Complainant is Petroleo Brasileiro S.A. – Petrobras (“Petrobras”) of Rio de Janeiro, Brazil, represented by Siqueira Castro Advogados, Brazil.
Respondent is Marcelo da Graça Veiga, TV BIGBRASIL of Rio de Janeiro, Brazil, represented internally. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2012. On March 28 and April 5, 2012, the Center transmitted by email to GoD, LLC. a request for registrar verification in connection with the disputed domain name. On April 7, 2012, GoD, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Complainant filed an amended Complaint on April 13, 2012 in response to a notification by the Center that the Complaint was administratively deficient.
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 Respondent of the Complaint, and the proceedings commenced on April 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2012. The Response was filed with the Center on May 7, 2012.
The Center appointed Luiz E. Montaury Pimenta as the sole panelist in this matter on May 25, 2012. 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 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 in 2007, Petrobras was rated the world’s 7th biggest oil company with shares traded at stock exchanges.
Complainant registered and has been using several domain names containing the trademark PETROBRAS.
Complainant owns trademark registrations in Brazil and in several other countries for the trademark PETROBRAS and its variations. For instance: United States of America PETROBRAS Registration No. 3676471, registered on September 1, 2009 and Brazilian PETROBRAS Registration No. 002709007 filed on June 17, 1958.
According to the registrar’s verification response, the disputed domain name was registered on May 3, 2010. 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 offer of goods or services. Complainant argues that the website under the disputed domain name resolves to a blog with information and interviews about the Complainant’s business. In addition, by clicking on the link “contact” shown in the corresponding page, users are directed to a message stating that the domain name is available for sale in the auction website of “www.god”
Complainant finally contends that the disputed domain name was registered and is being used in bad faith. Complainant states that it would be impossible for Respondent, who lives in the state of Pernambuco, in Brazil, to ignore Complainant’s trademark rights over the trademark PETROBRAS. Complainant also argues that it has sent cease and desist letters to Respondent, informing of its trademark rights and requesting the transfer of the disputed domain name, but that Respondent apparently ignored such letters.
Furthermore, Complainant states that Respondent apparent use of false information on the WhoIs records is another evidence of bad faith.
Complainant also argues that the offer for sale of the disputed domain name through links to GoDaddy auction is further evidence of bad faith. B. Respondent
Respondent alleges that he registered the disputed domain name in order to develop a project for the Complainant. Respondent claims that Complainant launched a public competition of projects in 2010 named “Petrobras Program of Development and Citizenship – Public Project Selection 2010”.
Respondent alleges that he performed a search before the Brazilian Patent and Trademark Office to verify if Complainant had any registered trademarks in classes related to television, media and communication. After verifying that they did not own registrations on such classes, Respondent registered the disputed domain name.
Respondent alleges that the disputed domain name is not confusingly similar to Complainant’s trademark PETROBRAS, as the ccTLD “.tv” refers to a different business activity and would be sufficient to exclude a finding of confusingly similarity.
Respondent alleges that he has registered the disputed domain name in good faith, and that he has rights and legitimate interests over it. Respondent alleges that he registered the disputed domain name to provide a webtv about petroleum in Brazil, providing information not only about Complainant but also on other oil companies that do business in Brazil.
Respondent contends that he did answer Complainant’s cease and desist letters. Respondent provides a copy of the response sent to Complainant, where he basically alleges that he had assumed from the Rules of the Project Competition that he was supposed to use Complainant’s trademark in his entire project, including in the registration of the disputed domain name, and that he could not cancel or transfer the disputed domain name to Complainant, as he had already transferred it to GoDaddy. In such response, Respondent encouraged Complainant to participate in GoDaddy’s auction in order to acquire the disputed domain name.
Respondent also alleges that he has offered the disputed domain name for sale through an auction at GoDaddy, because he was afraid of Complainant’s threats and wanted to avoid any bigger problems.
Respondent also alleges that he has provided true and correct information on the WhoIs records and that any difference between the dashboard control and the WhoIs record is due to the Registrar’s conduct and not his own.
Finally, Respondent alleges that Complainant is acting in bad faith by omitting the information brought on his Response. 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
The Panel finds that the disputed domain name is identical to Complainant’s PETROBRAS trademark.
Under the Policy, the addition of the country code top level domain “.tv” is immaterial when considering the issue of confusing similarity between a complainant's trade mark and a domain name.
Moreover, Respondent’s arguments that the extension “.tv” would refer to a business activity different from Complainant’s are groundless. Strictly speaking, the extension “.tv” is a country code top level domain referring to Tuvalu, and not a generic top level domain name referring to “television” as Respondent argues.
The Panel, therefore, finds that Complainant has established the first condition of the 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 of evidence shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name, according to paragraph 4(a)(ii) of the Policy.
Respondent has replied, alleging that he holds rights or legitimate interests in the disputed domain name. However, the Panel finds that the Respondent has failed to prove such rights or legitimate interests.
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.
Respondent argues that he participated in a public selection of projects organized by Complainant and that he developed a project that consisted on a webtv. Respondent alleges Complainant encouraged him to use Complainant’s trademarks on the project.
However, the Panel finds that Complainant has never requested or authorized Respondent to act on its behalf and to register domain names reproducing its trademarks. The general indication to “use” Complainant’s trademarks in a project is obvious and common on sponsored projects. However, developing projects to participate on Complainant’s public selection, and participating in such public selections of projects does not grant Respondent any rights or legitimate interests over the disputed domain name.
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.
Respondent confirms that his name is Marcelo Veiga d.b.a. TV BIGBRASIL. Therefore, Respondent has never 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.
Respondent confirms he has offered the disputed domain name for sale in GoDaddy’s auction. Respondent also informs he has been using the disputed domain name to provide information regarding oil companies in Brazil, including Complainant and Complainant’s competitors. The Panel finds that this is not a bona fide offering of goods and services, nor a legitimate noncommercial or fair use of the disputed domain name. As Complainant’s trademarks are being reproduced in its entirety, the use of the disputed domain name is both confusing and deceptive. Also, the Panel notes that the website under the disputed domain name still holds a message offering it for sale. This is not a bona fide use of the disputed domain name.
In view of the above, the Panel finds that Complainant has established the second condition of the paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that Respondent has intentionally registered the disputed domain name which totally reproduces Complainant’s famous trademark PETROBRAS. In this Panel’s view, Respondent was fully aware of Complainant’s rights over the trademark PETROBRAS when he registered the disputed domain name. Respondent argues that the fact that he has developed and submitted a project of a webtv to Complainant would grant him rights over the disputed domain name. However, the Panel notes that Complainant has never requested or authorized that Respondent register the disputed domain name.
Moreover, the Panel finds manifest bad faith in Respondent’s response to Complainant’s warning letter and subsequent behavior. In such response, Respondent informs that he no longer holds the disputed domain name, which he supposedly had transferred to GoDaddy, and recommends that Complainant acquires the disputed domain name through an online auction.
At this point Respondent’s arguments are completely incongruent. First, because Respondent remained as the owner and registrant of the disputed domain name, as he further confirms in his Response. Second, because later in his Response, Respondent states that he had put the disputed domain name for sale at GoDaddy’s auction by himself allegedly because he felt threatened by Complainant’s warning letter. The Panel finds that this is evidence of bad faith registration and use of the disputed domain name by Respondent, as it is clear that Respondent registered the disputed domain name for the purpose of selling the disputed domain name to Complainant, or a competitor of Complainant, most likely for an amount in excess of his out-of-pocket costs.
In light of the above, the Panel finds Respondent registered and is using the disputed domain name in bad faith.
Complainant has therefore established the third element of the 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.
Luiz E. Montaury Pimenta
Sole Panelist
Dated: June 11, 2012
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