The Complainant is Petroleo Brasileiro S.A - Petrobras of Rio de Janeiro, Brazil, represented by Ouro Preto Advogados, Brazil.
The Respondent is Cgeneva Ven of Swazi, Lubombo, Swaziland.
The disputed domain name <petrobrasnigeria.net> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2014. On July 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, 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 for the registrant.
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 July 31, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 21, 2014.
The Center appointed Lynda M. Braun as the sole panelist in this matter on August 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.
The language of the proceeding is English.
The Complainant is a Brazilian energy company with presence in twenty eight countries around the world. According to Petroleum Intelligence Weekly, a publication that provides the ranking of the world’s fifty largest and most important oil companies, the Complainant was rated the world’s seventh largest oil company. The Complainant is a publicly traded joint stock corporation that operates in several segments of the oil, gas and energy industry.
The Complainant owns the trademark PETROBRAS (the “PETROBRAS mark”) in Brazil in a wide range of international classes, e.g. Registration No. 006005098, registered on July 25, 1974. In addition, the Complainant owns or has applied for the PETROBRAS mark in numerous countries throughout the world.
Further, the Complainant has a developed online presence, having registered and used multiple domain names that contain the PETROBRAS mark, including <petrobras.com>, <petrobras.com.br>, <petrobras.net>, <petrobras.org>, <petrobras.us>, <petrobras.fr>, <petrobras.pt> and <petrobras.cl>.
The Respondent registered the disputed domain name on May 16, 2014.
The Complainant sent, by email, a warning letter to the Respondent on May 30, 2014, explaining that the registration of the disputed domain name violated the Complainant’s rights in its PETROBRAS mark and requesting the cancellation or transfer to the Complainant of the disputed domain name. The Respondent never responded to the Complainant’s letter.
The Complainant contends that:
- The disputed domain name is confusingly similar to the trademark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the disputed domain name;
- The Respondent is not authorized or otherwise permitted by the Complainant to use the disputed domain name or the PETROBRAS mark;
- The Respondent is not commonly known by the disputed domain name;
- The Respondent is making passive use of the disputed domain name; and
- The disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
In order for the Complainant to prevail and have the disputed domain name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith.
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the disputed domain name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the PETROBRAS mark based on its longstanding use and its numerous trademark registrations in Brazil and throughout the world. The disputed domain name <petrobrasnigeria.net> consists of the word “petrobras”, followed by the geographic designation “nigeria”, and followed by the generic Top-Level Domain (“gTLD”) “.net”.
The disputed domain name is identical or confusingly similar to the PETROBRAS mark. The addition of the geographical designation “nigeria” does not diminishthe confusing similarity between the disputed domain name and the Complainant’s PETROBRAS mark. See Gannett Co., Inc. v. Henry Chan, WIPO Case No. D2004-0117 (a domain name incorporating a well-known trademark combined with a geographically descriptive term is confusingly similar to the trademark); Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438 (the addition of the term “korea” in <ikea-korea.com> does not prevent the domain name from being confusingly similar to the complainant’s trademark).
Finally, the addition of a gTLD such as “.net” in a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its trademark. The Respondent does not run any business under the name “Petrobras” nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
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 andk 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; or
(ii) circumstances indicating that the respondent 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; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt 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.
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith.
First, based on the circumstances here, the Respondent registered and used the disputed domain name in bad faith in an attempt to create a likelihood of confusion with the Complainant’s PETROBRAS mark.
Second, the Respondent’s action of registering the disputed domain name evidences a clear intent to disrupt the Complainant’s business.
Third, by using the disputed domain name passively and having no content on its web page, the Respondent has registered and is using the disputed domain name in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003;). “The lack of use [of a domain name] 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.” Itaú Unibanco Holding S.A. v. Valdery Dos Santos Decorações ME, WIPO Case No. D2009-1335; LACER, S.A. v Constanti Gómez Marzo, WIPO Case No. D2001-0177.
Fourth, the Respondent knew or should have known of the Complainant’s rights in its PETROBRAS mark when registering the disputed domain name. The Complainant’s PETROBRAS mark is well known and widely used. It therefore strains credulity to believe that the Respondent had not known of the Complainant or its PETROBRAS mark when registering the disputed domain name. See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 (a finding of bad faith may be made where Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the domain name).
Finally, the Panel finds that the Respondent's bad faith can also be inferred from its lack of reply to the warning letter sent by the Complainant prior to commencing this proceeding. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <petrobrasnigeria.net> be transferred to the Complainant.
Lynda M. Braun
Date: September 8, 2014
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