The Complainant is Petroleo Brasileiro S.A – Petrobras of Rio de Janeiro, Brazil, represented by Ouro Preto Advogados, Brazil.
The Respondent is Oloan Sidabutar of Jakarta, Indonesia. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 5, 2014. On August 6, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 7, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on August 8, 2014.
The Center verified that the Complaint together with 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 August 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 1, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 2, 2014.
The Center appointed Cherise Valles as the sole panelist in this matter on September 4, 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.
The information set out on the disputed domain name registration is in English and it is therefore assumed that the Respondent understands English. 4. Factual Background
The Complainant is a Brazilian energy company with a presence in 28 countries around the world. According to Petroleum Intelligence Weekly (PIW), a publication that ranks the world's 50 largest and most important oil companies, Petrobras was rated the world's 7th biggest oil company with its shares traded at stock exchanges.
The Complainant is the owner of multiple trademark registrations throughout the world, including in Brazil, for the mark PETROBRAS. These include the following:
- Brazilian trademark registration No. 003676935 for PETROBRAS, registered on February 1, 1978, in Brazilian national class 11.10;
- Brazilian trademark registration No. 825348951 for PETROBRAS, registered on May 8, 2007, in class 01;
- Brazilian trademark registration No. 825348960 for PETROBRAS, registered on May 8, 2007, in class 04;
- Brazilian trademark registration No. 825348978 for PETROBRAS, registered on May 8, 2007, in class 35;
- Brazilian trademark registration No. 825347807 for PETROBRAS, registered on May 8, 2007, in class 37;
- Brazilian trademark registration No. 825348986 for PETROBRAS, registered on May 8, 2007, in class 42;
- Brazilian trademark registration No. 825347785 for PETROBRAS, registered on May 8, 2007, in class 43;
- Brazilian trademark registration No. 826272681 for PETROBRAS, registered on November 6, 2007, in class 28;
- Brazilian trademark registration No. 902167740 for PETROBRAS, registered on October 2, 2012, in class 37.
The Complainant owns several applications and registrations for trademark PETROBRAS in many other countries, including South Africa, Russian Federation, India, Japan, Australia, Colombia, New Zealand, Ecuador, Bolivia and Costa Rica. The Complainant is also the owner of Community Trademarks for PETROBRAS. Details of these trademarks are listed in Annex 5 to the Complaint.
The Complainant has also registered, and uses, several domain names containing the trademark PETROBRAS, including , , , , , , and . Details of these websites are listed in Annex 6 to the Complaint.
The disputed domain name was registered on February 12, 2014. 5. Parties' Contentions A. Complainant
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
- The disputed domain name is confusingly similar or identical to the Complainant's registered trademark, PETROBRAS, in light of the fact that it wholly incorporates the Complainant's mark.
The Respondent lacks rights or legitimate interests in the disputed domain name.
- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
The disputed domain name has been registered and is being used in bad faith.
- The Complainant asserts that the disputed domain name was registered and is used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:
(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a response in these proceedings and is therefore in default and the Panel may draw appropriate inferences from the available evidence submitted by the Complainant. A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant's trademark.
The Complainant is the sole and exclusive owner of the PETROBRAS mark. The Complainant has submitted evidence in Annexes 4 and 5 to the Complaint demonstrating that it is the owner of multiple trademark registrations in Brazil and worldwide for the mark PETROBRAS, as indicated in Section 4 above.
The Panel finds that the Complainant's marks are distinctive. The Panel notes that the disputed domain name entirely incorporates the Complainant's mark PETROBRAS. Numerous earlier UDRP decisions have held that when a domain name wholly incorporates a complainant's registered trademark, it is sufficient to establish confusing similarity for purpose of the Policy. See Alstom v. FM Laughna,WIPO Case No. D2007-1736.
In the light of the foregoing, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant's registered mark and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production of evidence shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name: "Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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; or
(ii) 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; or
(iii) 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 Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
The Complainant is the only company entitled to use such trademark in Brazil and worldwide. The Complainant submits that the Respondent is not in any way associated with the Complainant and has never sought nor received authorization or a license to use the Complainant's distinctive PETROBRAS mark in any way or manner, including registering a domain name containing the term "petrobras". The Respondent simply utilizes a domain name that is very similar to the Complainant's mark.
Furthermore, the Respondent is not making a noncommercial or a fair use of the disputed domain name. As of August 5, 2014, the website for the disputed domain name did not resolve to any website. A view of the page related to the disputed domain name is attached as Annex 8 to the Complaint.
In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has registered the 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 the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The Complainant's trademarks are well-known in Brazil and in many other countries in the world, as indicated in Section 4 above. In addition, the Complainant owns a number of websites based in various countries which incorporate the trademark PETROBRAS, as mentioned in Section 4 above and in Annex 6 to the Complaint. The Respondent must therefore have been aware of the Complainant's rights in the PETROBRAS mark.
By accessing the disputed domain name , Internet users cannot find any active website at the disputed domain name. A view of the page related to the disputed domain name is attached as Annex 8 to the Complaint.
Furthermore, the Complainant sent a warning letter to the Respondent on May 30, 2014, informing the violation of the Complainant's rights over the registration and use of the disputed domain name and requesting the cancellation or transfer to the Complainant of such domain name. However, the Complainant never received a response to its warning letter.
By not using the disputed domain name for an active webpage, it is clear that the Respondent's conduct is exploiting the Complainant's goodwill and trademark, in a case of passive holding. Previous UDRP panels have held that the passive holding of the domain name by the respondent may amount to the respondent acting in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Previous UDRP panels have found that registration of domain names by someone without connection with a well-known complainant, suggests opportunistic bad faith if no legitimate interests is clearly proven.
See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co,WIPO Case No. D2000-0163.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) 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 the Complainant.
Cherise Valles
Sole Panelist
Date: September 18, 2014
Full & Egal Universal Law Academy