WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Petroleo Brasileiro S.A - Petrobras v. TPI Páginas Amarillas

Case No. D2014-1332

1. The Parties

The Complainant is Petroleo Brasileiro S.A - Petrobras of Rio de Janeiro, Brazil, represented by Ouro Preto Advogados, Brazil.

The Respondent is TPI Paginas Amarillas of Lima, Peru.

2. The Domain Name and Registrar

The disputed domain name <petrobrasmalvinas.com> is registered with Acens Technologies, S.L.U. (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 18, 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.

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 August 20, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 10, 2014.

The Center appointed Cherise Valles as the sole panelist in this matter on September 16, 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.

In its Registrar Verification, the Registrar confirmed that the Registration Agreement in this case has been accepted in both English and Spanish. The Complainant requested that the language of proceedings be English, given the difficulty (and additional time and cost) of bringing proceedings in Spanish. The Panel notes that it would have accepted a Response in either English or Spanish, as previous Panels have done. See, for example, Red Bull GmbH v. Akiyoshi Fukumitsu, hivelocity Inc., WIPO Case No. D2012-1209.

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 <petrobras.com>, <petrobras.com.br>, <petrobras.net>, <petrobras.org>, <petrobras.us>, <petrobras.fr>, <petrobras.pt> and <petrobras.cl>. Details of these websites are listed in Annex 6 to the Complaint.

The disputed domain name <petrobrasmalvinas.com> was registered on February 24, 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 authorized 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. By using the disputed domain name, the Respondent is trying to attract Internet users to its business by creating a likelihood of confusion with the Complainant's trademarks.

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 generally 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 <petrobrasmalvinas.com> 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 the PETROBRAS trademark in Brazil and worldwide. 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 is not making a legitimate noncommercial use of the disputed domain name. The Respondent has been using the website to promote a gas station without the Complainant's authorization. In the Panel's view, the Respondent is not using the disputed domain name to offer bona fide goods or services since as of August 5, 2014, the website clearly used without authorization the Complainant's trademarks and trade dress. A view of the page related to the disputed domain name <petrobrasmalvinas.com> was 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 <petrobrasmalvinas.com>, Internet users find a website promoting a gas station using without authorization Complainant's trademarks and trade dress. The Respondent is clearly attempting to attract customers by creating a likelihood of confusion with the Complainant's trademarks. Previous panels have held that a Respondent cannot maintain a domain name bearing the Complainant's trademark because to do so is to suggest that there is an affiliation between the parties. See General Electric Company v. Japan, Inc., WIPO Case No. 2001-0410.

Furthermore, the Complainant sent a warning letter to the Respondent on June 17, 2014 requesting the cancellation or transfer to the Complainant of the disputed domain name on the basis that the Respondent was not authorized to use its trademarks. However, the Complainant never received a response to its warning letter (which was attached at Annex 9 to the Complaint).

Where a respondent is found to be diverting users to its website to generate traffic and sales commissions for its own commercial benefit, such conduct is uniformly recognized by UDRP panels as constituting bad faith under the Policy. See YAHOO! INC. v. David Murray, WIPO Case No. D2000-1013 (finding bad faith where respondent chooses a domain name similar to the complainant's mark for a site that offers services similar to the complainant).

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 <petrobrasmalvinas.com> be transferred to the Complainant.

Cherise Valles
Sole Panelist
Date: October 4, 2014