The Complainant is Petroleo Brasileiro S.A – PETROBRAS of Rio de Janeiro, Brazil, represented by Mr. Santos, Brazil.
The Respondent is Chunnan Zhang of Guangzhou, China, represented by Chunhui LI, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2011. On September 9, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 15, 2011, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2011. On September 26, 2011, the Respondent requested to extend the Response due date until October 20, 2011. On September 26, 2011, the Center received the Complainant’s objection to the extension. On September 27, 2011, the Center granted an extension to the Response due date until October 10, 2011. The Response was filed with the Center on October 10, 2011.
The Center appointed Jonathan Agmon as the sole panelist in this matter on November 3, 2011. 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 a Brazilian energy company with presence in 27 countries around the world. The Complainant engages, among others, in exploration, production and refining of oil and natural gas. The Complainant is ranked as the 8th world biggest public companies by Forbes magazine.
The Complainant owns multiple trademark registrations for the mark PETROBRAS around the world. For example: Brazil trademark registration No. 004101260 – PETROBRAS, with the registration date of December 3, 1971; European Community trademark registration No. 003068211 – PETROBRAS, with the registration date of May 12, 2004; United States trademark registration No. 3722769 – PETROBRAS, with the registration date of December 8, 2009; United States trademark registration No. 3676471 – PETROBRAS with the registration date of September 1, 2009, and many others.
The Complainant has also developed its presence on the Internet and is the owner of multiple domain names containing the word “petrobras”: , , , , and . The Complainant is using these domain names in connection with its activities.
The Respondent is a retired worker, who is also a collector, among others of items regarding of the legendary ancient Chinese lucky animal, “Pi Xiu”.
On February 22, 2011, the Complainant’s legal representatives sent a cease and desist letter to the Respondent, informing the Complainant’s rights over trademark PETROBRAS and demanding the transfer of the disputed domain names to them.
The Respondent responded to the Complainant's letter on March, 30.2011. The Respondent argued that he has legitimate interests in the disputed domain name, and requested that the Complainant pay an amount of "U.S. $1800 million" to transfer the disputed domain name.
The disputed domain name was registered on December 16, 2009.
The disputed domain name currently leads to a webpage, which contains various ads and the following notice: “have your web site into the mobile world now”, “join the mobi world”, “the extension indicates to the user that the content has been optimized for mobile devices”, and “think mobi evaluate your website now”. 5. Parties’ Contentions A. Complainant
The Complainant argues that its PETROBRAS mark is very familiar to consumers in Brazil and in other countries. The Complainant also contends that the mark PETROBRAS generates an association with the Complainant regardless of the products and services offered to the consumers.
The Complainant further argues that the Respondent does not run any business under the name “petrobras” and has never used such expression to identify its products or services. The Complainant further contends that the Respondent does not own any trademark application or registration for the word “petrobras”.
The Complainant further argues that it did not authorized the Respondent to use of its PETROBRAS trademark.
The Complainant further argues that the Respondent is not using the disputed domain name with a bona fide offering of goods or services. The Complainant further contends that using the disputed domain name to present users “adchoices” cannot be considered a legitimate use of the disputed domain name.
The Complainant further argues that the Respondent intends to attract Internet users to the disputed domain name and to divert them from the Complainant's official website.
The Complainant further argues that the Respondent’s response to the cease and desist letter as well as the Respondent's offer, validates the fact that the Respondent registered the disputed domain name with the intention to obtain a monetary payment from the Complainant.
The Complainant further argues that by using the disputed domain name and having in its webpage advertisement links related to the Complainant’s activities, the Respondent’s is utilizing the Complainant’s goodwill and trademark for commercial gain.
The Complainant further argues that the Complainant's reputation precedes the registration of the disputed domain name. The Complainant further contends that the Respondent had knowledge of the Complainant’s business and use of its PETROBRAS mark when registering the disputed domain name.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent argues that the word “Petrobras” sounds exactly the same as the Chinese idiom for “Pi Xiu” “屁出不拉屎”. The Respondent contends that he registered the disputed domain name in hope of sharing his luck and story with others.
The Respondent further argues that he intends to use the disputed domain name as a personal blog with no intent for commercial gain.
The Respondent further argues that he intended to launch a website under the disputed domain name late October 2011.
The Respondent further argues that he is not responsible for the advertisement on the website at the disputed domain name. Therefore the Respondent claims he is not misleading the Complainant's customers.
The Respondent further argues he did not register the disputed domain name in bad faith.
The Respondent further argues the Complainant's assertion that it has presence in 27 countries around the world is false since the Complainant only has representation offices in countries outside of Brazil.
The Respondent further argues that the Complainant only has trademarks application for its marks in most of the world. The Respondent further contends that most of the Complainant's applications were filed after the disputed domain name was registered.
For all of the above reasons, the Respondent requests that the Complaint denied. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. As stated above, the Complainant is the owner of multiple trademark registrations for the mark PETROBRAS around the world. For example: Brazil trademark registration No. 004101260 – PETROBRAS, with the registration date of December 3, 1971; European Community trademark registration No. 003068211 – PETROBRAS, with the registration date of May 12, 2004; United States trademark registration No. 3722769– PETROBRAS, with the registration date of December 8, 2009; United States trademark registration No. 3676471 – PETROBRAS with the registration date of September 1, 2009, and many others.
The above trademark registrations nullify the Respondent's claims that the Complainant has no sufficient trademark rights in the word "petrobras" outside of Brazil.
The disputed domain name differs from the registered PETROBRAS trademark by the additional TLD “.mobi”.
The additional TLD ".mobi" is insufficient in distinguishing the disputed domain name from the Complainant's marks. Previous UDRP panels have asserted that the mere addition of a TLD to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the TLD “.mobi” is without legal significance since the use of a TLD is technically required to operate the domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical to a trademark in which the Complainant has rights, thus satisfying paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant claimed that the Respondent lacks rights or legitimate interests in respect of the disputed domain name.
The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant's trademark or a variation of it.
The Respondent claims that he registered the disputed domain name since he is a collector of items regarding the legendary ancient Chinese lucky animal, “Pi Xiu”. According to the Respondent the word “Petrobras” sounds exactly the same as the Chinese idiom for “Pi Xiu” – “pi chu bu la shi”.
Although “pi chu bu la shi” is different from “Petrobras” in the written form, a Chinese native speaker could find the phonetic similarity between these two expressions. However, a reasonable person can figure out without hesitation that this kind of phonetic similarity is not accidental but deliberately man-made. Therefore the Respondent’s argument is pretextual and unconvincing, and it can hardly provide the Respondent any right in registering the disputed domain name with the Complainant’s trademark in its entirety.
The Respondent also claims that he intends to use the disputed domain name as a personal blog with no intent for commercial gain. The Panel reviewed the web site operated under the disputed domain name by the Respondent but couldn't find a personal blog.
The Respondent failed to provide any other evidence or explanation why he has rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Respondent did not provide a bona fide explanation for selecting the disputed domain name. The Respondent's pretextual claims themselves do not provide a valid right or legitimate interest in the disputed domain name. Furthermore, the Respondent did not provide any evidence to support its claims or to show potential rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, thus satisfying paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which show that the Respondent registered the disputed domain name long after the Complainant registered its trademark. The Complainant owns registrations for the PETROBRAS trademark at least since 1971. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
It should be noted that the Complainant submitted further evidence to prove its long-lasting goodwill around the world. Therefore, the Respondent assertions that the Complainant is not known to Internet users in countries other than Brazil are denied.
The Respondent offered the Complainant to transfer the disputed domain name on exchange for monetary compensation which is clearly in excess of the Respondent’s out-of-pocket costs to register and maintain the disputed domain name. Circumstances where a respondent offers to sell the domain name for amounts, which are considered as valuable consideration in excess of the respondent's out of pocket costs directly related to the domain name, indicate bad faith on behalf of the respondent (see Merck KGaA v. Sunmeet Jolly,WIPO Case No. D2004-0195).
It is also noted that the disputed domain name is identical to the Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic for commercial purposes by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the identity between the disputed domain name and the Complainant's trademarks and the fact that the Respondent offered the Complainant to transfer the disputed domain name on exchange for an exaggerated monetary compensation, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
Accordingly, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 7. Decision
For all 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.
Jonathan Agmon
Sole Panelist
Dated: November 17, 2011
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