proving any rights or legitimate interests in it, represents bad faith registration and use.3
Complainant supplied a screenshot of the website linked to the disputed domain name, which shows “Bienvenido a PEMEX.TV” and “Sitio en venta”, which may be deemed as passive holding absent any offer of products or services or any information on any topic. Several UDRP decisions have held that the passive holding of a domain name that incorporates a well-known trademark, without obvious legitimate purpose, may be deemed to be bad faith use under paragraph 4(a)(iii) of the Policy.4 It seems to this Panel that there are no bases to conceive a legitimate use of the disputed domain name by Respondent.5 In reaching that conclusion, this Panel has taken into account, in addition to the circumstances mentioned above, the following: (i) the disputed domain name incorporates Complainant’s trademark in its entirety, (ii) Respondent is using Complainant’s trademark at the disputed domain name without Complainant’s authorization, (iii) the PEMEX and PEMEX and design trademarks are undoubtedly identified with Complainant, (iv) the sale announcement of the disputed domain name in the website associated to it, and (v) the lack of Response, which is indicative that Respondent either has no interest in the disputed domain name or lacks arguments and evidence to support its holding of the disputed domain name.
Thus the overall evidence in the file indicates that Respondent’s choice of the disputed domain name was deliberate for its identity with, and with the likely intention to benefit from the reputation and goodwill of Complainant and Complainant’s trademarks, which denotes bad faith.
In light of the above, this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name be transferred to Complainant.
Gerardo Saavedra
Sole Panelist
Date: March 9, 2018
1 The use of privacy service providers, the disclosure of underlying registrants and the determination of the proper respondent have been dealt with in several UDRP panel decisions. For instance, see The iFranchise Group v Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658],WIPO Case No. D2007-1438; and Costco Wholesale Corporation and Costco Wholesale Membership, Inc., v Yezican Industries and Domains By Proxy, Inc.,WIPO Case No. D2007-0638. See also section 3.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
2 See section 2.1 of the WIPO Overview 3.0. Also, Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim,WIPO Case No. D2003-0400: “There is no evidence that the Complainant authorized the Respondent to register the disputed domain name or to use the CASIO trademark […] These circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent”.
3 See DaimlerChrysler Corporation v. Web4COKK SRL Romania,WIPO Case No. DRO2006-0003; and Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163.
4 See sections 3.1 and 3.3 of the WIPO Overview 3.0.
5 See Ferrari S.p.A. v. Ms. Lee Joohee (or Joo-Hee), WIPO Caso No. D2003-0882: “Respondent has provided no evidence or suggestion of a possible legitimate use of the Domain Name. Thus, in the words of Telstra, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate”.
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