The Complainant is Petróleo Brasileiro S.A. - Petrobras of Rio de Janeiro, Brazil, represented by Siqueira Castro Advogados, Brazil.
The Respondent is Ivan Matveyev of Saint-Petersburg, Russian Federation / WhoIs Privacy Services provided by DomainProtect LLC of Saint-Petersburg, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with NeuDomain LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2013. On December 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 5, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 13, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 13, 2013.
The Center verified that the amended 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 December 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2014.
The Center appointed John Swinson as the sole panelist in this matter on January 22, 2014. 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 Petróleo Brasileiro S.A. – Petrobras, a Brazilian multinational energy company headquartered in Rio de Janeiro, Brazil.
The Complainant owns a number of Brazilian trade mark registrations for PETROBRAS, dating from as early as July 25, 1974. The Complainant also owns trade mark registrations for PETROBRAS in a number of countries, including the Russian Federation. For the purposes of this decision, all of these trade marks will be collectively referred to as the “Trade Mark”.
The Complainant is also the owner of numerous domain names that incorporate the Trade Mark.
The first Respondent is Ivan Matveyev, an individual, of the Russian Federation. The second Respondent is WhoIs Privacy Services provided by DomainProtect LLC of the Russian Federation. For the purposes of this decision, the first and second Respondents will be referred to collectively as the “Respondent”.
According to the publicly available WhoIs database for the Disputed Domain Name, the Disputed Domain Name was registered with the Registrar on August 15, 2013. The WhoIs database records the current registrant of the Disputed Domain Name as the Respondent. The Respondent appears to be a “proxy registration” service that offers a form of domain privacy.
The Disputed Domain Name currently resolves to a website that displays links to various websites. Some of the links incorporate the Trade Mark and some are related to the oil and gas industry. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Disputed Domain Name is confusingly similar to the Trade Mark. It incorporates the Trade Mark in its entirety, preceded by the country abbreviation “br”, which stands for Brazil, the country that the Complainant originates from.
Rights or Legitimate Interests
The Respondent does not have rights or legitimate interests in the Disputed Domain Name for the following reasons:
- the Respondent does not run any business under the Trade Mark and has never used the Trade Mark to identify its products or services;
- the Respondent does not own any trade mark application or registration for the Trade Mark;
- the Complainant has never authorized the Respondent to use the Trade Mark;
- the Respondent has not been commonly known by the Disputed Domain Name;
- the Respondent is not using the Disputed Domain Name to offer bona fide goods or services,
- the website at the Disputed Domain Name contains links to other websites; and
- the Respondent is not making a legitimate noncommercial use of the Disputed Domain Name.
Registered and Used in Bad Faith
The following is evidence that the Respondent registered and has used the Disputed Domain Name in bad faith:
- the website at the Disputed Domain Name contains sponsored links, some of which incorporate the Trade Mark;
- given the Complainant’s reputation, the Respondent must have known of the Complainant and the Trade Mark at the time it registered the Disputed Domain Name;
- the Respondent has not replied to the Complainant’s cease and desist letter (sent via email); and
- the Respondent has taken active steps to conceal its identity, through the use of a privacy service. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 has been registered and is being used in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response. A. Procedural Matters
The Center has taken the steps required under the Policy and the Rules regarding notification of the Complaint to the Respondent. The Panel is satisfied that the Respondent was given adequate notice of the Complaint and a reasonable opportunity to file a Response. The Respondent’s failure to file a response does not automatically result in a decision in favour of the Complainant (see e.g. Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909). However, the Panel may draw appropriate inferences from the Respondent’s default. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
In the situation where a domain name incorporates a trade mark in its entirety, adding a geographic indicator (i.e. “br”) will generally not distinguish the domain name from the trade mark (see e.g. Google Inc. v. Google Adwords Service at HCMC, Vietnam,WIPO Case No. D2013-0298 and Nike, Inc. v. No Owner / Ashkan Mohammadi,WIPO Case No. D2013-1297). Here, the Panel finds that the distinctive element of the Disputed Domain Name is the Trade Mark. The addition of the geographic indicator “br” (the country abbreviation for Brazil) does nothing to prevent the confusing similarity of the Disputed Domain Name with the Trade Mark. In fact, the fact that the Disputed Domain Name incorporates the country abbreviation for the country where the Complainant originates adds to the confusing similarity.
In light of the above, the Complainant succeeds on the first element of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case for the following reasons:
- the Respondent has no connection with the Complainant;
- the Complainant has not consented to the Respondent’s use of the Trade Mark;
- there is no evidence that the Respondent has been commonly known by the Disputed Domain Name; and
- the website to which the Disputed Domain Name resolves is commercial in nature. It is a “link farm” website which directs users to various goods and services (some of which feature the Trade Mark or relate to the oil and gas industry), and which presumably generates pay-per-click advertising revenues.
The Respondent had the opportunity to demonstrate that it has rights or legitimate interests in respect of the Disputed Domain Name, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted, and the Complainant succeeds on the second element of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith, including where a domain name is “used to intentionally attract, for commercial gain, Internet users to a web site or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that web site or location or of a product or service on that web site or location” (paragraph 4(b)(iv)).
The Complainant and the Trade Mark are well known, particularly in relation to oil and gas products and services. The Panel finds that the Respondent, prior to its registration and use of the Disputed Domain Name (which wholly incorporates the Trade Mark and country abbreviation for Brazil, the country from which the Complainant originates) was likely aware that the Complainant was the owner of the Trade Mark because of the substantial reputation of both the Complainant and the Trade Mark.
The Respondent uses the Disputed Domain Name to direct Internet users to a “link farm” website. A number of the featured links incorporated the Trade Mark or relate to the oil and gas industry (and therefore are likely to be links to the websites of the Complainant’s competitors). It can reasonably be inferred that the Respondent was profiting from the website through “click-through revenue”. Accordingly, the Panel finds that the Respondent is using the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent had the opportunity to make submissions to the contrary but failed to do so. From this, the Panel infers that the Respondent was unable to provide any evidence of good faith use of the Disputed Domain Name.
The Panel finds that the Respondent’s failure to respond to the Complainant’s cease and desist letter (via email) and its use of a privacy service are further evidence of bad faith registration and use.
In light of the above, the Panel determines that the Respondent’s registration and use of the Disputed Domain Name constitutes bad faith. 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 the Complainant.
John Swinson
Sole Panelist
Date: January 28, 2014
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