Complainant is Petroleo Brasileiro S.A. – Petrobras of Rio de Janeiro, Brazil, represented by Ouro Preto Advogados, Brazil.
Respondent is Ivo Lucio Santana Marcelino Da Silva of Aracajú, Brazil. 2. The Domain Name and Registrar
The disputed 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 August 6, 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 6, 2014, 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 August 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 4, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 5, 2014.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on September 15, 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 owner of the well-known PETROBRAS mark, used and registered along with many forms that include the word “Petrobras” in many countries worldwide. The mark is used is association with Complainant’s large petroleum company.
The disputed domain name is based on an informal Brazilian expression referring to fraud or illicit conduct; a reasonable translation to English, is “dirtytricksatpetrobras.” It was registered January 25, 2013 and routes to a Portuguese language website which appears to be intended to be a bulletin board for news, interview links and postings that are generally critical of Complainant’s company. The text appearing at the beginning of the home page states, “In keeping with its name, the site presented here … aims to give greater transparency to the ‘federal racketeeting’ carried out to the detriment of Petrobras.”
It goes on to express criticism about Brazilian government ownership in Complainant, corruption, improper influence, failed government oversight and other expressions of concern about waste and mismanagement. 5. Parties’ Contentions A. Complainant
Complainant avers that Petrobras is seventh largest among oil companies worldwide that trade on public exchanges. Annex 7 to the Complaint contains a news article indicating that the Brazilian government has a 55% stake in the company.
Complainant lists many of its international trademark registrations as well as a number domain names in different generic Top-Level Domains (“gTLDs”), all of which have PETROBRAS as the second-level domain name.
Summarizing its basic legal contentions, Complainant alleges that (1) the disputed domain name is confusingly similar to Complainant’s trademark, (2) Respondent has no rights or legitimate interests in the disputed domain name, and (3) the disputed domain name was registered and is being used in bad faith, all in violation of the Policy.
The Complaint annexes a cease and desist letter allegedly sent to Respondent June 16, 2014. The letter advises Respondent of Complainant’s rights in the PETROBRAS mark. It claims that any inclusion of the mark in a domain name by third parties without authorization is not permitted and requests Respondent to transfer or cancel the disputed domain name within ten days.
On this basis, Complainant seeks transfer. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
The Panel must render its Decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish that (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. Policy, paragraph 4(a).
Complainant must establish these elements even if Respondent submits no Response. See, e.g., The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. In the absence of a response, the Panel may also accept as true the reasonable factual allegations in the Complaint. See, e.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425. A. Identical or Confusingly Similar
The Panel agrees with Complainant that the disputed domain name is confusingly similar to the PETROBRAS trademarks in which Complainant has interests.
Panels commonly disregard the “.com” gTLD suffix in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com,WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315.
The Panel concludes that the addition of the additional words “maracutaias” and “na” does not negate the confusion created by Respondent’s complete inclusion of the PETROBRAS trademark in the disputed domain name. E.g., Sanofi-aventis, Sanofi-Aventis Deutschland GmbH v. Andrey Mitrofanov,WIPO Case No. D2007-1772; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc.,WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner,WIPO Case No. D2006-0629.
The Panel finds therefore that the disputed domain name is confusingly similar to Complainant’s trademark, and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
The Panel rules, however, that the Complaint fails to fulfil the second element of paragraph 4(a) of the Policy, as elaborated below.
Complainant must show a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, after which, if shown, the burden of rebuttal passes to Respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Policy outlines circumstances that may demonstrate a respondent’s rights or legitimate interests in a domain name. Policy, paragraph 4(c). One of those circumstances is when a respondent is “making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” Id. paragraph 4(c)(iii).
The Complaint makes only formalistic allegations regarding noncommercial or fair use; it states only that Respondent is making no fair use and that Respondent uses the disputed domain name to “tarnish” Complainant’s trademark. A copy of Respondent’s website is annexed, but the Complaint addresses neither (1) the meaning of the words added to its trademark to make up the disputed domain name, nor (2) the website content. The Panel considers both of these factors significant in examining the questions of fair use.
It does not appear to the Panel that Respondent uses the disputed domain name for a commercial purpose. Instead, the disputed domain name is used in connection with a “gripe” site, or forum for criticism and sharing of negative information respecting the Petrobras company.
Finding no evidence of intention for commercial gain, the Panel must consider whether Respondent’s use of the disputed domain name represents fair use under the Policy. Leaving aside the question of tarnishment for the moment, such a finding would mean that the Complaint fails to establish that Respondent lacks rights or legitimate interests in the disputed domain name. i. The Disputed Domain Name and Noncommercial Speech as Fair Use
Some UDRP panels recognize a noncommercial free speech right in the use of a website employing a disputed domain name that is confusingly similar to the complainant’s trademark, while others, although acknowledging the existence of the noncommercial free speech fair use defense, have declined to grant the defense in certain cases.1
Several UDRP criticism site cases find fair use because the panel concludes that a respondent’s choice to add words to the trademark itself alerts Internet users that the respondent’s webpage is not that of the complainant (such as in the so-called cases). E.g., Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign,WIPO Case No. D2004-0206.
The Panel is generally of the view that use of a domain name for a noncommercial purpose may be legitimate if such use does not materially obstruct access to a complainant’s website or confuse the public about the website of the trademark holder. Equality Charter School, Inc. v. Mona Davids / A Happy DreamHost Customer,WIPO Case No. D2011-1226 (citing, inter alia, Chelsea and Westminster Hospital NHS Foundation Trust v. Frank Redmond, WIPO Case No. D2007-1379); Wal-Mart Stores, Inc. v. Domains by Proxy, LLC / UFCW International Union,WIPO Case No. D2013-1304.
Before considering whether Respondent’s use of the disputed domain name cannot qualify as fair use because it materially obstructs “access” to Complainant, however, the Panel must make a threshold finding that protected speech is involved.
Policy, paragraph 15(a), empowers UDRP panels to determine the principles of law they deem applicable. UDRP panels have looked in some cases to national law, and in others, to international law sources to determine the question of fair use. See WIZZ Air Hungary Airlines Limited Liability Company v. Holden Thomas,WIPO Case No. D2009-1105; Chelsea and Westminster Hospital NHS Foundation Trust v. Frank Redmond, WIPO Case No. D2007-1379; Fundación Calvin Ayre Foundation v. Erik Deutsch,WIPO Case No. D2007-1947.
The Panel believes that the relevant national right to free speech is enshrined in Article IV of the Brazilian Constitution of 1988, and possibly other sources of national law. Article IV reads “é livre a manifestação do pensamento, sendo vedado o anonimato,” translated to English as “the expression of thought is free, anonymity being forbidden”.
Potential sources of international law supporting freedom of expression that vie for potential application in this proceeding include the Universal Declaration of Human Rights, the European Convention on Human Rights, and the Charter of Fundamental Rights of the European Union (Article 11). Article 19 of the Universal Declaration of Human Rights provides: “Everyone has the right to freedom of opinion and expression; this right includes freedom to hold opinions without interference and to seek, receive and impart information and ideas through any media and regardless of frontiers.”
Respondent’s website seems to contain information on Complainant’s business practices, purported corruption, and potential dereliction by the Brazilian government, the largest shareholder in an important national and international company. The Panel views the protection for such speech under both the above-mentioned national and international standards to be sufficiently broad to cover the present situation.
For purposes of this analysis, the Panel assumes, therefore, that Respondent’s expression is protected speech under applicable law. Even accepting this assumption, the Panel must proceed to examine whether the context here supports fair use under the Policy. Put otherwise, the Panel must examine whether Respondent’s exercise of its right to make comment does not unduly confuse users or obstruct access to Complainant’s websites.
The Panel finds that Respondent’s use of the disputed domain name does not materially obstruct access to Complainant. Most Internet users would realize that they are not visiting Complainant’s websites simply by seeing the disputed domain name (in English for the sake of this decision) “dirtytricksinpetrobras.” Any remaining potential confusion would be dispelled upon reading the statements at the beginning of Respondent’s homepage, “the site presented here … aims to give greater transparency to the ‘federal racketeeting’ carried out to the detriment of Petrobras.” ii. Tarnishment
The Panel must also address whether Respondent’s use of the disputed domain names tarnishes Complainant’s mark. If found, tarnishment would also preclude a finding of fair use under Policy, paragraph 4(c)(iii).
Critical commentary often makes negative associations with a trademark or trademark holder. Nonetheless, critical content on a website using a confusingly similar domain name has been held by UDRP panels and courts to be fair use and permissible. Tarnishment in the context of the Policy generally “refers to unseemly conduct such as linking unrelated pornographic, violent or drug-related images or information to an otherwise wholesome mark. See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (citing Nicole Kidman v. John Zuccarini d/b/a Cupcake Party, WIPO Case No. D2000-1415). Honest and legitimate fair-use criticism does not constitute tarnishment and would not be prohibited as such by the Policy. Id.” Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647.
In any event, the Panel finds that “unseemly” conduct such as that classically constituting tarnishment under the Policy, as described above, is absent from the record in this case.
With no consideration of the simple meaning of the disputed domain name, the Complaint repeatedly contends that Respondent’s use of a domain name that contains its PETROBRAS mark is unfair because it inevitably would lead to consumer confusion and that Internet users would invariably believe that Respondent’s website is associated with Complainant. As discussed above, based on the record before it the Panel disagrees.
In summary, the Panel finds that the Complaint fails carry the burden to establish a prima facie case, for failure to prove the absence of a fair use right by Respondent to post critical information and commentary using the disputed domain name.2 C. Registered and Used in Bad Faith
Since, as explained above, the Complaint fails to meet the requirements of Policy, paragraph 4(a)(ii), the Panel finds it unnecessary to rule on the question of bad faith. The Panel also notes that this decision under the Policy does not foreclose any potential options the parties may have under national law. 7. Decision
For the foregoing reasons, the Complaint is denied.
Jeffrey D. Steinhardt
Sole Panelist
Date: September 23, 2014
1 The range of Panel views on these issues is well reflected in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 2.4.
2 The broad contention in Complainant’s cease and desist letter that no use of a domain name containing a complainant’s trademark may be made under the Policy without authorization of the trademark holder is inaccurate as a matter of Policy precedent.
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