The Complainant is Petroleo Brasileiro S.A – Petrobras of Rio de Janeiro, Brazil, represented by Ouro Preto Advogados, Brazil.
The Respondent is Banty Group/ Bestia Ghenda of Abuja, Ondo, Nigeria. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2014. On June 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 23, 2014, 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 June 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 22, 2014.
The Center appointed Isabel Davies as the sole panelist in this matter on August 6, 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 a substantial international energy company owning many trademarks around the world dating back to 1974 for PETROBRAS. Since 1996 it also has registered and used several domain names including the mark PETROBRAS.
The Domain Name was registered by the Respondent on March 27, 2014. 5. The Complainant A. The complainant’s renown and trademarks
1. The Complainant states that 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, the Complainant was rated the world’s 7th biggest oil company with shares traded at stock exchanges.
2. With its international recognition and proprietary technology for ultra deep waters, the Complainant states that it is producing oil at competitive prices in offshore fields at increasingly greater depths, attracting interest from oil companies from the world over with which it is signing cooperation agreements to explore and produce in its reserves in the huge Brazilian submarine platform. Opening the exploration & production area to international partners has generated, in turn, E&P opportunities in other parts of the world, especially where the Complainant’s know how can contribute to business implementation.
3. The Complainant has been endeavoring to protect its intellectual property rights around the world.
4. In Brazil, the Complainant is the titleholder of the trademark PETROBRAS and its variation are registered/filed in a wide range of international classes before the Instituto Nacional da Propriedade Industrial (National Insitute of Industrial Property ), dating back to 1974.
5. Furthermore, the Complainant states that it owns several applications and registrations for trademark PETROBRAS around the world including Europe, Australia, Japan and Russian Federation.
6. In addition, in order to develop its online commercial activity, since 1996 the Complainant registered and has been using several domain names containing the trademark PETROBRAS.
7. In view of that, the Complainant states that it was inevitable that it created an identity between the word and trademark PETROBRAS, generating the association of the same to the services provided. The Complainant has widely spread its trademarks among several countries due to its massive investments in a variety of sectors aside from the Oil & Gas market.
8. Moreover, the Complainant states that it has allocated substantial resources in publicity for its services among different kinds of media, including advertisements posted in many social networks where its exposure can reach many people.
9. Therefore, the Complainant says, it is clear that it has acquired a remarkable reputation before the general public in Brazil and worldwide due to its extensive use of trademark PETROBRAS. Thus, it submits, the unauthorized use of the term “petrobras” as part of the Domain Name by the Respondent violates the Complainant’s intellectual property rights. B. The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights
(Policy, Paragraph 4(a)(i); Rules, Paragraphs 3(b)(viii), (b)(ix)(1))
1. According to the provisions of the Policy, the first legal ground to be demonstrated by the Complainant is the fact that the Domain Name is identical or confusingly similar to the Complainant’s trademark.
2. The Complainant states that the Domain Name bears exactly the same word “petrobras”, registered by the Complainant as a trademark, as highlighted below:
3. It refers to Accor v. Payam Avarane Khorshid Co. and Nextone Media Limited,WIPO Case No. DIR2010-0001: “the fact that a domain name incorporates a complainant’s registered mark in its entirety is sufficient to establish confusing similarity for the purpose of the first element of the Policy”.
4. Thus, the Complainant submits, the domain name illegally reproduces the Complainant’s trademark and, therefore, is both identical and confusingly similar to the Complainant’s trademark. Accordingly, it submits, the requirement of paragraph 4(a)(i) of the Policy and the paragraph 3(b)(viii) and (b)(ix)(1) of the Rules is fully met. C. The respondent has no rights or legitimate interests in respect of the domain name
(Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2))
1. The Policy and the Rules also provide that the Complainant must prove that the Respondent has no rights or legitimate interests in the Domain Name.
2. The Complainant avers that the Respondent does not run any business under the name “petrobras” and has never used such expressions to identify its products or services. In addition, as far as the Complainant is aware, the Respondent does not own any trademark application or registration for the word “petrobras”.
3. The Complainant states that it has never authorized the Respondent to use the trademark PETROBRAS to identify Respondent’s company neither has authorized the Respondent to register a domain name containing the term “petrobras”.
4. The Complainant contends that it is the only company entitled to use such trademark in Brazil and in more than 20 countries and that the use of PETROBRAS by the Respondent in the Domain Name is abusive and illegitimate.
5. In addition, the Complainant notes that none of the aspects considered by paragraph 4(c), of the Policy are demonstrated to prove the legitimate rights of the Respondent over the Domain Name, namely:
(i) “before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services” - The Respondent is not using the Domain Name to make a bona fide offer of goods or services.
(ii) In fact, the Complainant states, by accessing the website for the Domain Name on June 16, 2014, the page was empty, demonstrating the absence of use of the Domain Name for any commercial or noncommercial purpose.
(iii) “you (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights” – The owner of the Domain Name has not been commonly known by the Domain Name.
(vi) “you are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue” – The Complainant states that as the Respondent is not using the Domain Name then the paragraph 4(c)(iii) does not apply.
6. Thus, the Complainant states, the Respondent has no rights or legitimate interests in respect of the Domain Name, applying the paragraph 4(a)(ii) of the Policy and Paragraph 3(b)(ix)(2) of the Rules. D. The domain name was registered and is/are being used in bad faith.
(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
1. As the Complainant states, it must also prove that the Domain Name was registered and is being used by the Respondent in bad faith.
2. In order to demonstrate the Respondent’s bad faith related to the registration and use of the Domain Name, it states that, by accessing the website for the Domain Name, Internet users cannot find any content related to the Domain Name, as the webpage has been empty since registration.
3. Furthermore, the Complainant states that it sent, by email, a warning letter to the Respondent on May 2, 2014, informing it of the violation of its rights over the registration and use of the Domain Name and requesting the cancellation or transfer to the Complainant of the Domain Name. However, the Complainant states that it has never received a response to its warning letter.
4. The Complainant states that this constitutes a case of website passive holding and refers to previous WIPO UDRP decisions which support the finding of bad faith in passive holding, for instance: Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; ItaúUnibanco Holding S.A. v. Valdery Dos Santos Decorações ME, WIPO Case No. D2009-1335 and LACER,S.A. v. Constanti GómezMarzo, WIPO Case No. D2001-0177.
5. As shown in theWIPO Case No. D2000-0003 (supra), the panel held that the passive holding of the domain name by the respondent amounts to the respondent acting in bad faith. The particular circumstances of this case includes: the complainant’s trademark had a strong reputation and was widely known; the Respondent had provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name; the respondent had actively provided, and failed to correct, false contact details, in breach of its registration agreement. In view of the circumstances, the panel held that the respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii).
The Complainant contends that the Respondent was acting in bad faith under the terms of Policy’s paragraph 4 (b)(iv)by using the Domain Name to create a likelihood of confusion with the Complainant’s famous trademark. 6. Respondent
The Respondent did not reply to the Complainant’s contentions. 7. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:
(i) the Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interest in respect of the Domain Name;
(iii) the Domain Name has been registered and is being used in bad faith.
Each of these elements will be addressed below.
The Complainant must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of or requirement under, the Rules, including the Respondent’s failure to file a Response.
In the absence of a formal Response, the Panel may also accept as true the reasonable factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009)).
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, the Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the Domain Name. A. Identical or Confusingly Similar
1. The Panel accepts that he Complainant is a well-known Brazilian energy company with presence in 28 countries around the world. It accepts that in Brazil, the Complainant is the titleholder of the trademark PETROBRAS and its variation are registered/filed in a wide range of international classes before the Instituto Nacional da Propriedade Industrial (National Insitute of Industrial Property) and that the Complainant has a substantial portfolio of trademarks for “PETROBRAS” around the world. It also accepts that the Complainant has a variety of domain names registered which include “Petrobras”.
2. The Panel finds that the Domain Name is confusingly similar as it contains the whole of the Complainant’s trademark PETROBRAS together with an additional “s” which is indistinguishable orally and visually is not a prominent difference. In addition, the rest of the Domain Name is “nig” which does not distinguish the Domain Name. B. Rights or Legitimate Interests
1. The Policy and the Rules also provide that the Complainant must prove that the Respondent has no rights or legitimate interests in the Domain Name.
2. The Panel accepts that the Respondent does not run any business under the name “Petrobras” and has never used this to identify its products or services. It also accepts that, as far as the Complainant is aware, the Respondent does not own any trademark application or registration for the word “Petrobas”.
3. The Panel accepts that the Complainant has never authorized the Respondent to use the trademark PETROBRAS to identify the Respondent’s company neither has authorized the Respondent to register a domain name containing the term “Petrobras”.
4. In addition, the Panel agrees that none of the aspects considered by paragraph 4(c), of the Policy have been demonstrated to prove the legitimate rights of the Respondent. The Respondent is not using the Domain Name and there is no suggestion that there had been any preparations to use it by the Respondent.
5. The Panel accepts that the Respondent has not been commonly known by the Domain Name nor has it made legitimate noncommercial use of the Domain Name.
6. The Panel finds that the Respondent has no rights or legitimate interests in respect of Domain Name.
C. Registered and Used in Bad Faith
1. The Complainant must also prove that the Domain Name was registered and is being used by the Respondent in bad faith.
2. The Panel accepts that, by accessing the website for the Domain Name, Internet users cannot find any content related to the Domain Name, as the webpage has been empty since registration and that the Complainant sent, by email, a warning letter to the Respondent on May 2, 2014, informing the Respondent of the violation of its rights over the registration and use of the Domain Name and requesting the cancellation or transfer to the Complainant of the Domain Name but that the Complainant has never received a response to its warning letter.
3. The Panel accepts that, by using the Domain Name and having no content in its webpage, this is a case of website passive holding.
4. The Panel concurs with the Complainant’s submission that previous WIPO UDRP decisions also support this finding of bad faith in passive holding, for instance: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; ItaúUnibanco Holding S.A. v. Valdery Dos Santos Decorações ME,WIPO Case No. D2009-1335 and LACER, S.A. v Constanti GómezMarzo, WIPO Case No. D2001-0177.
5. In theWIPO Case No. D2000-0003 (supra), the panel held that the passive holding of the domain name by the respondent amounts to the respondent acting in bad faith. There were similar facts of that case and this one including:
a. the Complainant’s trademark had a strong reputation and was widely known;
b. the Respondent had provided no evidence whatsoever of any actual or contemplated good faith use by it of the Domain Name;
In view of the circumstances, the Panel held that Respondent’s passive holding of the domain name satisfied the requirement of paragraph 4(a)(iii).
6. In theWIPO Case No. D2009-1335 (supra), the panel had concluded that the lack of use of a domain name was evidence of bad faith. In the particular circumstances of that case the domain name encompassed the trademarks of traditional Brazilian banks that had merged to create the biggest bank in the country; the widely publication of the merger in the press; the lack of use of the domain name.
7. In theWIPO Case No. D2001-0177 (supra), thedecision identified the lack of use of the domain name as bad faith. It stated:
“The lack of use of the domain name must also be reexamined under the perspective of good or bad faith. The lack of use by itself does not indicate anything. Nevertheless, the lack of use of a domain name that is not backed up by any trademark and that coincides with a known, well-known or renowned trademark owned by someone else, does not indicate other than bad faith in the sense of paragraph 4(b) of the Policy.” (See Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren,WIPO Case No. D2000-0021; Compaq Computer Corporation v. Boris Beric,WIPO Case No. D2000-0042; InfoS, Inc. v. TenenbaumOfer,WIPO Case No. D2000-0075; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003”; Association of British Travel Agents Ltd .v. Sterling Hotel Group Ltd,WIPO Case No. D2000-0086; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc.,WIPO Case No. D2000-0090; Sanrio Company, Ltd. and Sanrio, Inc. v. Neric Lau,WIPO Case No. D2000-0172 or J. García Carrión, S.A. v. Mª José Catalán Frías, WIPO Case No. D2000-0239.”
8. The Panel finds that the Respondent was acting in bad faith under the terms of Policy’s paragraph 4(b)(iv) by its passive holding of the Domain Name. 8. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Isabel Davies
Sole Panelist
Date: August 20, 2014
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