Complainant is Petróleo Brasileiro S.A. – Petrobrás of Rio de Janeiro, Brazil, represented by Siqueira Castro Advogados, Brazil.
Respondent is Gustavo Dantas, petrobras2011 of Ubatuba, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2012. On March 29, 2012, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name. On March 30, 2012, Melbourne IT Ltd. transmitted by email to the Center its verification response confirming that 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
The 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 registrar’s verification response, the disputed domain name was registered on April 27, 2011. 5. Parties’ Contentions A. Complainant
Complainant alleges that the disputed domain name reproduces its registered trademark PETROBRAS and is, therefore, both identical and confusingly similar to its trademark.
Complainant argues that Respondent has no rights or legitimate interests over the disputed domain name, as Respondent is not known by the disputed domain name, Respondent is not using the disputed domain name 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 name.
Complainant finally contends that the disputed domain name was registered and is being used in bad faith. Complainant states that it would be impossible for Respondent, who lives in the city of São Paulo, Brazil, to ignore Complainant’s trademark rights over the trademark PETROBRAS. Complainant also argues that Respondent’s passive holding of the disputed domain name can be considered bad faith use. Complainant also conveys that Respondent apparently provided false information on the WhoIs record, which would be another evidence of bad faith registration and use of the disputed domain name. 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 disputed domain name is 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 name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly to Complainant’s PETROBRAS trademark. The Panel finds that the addition of a number, such as “2011”, is not enough to escape a finding of confusing similarity. Also, under the Policy, the addition of the generic top level domain “.biz” 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 name that contains in its entirety Complainant’s PETROBRAS trademark.
Complainant has made a prima facie case in support of its allegations and, therefore, the burden of production of evidence shifts to Respondent to show that it does have rights or legitimates interests in the disputed domain name, 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 name.
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 name or a name corresponding to the disputed domain name 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 name.
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 name and has not used the disputed domain name, 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 name which totally reproduces Complainant’s famous trademark PETROBRAS. In this Panel’s view, by the time the disputed domain name was 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 name was registered. The Panel finds that the Respondent must have been aware of the Complainant’s rights in the mark and, further, that Respondent consciously infringed Complainant’s trademark when it registered the disputed domain name.
Also, the disputed domain name currently resolves to an unavailable web page, which, according to several prior UDRP decisions, is considered a case of passive holding of the domain name. Prior decisions have ruled that in such cases the use of the domain names in dispute is not essential to establish bad faith. 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 name 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 name be transferred to Complainant.
Luiz E. Montaury Pimenta
Sole Panelist
Dated: May 24, 2012
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