Petroleos Mexicanos v. Luis Alberto Miramontes / Comercializadora Teknodigital SA de CV
Claim Number: FA1904001840483
Complainant is Petroleos Mexicanos (“Complainant”), represented by David Taylor of Hogan Lovells (Paris) LLP, France. Respondent is Luis Alberto Miramontes / Comercializadora Teknodigital SA de CV (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pemex.us>, registered with Wild West Domains, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 25, 2019; the Forum received payment on April 25, 2019.
On April 26, 2019, Wild West Domains, LLC confirmed by e-mail to the Forum that the <pemex.us> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 2, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@pemex.us. Also on May 2, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 28, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant operates a state-owned oil production company in Mexico, founded in 1938. Complainant has rights in the PEMEX mark through its trademark registrations around the world, including with the Mexican Institute of Industrial Property (“MIIP”) (e.g., Reg. No. 522,165, registered May 16, 1996). Respondent’s <pemex.us> domain name is identical or confusingly similar to Complainant’s mark, as it fully incorporates the mark and adds the “.us” country code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interest in the <pemex.us> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed or otherwise permitted Respondent to use Complainant’s PEMEX mark. Additionally, Respondent does not use the disputed domain name for a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather the Respondent uses the disputed domain name in connection with a consulting business for those seeking advice on how to do business with the Complainant.
Respondent has registered or is using the <pemex.us> domain name in bad faith. Respondent registered the disputed domain name with the intent to sell it for more than out-of-pocket costs. Respondent also attempts to attract, for commercial gain, users to the disputed domain name where it purports to offer consultancy services for those seeking to engage with Complainant. Respondent also failed to respond to Complainant’s cease and desist letter. Furthermore, Respondent had actual and constructive knowledge of Complainant’s rights in the PEMEX mark prior to registering and subsequent use of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Petroleos Mexicanos (“Complainant”), of Mexico City, Mexico. Complainant is the owner of domestic and international registrations for the mark PEMEX, which it has continuously used since at least as early as 1996, in connection with its provision of scientific and technological goods and services related to the entire oil refining and production process. Complainant is also the owner of the domain name <pemex.com> which it has owned, and done business from, for more than two decades.
Respondent is Luis Alberto Miramontes / Comercializadora Teknodigital SA de CV (“Respondent”), of Houston, Texas, USA. Respondent’s registrar’s address is indicated as Scottsdale, Arizona, USA. The Panel notes that Respondent registered the <pemex.us> domain name on or about June 25, 2012.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims right in the PEMEX mark through registration with the MIIP (e.g. Reg. No. 522,165 registered May 16, 1996). Evidence of registration with a trademark office, including the MIIP, is sufficient to establish complainant’s rights in the mark, under Policy ¶ 4(a)(i). See Daniel Jesus Chavez Moran and Desarrollo Marina Vallarta, S.A. DE C.V. v. MIGUEL PENA, FA 1735344 (Forum July 24, 2017) (finding that complainant had rights in a mark which it had registered with the Mexican Institute of Industrial Property). The Panel here finds that Complainant has rights in the PEMEX mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <pemex.us> domain name is identical or confusingly similar to Complainant’s mark, as it fully incorporates Complainant’s mark, merely adding a ccTLD. A disputed domain name can be found to be identical when complainant’s mark is used in its entirety and merely a gTLD or ccTLD is added, under Policy ¶ 4(a)(i). See Cards Against Humanity, LLC v. sri winarti, FA 1736823 (Forum July 31, 2017) (“The Panel therefore finds Respondent’s <cardsagainsthumanity.us> to be identical to Complainant’s CARDS AGAINST HUMANITY mark.”). Here, Respondent uses Complainant’s PEMEX mark in its entirety, merely adding the “.us” ccTLD. The Panel here finds that the Respondent’s <pemex.us> domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <pemex.us> domain name, as Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized or licensed by the Complainant to use Complainant’s mark. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). In the instant case the WHOIS information of record identifies the registrant of the disputed domain name as “Luis Alberto Miramontes”. No information on record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel here finds that under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <pemex.us> domain name.
As Respondent failed to file an answer in these proceedings, the Panel finds nothing in the available evidence to indicate Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Here, Complainant purportedly carried out a trademark search, and provided results that concluded Respondent did not own any marks that were identical to, or incorporated Complainant’s mark “pemex.” The Panel here finds that Respondent has no rights in Complainant’s mark or any marks identical to the disputed domain name and has therefore failed Policy ¶ 4(c)(i).
Complainant further argues that Respondent has no rights or legitimate interests in the <pemex.us> domain name, as Respondent use is not in connection with a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as the disputed domain diverts users seeking the Complainant. Use of a disputed domain name to offer goods or services by capitalizing on complainants mark and diverting users is evidence of lack of bona fide offering of goods or services and lack of a legitimate noncommercial or fair use, under Policy ¶¶ 4(c)(ii) and (iv). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Here, Complainant contends that Respondent uses the <pemex.us> domain name to offer consulting services to users interested in doing business with Complainant and commercially benefits from this use. The Panel here finds that Respondent has no rights or legitimate interests in the <pemex.us> domain name, as Respondent’s use is not in connection with a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) and (iv).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent used the <pemex.us> domain name in bad faith, as Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website. Use of a disputed domain name to either pass off as a complainant or create a false affiliation may be evidence of bad faith use under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”) Here, Complainant provides screenshots of the disputed domain name’s resolving website which features facsimiles of Complainant’s PEMEX mark in connection with a consultancy service for those wishing to engage with Complainant. The Panel here finds that Respondent used the <pemex.us> domain name in bad faith, as Respondent intentionally attracted and/or diverted internet users for commercial gain through unauthorized use of Complainant’s mark.
Additionally, Complainant argues that Respondent had actual or constructive notice of Complainant’s PEMEX mark. While constructive notice is not sufficient, actual notice can evidence of registration in bad faith under Policy ¶ 4(a)(iii). Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Here, Complainant provides evidence that Respondent has a history of registering domain names that infringe on Complainant’s mark, lists a business address in Mexico offering to consult those wanting to do business with Complainant, and appears to have worked for Complainant in the past. The Panel here finds that Respondent had actual notice of Complainant PEMEX mark, and thus registered and used the disputed domain name in bad faith as set forth under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the usTLD Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <pemex.us> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: June 11, 2019
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