WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comisión Federal de Electricidad v. Whois Privacy Services Pty Ltd. / Lisa Katz, Domain Protection LLC
Case No. D2015-2303
1. The Parties
The Complainant is Comisión Federal de Electricidad of México Distrito Federal, Mexico represented by María del Carmen Arteaga Alvarado, México.
The Respondent is Whois Privacy Services Pty Ltd. of Queensland, Australia, Lisa Katz, Domain Protection LLC of Dallas, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <comisionfederaldeelectricidad.com> is registered with Fabulous.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 18, 2015. On December 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 2015, 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 the Complainant on January 4, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 8, 2016.
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 the Respondent of the Complaint, and the proceedings commenced on January 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 4, 2016.
The Center appointed Pablo Palazzi as the sole panelist in this matter on February 16, 2016. 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 an electric company owned by the Mexican Government, widely known as Comisión Federal de Electricidad or by its initials C.F.E. The Complainant was created in the year 1937 and it is the country's second biggest state-owned company, with legal personality, assets, having technical, operational and management autonomy. The Complainant is responsible for the generation, transmission and sale of electricity in Mexico.
The Complainant is the owner of several trademarks in Mexico. For purposes of this case, it matters that the Complainant is the owner of the Mexican trademark CFE COMISIÓN FEDERAL DE ELECTRICIDAD (and design). The trademark was filed on November 27, 2008 and granted on January 26, 2009 (registry no. 1080996).
The disputed domain name was created on March 30, 2005. The WhoIs record was updated on December 21, 2015, and at the time of filing the Complaint it links to a website that contains pay-per-click advertising.
5. Parties' Contentions
The Complainant is the owner of several trademarks covering a vast number of products and services including the trademark CFE COMISIÓN FEDERAL DE ELECTRICIDAD. Therefore, it is clear that the Complainant is the only company entitled to exploit and to authorize the use and exploitation of the referred trademarks, along with the fact that its name was created in 1937.
The Complaint states that in this case, the disputed domain name is identical or at least confusingly similar to the CFE COMISIÓN FEDERAL DE ELECTRICIDAD trademark and also identical to the Complainant's name.
The Complainant states also with respect to the date of registration of the disputed domain name that although the trademarks were filed after the disputed domain name registration, under paragraph 4(a)(i) of the Policy, it is irrelevant if the trademark was registered before the registration of the disputed domain name. The Complainant adds that the disputed domain name is the full name of the company, situation that is not coincidental because the Complainant was incorporated in the year 1937.
With respect to legitimate interest, the Complainant states that it would be impossible that the Respondent would have any right or legitimate interest over the disputed domain name because the Complainant is the only entity in Mexico entitled to be the legitimate owner of the rights over several trademarks registrations. The Complainant is a governmental corporation and the unique provider of electricity in Mexico.
The Complainant also states that the Respondent is not known among the electricity market or in any other media, with the Complainant's trademark and name. The Complainant also argues that they have never granted a license or authorization to use its trademarks or its name in the disputed domain name.
The Complaint states that the Complainant's name has been recognized in Mexico at least since the year 1937. Therefore the Complainant's creation and use of its name was previous to the registration of the disputed domain name. The Complainant adds that the date of registration of the disputed domain name was sixty eight (68) years after the creation of the Complainant in Mexico and ten (10) years after the creation of the Complainant's main domain name <cfe.gob.mx>.
According to the Complaint, this means that the Respondent registered the disputed domain name with knowledge of the Complainant's registered trademarks and name.
With respect to bad faith, the Complainant argues that the disputed domain name was registered and is being used in bad faith.
The Complainant states that its trademark and name are not only recognized in Mexico, but are known in the United States and Latin America. Thus the Respondent could not allege a legitimate holding based on the argument that he did not have knowledge of the trademark or about the existence of the Complainant.
The Complainant states that the Respondent registered and is using the disputed domain name in bad faith, because he took advantage of the goodwill of the Complainant's trademark and name at the time of the domain name registration, creating confusion in order to divert Internet users to the Respondent's site. The registration of a domain name identical or confusingly similar to a third party's trademark is considered bad faith registration according to the Policy.
The Complainant also argues that the Respondent's use of a privacy shield gives rise to an inference of bad faith use and registration.
Finally, another sign of bad faith according to the Complaint is the use of a recognized trademark to attract consumers to the website, for a commercial gain, via the clicking on the parked links, commonly known as pay-per-click revenue.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements which a complainant must satisfy in order to succeed. The Complainant must satisfy that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of such domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision (see paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")).
In this case, the Panel conducted investigations using the DomainTools facility in order to access the complete WhoIs records and determine the correct date of registration of the disputed domain name by the Respondent.
According to the Domain tools database "www.domaintools.com", since September 2007 the disputed domain name was owned by a company called Texas International Property Associates, with domicile in Dallas, Texas, United States. The historical WhoIs record shows ownership of the disputed domain name by this company at least until November 11, 2010.
On January 2, 2011, the registrant is Whois Privacy Services Pty Ltd. After this Complaint was initiated, the Registrar verification in connection with the disputed domain name disclosed the Respondent names of Lisa Katz/Domain Protection LLC. From this the Panel infers that in November 2010 the Respondents Lisa Katz or Domain Protection LLC were not the owners of the disputed domain name.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established trademark rights in CFE COMISIÓN FEDERAL DE ELECTRICIDAD as evidenced by the trademark registration submitted with the Complaint, as mentioned above.
The Panel is also prepared to find that the disputed domain name <comisionfederaldeelectricidad.com> is confusingly similar to the Complainant's trademark CFE COMISIÓN FEDERAL DE ELECTRICIDAD.
The disputed domain name comprises exactly the same four words which form the name of the Complainant's entity. The disputed domain name is also identical to the trademark CFE COMISIÓN FEDERAL DE ELECTRICIDAD without the first three letters "CFE". The absence of the three letters "CFE" in the disputed domain name does not change this conclusion since CFE is the abbreviation of "Comisión Federal de Electricidad".
The addition of the generic Top-Level Domain ("gTLD") ".com" is tipically irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the trademark in the disputed domain name.
The Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain name.
Finally, the disputed domain name is not used in connection with a bona fide offering of goods or services. At the time of rendering this decision, the disputed domain name resolves to a website that only contains a list of sponsored links with the following notice "The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain owner maintain any relationship with the advertisers. In case of trademark issues please contact the domain owner directly (contact information can be found in whois)".
Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four criteria that are to be considered as evidence of the registration and use of a domain name in bad faith:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product."
These criteria are not exclusive and the Panel may conclude that the Respondent acted in bad faith where other circumstances reveal the bad faith nature of the registration and use of the disputed domain name.
The Panel concludes, on the evidence submitted by the Complainant and its own research, that the Respondent has registered and used the disputed domain name in bad faith.
The Panel believes that the Respondent knew of the Complainant's existence when the disputed domain name was registered due to several reasons:
- The disputed domain name is highly unique, referring to a company of the Mexican Government known as Comisión Federal de Electricidad. It is highly unlike that Respondent registered the disputed domain name without knowledge of the Complainant.
- The Complainant was created in the year 1937 and has been operating under that same name since then. The disputed domain name uses exactly the entire Complaint's name.
- The disputed domain name is confusingly similar to the Complainant's trademark, filed on the year 2008 and registered in the year 2009. As stated above, the disputed domain name was registered by the Respondents after November 2010.
- There is no doubt that the Complainant it is well-known: the Complainant is one of the biggest companies in Mexico, it is a governmental corporation and the unique provider of electricity in Mexico.
- There are several UDRP cases against Lisa Katz or Domain Protection LLC, all ordering the transfer of the domain name: the Panel made a search on public databases and was able to find 18 prior domain name case involving the Respondent. Some of the cases, in which the Respondent has been involved and found to have acted in bad faith are related to the energy sector, for example involving brands such as Lincoln Electric Company, Hess Corporation and Valero Energy Corporation. This is not a coincidence since the Complainant is related to the energy industry.
- The Respondent is using the disputed domain name for sponsored advertising, a classical example of bad faith use according to paragraph 4(b)(iv) of the Policy.
- The Respondent has not answered the Complaint.
- The Respondent was using a privacy service.
In light of all this evidence the Panel concludes that the disputed domain name was registered and is being used in bad faith.
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 <comisionfederaldeelectricidad.com> be transferred to the Complainant.
Date: March 1, 2016