WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comisión Federal de Electricidad v. Jose Luis Ocampo Moreno
Case No. D2016-1373
1. The Parties
The Complainant is Comisión Federal de Electricidad of Mexico City, Mexico, represented internally.
The Respondent is Jose Luis Ocampo Moreno of Mexico City, Mexico.
2. The Domain Name and Registrar
The disputed domain name <cfemx.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2016. On July 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 6, 2016, 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 July 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2016.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on August 22, 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.
The Complainant submitted that English is the language of the proceeding since the disputed domain name’s registration agreement is written in English. The Complainant therefore filed the Complaint in English. Pursuant to the default rule provided by paragraph 11(a) of the Rules, the Panel finds that English is the controlling language of the instant administrative proceeding.
4. Factual Background
The Complainant, which was created in 1937, is Mexico’s state-owned power company. As from October 2009, the Complainant is the sole supplier of electricity in Mexico. The Complainant’s website is located at “www.cfe.gob.mx”.
The Complainant is the owner of a number of Mexican trademarks consisting of or including the CFE acronym, since as early as July 28, 2005. For instance, the Complainant is the owner of Mexican trademark no. 1080751 CFE, registered on January 23, 2009 for goods in International class 9.
The disputed domain name was registered on October 6, 2015, as confirmed by WhoIs and the Registrar. The disputed domain name is currently inactive but once resolved to a web portal misrepresented as the Complainant’s own website.
5. Parties’ Contentions
In summary, the Complainant contends as follows:
i. The disputed domain name’s strongest and most distinctive term is “cfe”, which is in turn the Complainant’s well-known mark CFE;
ii. The letters “mx” and the suffix “.com” are non-distinctive elements which do not prevent the confusing similarity of the disputed domain name with the Complainant’s CFE mark;
iii. The Respondent does not have rights or legitimate interests in the disputed domain name, nor could Respondent have such rights since the Complainant is the only entity holding trademark rights in Mexico over CFE;
iv. Even if the Respondent could assert legitimate interests stemming from a purported condition of reseller or promoter of electricity services, the Respondent does not fulfil the requirements set forth in the Oki Data case in order for distributors or resellers to demonstrate rights or legitimate interests per the Policy;
v. The Complainant has never granted a license or authorization in connection with the use of its CFE mark;
vi. As evidenced by the searches conducted on Google, CFE is the Complainant’s well-known acronym;
vii. The Respondent is using the disputed domain name to attract Internet users looking for the Complainant’s services, only to find an empty website;
viii. The Respondent is taking advantage advantage from the Complainant’s well-known mark CFE with the sole purpose of disrupting the Complainant’s commercial activity on the Internet and to probably benefit from the website’s traffic monetization;
ix. The Respondent’s website is an imitation of the Complainant’s official website, as proven by the Wayback Machine’s search report;
x. The disputed domain name was registered and is being used with knowledge of the Complainant’s rights in the CFE mark since the Respondent is domiciled in Mexico, as shown by WhoIs;
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that:
i. the disputed 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 the disputed domain name; and
iii. the disputed domain name was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
As explained in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the test for confusing similarity under the UDRP involves a straightforward visual or aural comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent Internet user confusion.
The Panel finds that “cfe” is readily recognizable within the disputed domain name as the Complainant’s well-known acronym CFE, which is widely used as a service mark throughout Mexico.
In the Panel’s opinion, the addition of “mx” reinforces rather than dispels the disputed domain name’s confusing similarity with the Complainant’s distinctive mark. Furthermore, Complainant is incorporated and operates in Mexico, the country to which the “mx” thread relates1 .
As a result, the Panel holds that the disputed domain name is confusingly similar to the Complainant’s CFE mark.
Accordingly, the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that “any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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.”
As noted in paragraph 2.1 of the WIPO Overview 2.0, the burden of proof is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).
On this element, the Complainant submits:
First, that it did not authorize use of its CFE mark in the disputed domain name.
Second, that the Respondent cannot demonstrate rights in the disputed domain name that are superior to the Complainant’s exclusive rights over the CFE mark, and
Third, that the Respondent’s use of the disputed domain name gives no rise to any rights or legitimate interests under the Policy.
In light of the above representations and submissions, the Panel is persuaded that no apparent rights or legitimate interests within the meaning of the Policy can be elicited from the disputed domain name’s prior use intended to confuse and deceive visitors into thinking that they had reached the Complainant’s legitimate website.
As such, it cannot be said that the disputed domain name has been used in connection with a bona fide offering of goods or services in the sense of paragraph 4(c)(i) of the Policy. The disputed domain name’s ongoing inactivity cannot entail either a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii), without intent for commercial gain to misleadingly divert consumers or to tarnish the CFE mark.
Since the disputed domain name remains inactive, the Panel finds that the Respondent could not have made a showing of legitimate rights or interests as per the criteria set forth in Oki Data2 (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).
The Panel therefore finds that the Respondent has no rights or legitimate interests per the Policy.
This conclusion is only reinforced by the Respondent’s default in the instant proceedings. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221 (finding that the respondent’s failure to respond can be construed as an admission that it has no rights or legitimate interests in the disputed domain name).
Consequently, the Complainant has satisfied the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires a complainant to show that the disputed domain name has been registered and is being used in bad faith in order to be successful in its complaint. Paragraph 4(b) of the Policy sets forth the following non-exclusive grounds of bad faith registration and use:
“(i) circumstances indicating that you [the respondent] 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] 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 [the respondent] have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent’s] 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 [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.”
The Panel notes that the CFE mark is widely used across the Mexican territory as a result of the Complainant being the sole supplier of electricity services in Mexico, where the Respondent is domiciled. Put differently, every household and workplace in Mexico periodically receives an invoice showing the CFE mark prominently. The CFE mark is also displayed in Complainant’s numerous customer service offices located throughout Mexico.
It follows that, when it registered the disputed domain name, the Respondent could not have been unaware of the Complainant’s exclusive rights in the CFE mark.
Against this backdrop, the Panel finds that the disputed domain name’s registration was in bad faith since the Respondent sought to attract visitors to the disputed domain name by generating confusion with the Complainant.
Moreover, in the Panel’s opinion, the Wayback Machine printouts tendered by the Complainant clearly show that the disputed domain name was originally associated with a website falsely claiming to pertain to the Complainant itself. This falsehood evinces bad faith use under the Policy. The disputed domain name’s current inactivity is further evidence of bad faith.
In sum, the Panel holds that the disputed domain name was registered and is being used in bad faith within the meaning of the Policy.
The Complainant has therefore discharged its burden in connection with paragraph 4(a)(iii) of the Policy.
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 <cfemx.com> be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Date: September 12, 2016
1 See ISO 3166 setting the international standard for country codes at “http://www.iso.org/iso/home/standards/country_codes.htm. “
2 Three out of four factors being related to the bona fide use of the disputed domain name as reflected in the content of the Respondent’s website.