Complainant is Petróleo Brasileiro S.A. – Petrobras of Rio de Janeiro, Brazil, represented by Siqueira Castro Advogados, Brazil.
Respondent is Helder Rodrigues of Sabará, Minas Gerais, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2013. On January 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 2013, the Registrar 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 Respondent of the Complaint, and the proceedings commenced on February 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 27, 2013.
The Center appointed Eduardo Machado as the sole panelist in this matter on March 14, 2013. 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), Complainant 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 26, 2012. 5. Parties’ Contentions A. Complainant
Complainant alleges that the disputed domain name reproduce 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 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 name can be considered bad faith use of the disputed domain name. B. Respondent
The Respondent did not reply to 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) 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.
It is clear that the disputed domain bears exactly the same word “petrobras”, registered by the Complainant as a trademark, following by the word “juntos” which means in Portuguese “together”. In light of this, the Panel finds that mere addition of the word “juntos” is not enough to avoid a finding of confusing similarity under the element of the Policy.
The Panel, therefore, finds that Complainant has established the first element 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 contain 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 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 element 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 reproduce in its entirety Complainant’s well-known trademark PETROBRAS. 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 knew about the Complainant’s trademark when it registered the disputed domain name.
Also, the disputed domain name currently resolve to an unavailable web page, which, according to several prior UDRP decisions, is considered a case of passive holding of the domain name. Prior UDRP decisions have ruled that in such cases apparent lack of so-called active use of the disputed domain name does not as such prevent a finding of bad faith. As the disputed domain name reproduces Complainant’s well-known trademark PETROBRAS in its whole, the Panel finds that there is no possible good faith use of it. 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 the above, 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.
Eduardo Machado
Sole Panelist
Date: March 28, 2013
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