Complainant is Petróleo Brasileiro S.A. – Petrobrás of Rio de Janeiro, Brazil, represented by Siqueira Castro Advogados, Brazil.
Respondent is Ideal Educacional Tecnologia em Educação Ltda., Alaor Martho Jr. of Rio de Janeiro, Brazil. 2. The Domain Names and Registrar
The disputed domain names and are registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2012. On March 28, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain names. On March 28, 2012, eNom 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 April 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 2, 2012.
The Center appointed Luiz E. Montaury Pimenta as the sole panelist in this matter on May 10, 2012. 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
Complainant is a Brazilian energy company with presence in 28 countries around the world. According to Petroleum Intelligence Weekly (PIW), a publication that divulges the ranking of the world’s 50 biggest and most important oil companies in 2007, Petrobras was rated the world’s 7th biggest oil company with shares traded at stock exchanges.
Complainant registered and has been using several domain names containing the trademark PETROBRAS.
Complainant owns trademark registrations in Brazil and in several other countries for the trademark PETROBRAS and its variations.
According to the publicly available WhoIs information, the disputed domain names and were registered on July 30, 2011 and June 30, 2009, respectively. 5. Parties’ Contentions A. Complainant
Complainant alleges that the disputed domain names reproduce its registered trademark PETROBRAS and are, therefore, both identical and confusingly similar to its trademark.
Complainant argues that Respondent has no rights or legitimate interests over the disputed domain names, as Respondent is not known by the disputed domain names. Respondent is not using the disputed domain names in connection with a bona fide offer of goods or services. Complainant argues that, in fact, Respondent is not making any use of the disputed domain names.
Complainant finally contends that the disputed domain names were registered and are being used in bad faith. Complainant states that it would be impossible for Respondent, who lives in the city of Rio de Janeiro, Brazil, to ignore Complainant’s trademark rights over the trademark PETROBRAS. Complainant also argues that Respondent’s passive holding of the disputed domain names can be considered bad faith use of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested: (i) the domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names and (iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the disputed domain names are confusingly to Complainant’s PETROBRAS trademark and to Complainant’s domain names. Complainant has not argued this, but the Panel finds that the addition of generic terms and expressions such as “preparatorio” and “preparatoriopara” (which in Portuguese mean “preparatory” and “preparatory for”) is not enough to avoid a finding of confusing similarity under the first element of the Policy.
Also, under the Policy, the addition of the generic top level domain “.com” is immaterial when considering the issue of confusing similarity between a complainant's trade mark and a domain name.
The Panel, therefore, finds that Complainant has established the first condition of the paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain names that contain in their entirety Complainant’s PETROBRAS trademark.
Complainant has made a prima facie case in support of its allegations and, therefore, the burden of production shifts to Respondent to show that it does have rights or legitimates interests in the disputed domain names, according to paragraph 4(a)(ii) of the Policy. Respondent did not reply to Complainant’s contentions and, therefore, did not submit any evidence of rights or legitimate interests over the disputed domain names.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain names.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain names and has not used the disputed domain names, or a name corresponding to it, in connection with a bona fide offering of goods or services.
In view of the above, the Panel finds that Complainant has established the second condition of the paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that Respondent has intentionally registered the disputed domain names which reproduce in their entirety Complainant’s famous trademark PETROBRAS. By the time the disputed domain names were registered, it is unlikely that Respondent did not have knowledge of the Complainant’s rights on the trademark PETROBRAS, especially considering that Respondent, according to the publicly available WhoIs database, is located in Brazil.
Complainant’s allegations of bad faith are not contested. The evidence provided by Complainant confirms that it had long been using its PETROBRAS registered trademark when the disputed domain names were registered. The Panel finds that the Respondent must have been aware of the Complainant’s rights in the mark and, further, that Respondent knew about the Complainant’s trademark when it registered the disputed domain names.
Also, the disputed domain names currently resolve to an unavailable web page, which, according to several prior UDRP decisions, is considered a case of passive holding of the domain names. Prior decisions have ruled that in such cases apparent lack of so-called active use of the disputed domain names does not as such prevent a finding of bad faith. As the disputed domain names reproduce Complainant’s trademarks in its whole, there is no possible good faith use of them. See e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 3.2 ("WIPO Overview 2.0").
In light of these, the Panel finds Respondent registered and is using the disputed domain names in bad faith.
Complainant has therefore established the third element of the paragraph 4(a) of the Policy. 7. Decision
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 names and be transferred to Complainant.
Luiz E. Montaury Pimenta
Sole Panelist
Dated: May 25, 2012
Full & Egal Universal Law Academy