Complainant is Petroleo Brasileiro S.A – Petrobras of Rio de Janeiro, Brazil, represented by Ouro Preto Advogados, Brazil.
Respondent is Daniel Macintyre of San Mateo, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (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 the same day, 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 June 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 21, 2014.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on July 29, 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
Complainant is Petroleo Brasileiro S.A. – Petrobras, a Brazilian multinational energy company headquartered in Rio de Janeiro. According to Petroleum Intelligence Weekly, 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 owns a number of Brazilian trademark registrations for PETROBRAS, dating from as early as July 25, 1974. Complainant also owns trademark registrations for PETROBRAS in a number of countries around the world, including the United States of America.
In addition, Complainant registered and has been using several domain names containing the trademark PETROBRAS.
According to the Registrar's verification response, the disputed domain name was registered on February 9, 2014. 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 offering of goods or services. Complainant argues that, in fact, Respondent is not making any use of the disputed domain name.
Complainant states that by accessing the website for the disputed domain name on June 18, 2014, the page contained the following message: "Love is what you feel when you super, deeply care! – I have decided to stick with love. Hate is too great a burden to bear. – Martin Luther King, Jr." demonstrating the absence of use of the disputed domain name for any commercial or noncommercial purpose. Complainant adds that the owner of the disputed domain name has not been commonly known by the domain name .
Complainant finally contends that the disputed domain name was registered and is being used in bad faith.
Complainant states that the use of the PETROBRAS trademark in the domain name confuses Internet users, who are led to believe that the website was endorsed and authorized by Complainant.
Complainant requests transfer of the disputed domain name. B. Respondent
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 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
Paragraph 4(a)(i) of the Policy provides that Complainant must establish that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.
The Panel finds that the disputed domain name is confusingly similar to Complainant's PETROBRAS trademark because it reproduces the trademark in its entirety.
Under the Policy, the addition of the generic Top-Level Domain is immaterial when considering the issue of confusing similarity between a complainant's trademark and domain name.
The Panel, therefore, finds that Complainant has established the first condition of 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 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. The disputed domain name currently contains a page installed by the Registrar GoDaddy with the following legend "I have decided to stick with love. Hate is too great a burden to bear. —Martin Luther King, Jr." This cannot be considered a bona fide offering of goods or services, or legitimate noncommercial or fair use of the disputed domain name in the circumstances of this case.
In view of the above, the Panel finds that Complainant has established the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
The Panel finds that it is likely that Respondent was aware of Complainant and its reputation in the PETROBRAS trademark at the time the disputed domain name was registered. The PETROBRAS trademark has been extensively promoted by Complainant around the globe, making it a well-known mark (Petroleo Brasileiro S.A - Petrobras v. Job Seeker Pty Ltd,WIPO Case No. D2011-1248; Petróleo Brasileiro S.A. – Petrobras v. Regina Machado G., WIPO Case No. DBR2012-0004; and Petróleo Brasileiro S.A. - Petrobras v. Mohammad Ali Mokhtari,WIPO Case No. DIR2013-0004). Furthermore, the PETROBRAS trademark is a coined term with no dictionary meaning and as such it is not apparent why anybody would choose to register the disputed domain name unless seeking to create an association with Complainant. Finally, Respondent has provided no alternative explanation, either in this proceeding or in correspondence with Complainant, for its registration of the disputed domain name.
The registration of the disputed domain name, while being aware of Complainant's PETROBRAS trademark, and in the absence of rights or legitimate interests, amounted to registration in bad faith.
The disputed domain name currently resolves to a parking page, apparently operated by the Registrar. It is not clear if Respondent took any actual steps in setting up the parking page and there is no evidence that the disputed domain name has been used by the Respondent for any purpose. The disputed domain name is in essence being passively held by Respondent. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 established that, in certain circumstances, the passive holding of a domain name could amount to use of the domain name in bad faith.
A panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. In this case the following circumstances exist:
(a) Respondent was aware of Complainant at the time it registered the disputed domain name;
(b) The disputed domain name reproduces a well-known mark in its entirety;
(c) Respondent was also a party to Statoil ASA v. Daniel MacIntyre, Ethical Island,WIPO Case No. D2014-0369, where it was held that Respondent registered and used the domain names and in bad faith. As in the present case, complainant in that case was a multinational oil and gas company and one of the disputed domain names included the ".holdings" Top-Level Domain extension;
(d) Respondent has failed to respond to this proceeding including providing any bona fide reason for registering the disputed domain name.
On the basis of the circumstances outlined above, the Panel is prepared to conclude that Respondent is using the disputed domain name in bad faith.
Accordingly, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy.
Complainant has therefore established the third element of 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.
Pablo A. Palazzi
Sole Panelist
Date: August 12, 2014
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