WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Petróleo Brasileiro S.A. - Petrobras v. Domains By Proxy, LLC / Kensha Brown, Bright Keys Limited
Case No. D2013-2067
1. The Parties
The Complainant is Petróleo Brasileiro S.A. - Petrobras of Rio de Janeiro, Brazil, represented by Siqueira Castro Advogados, Brazil.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Kensha Brown, Bright Keys Limited of Port Harcourt, Rivers, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <petrobrasnigeria.info> (“the Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2013. On December 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 3, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 9, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 17, 2013.
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 amended Complaint, and the proceedings commenced on December 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2014.
The Center appointed Dawn Osborne as the sole panelist in this matter on January 10, 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
The Complainant is a Brazilian energy company with trade mark registrations for PETROBRAS for oil and gas related services around the world including in the United States. First use in commerce in the United States is recorded as 1987.
The Domain Name was registered on October 15, 2013. It has been used in relation to web pages containing including the Complainant’s trade mark PETROBRAS and also third party advertising links not connected with the Complainant.
5. Parties’ Contentions
The Complainant’s contentions can be summarised as follows:
The Complainant is a Brazilian energy company with trade mark registrations for PETROBRAS around the world including in the United States. It is also the owner of several domain names containing its PETROBRAS mark including <petrobras.com> and <petrobras.us>. The PETROBRAS trade mark is very familiar to consumers in Brazil and based on its extensive use of the mark the Complainant has developed a goodwill and brand recognition of its mark. The Domain Name bears the Complainant’s PETROBRAS trade mark followed by the country name “Nigeria”, one of the places where the Complainant develops its activities in the fields of oil and gas, thus generating the appearance that the Domain Name is owned by the Complainant. As such the Domain Name is identical and confusingly similar to the Complainant’s trade mark.
The Domain Name was registered on October 15, 2013 long after the Complainant accrued its rights in its PETROBRAS mark. The Respondent does not run any business under the name “Petrobras”, has never used such expression to identify its goods and services, is not commonly known by it and does not appear to have any trade mark application or registration for the word “Petrobras”. The Complainant has never authorised the Respondent to use its trade mark PETROBRAS. The Respondent is not using the Domain Name to offer goods or services with bona fide, but is using it for pages containing links to other third party web sites which is not a legitimate noncommercial or fair use. The Respondent has no rights or legitimate interests in the Domain Name.
By using the Domain Name and having on its web pages sponsored links that incorporate the Complainant’s trade mark PETROBRAS, the Respondent’s conduct is a free ride on the Complainant’s goodwill and trade mark. The Complainant sent a warning letter to the Respondent, but did not receive a response. By using the Domain Name the Respondent has intentionally attempted to attract for commercial gain Internet users to its web site or other online location by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site or location of a product or service on its website or location. Additionally the Respondent used a privacy service and appears to have provided incomplete details to that service. As such the evidence shows the Respondent’s bad faith related to the registration and use of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or confusing similarity
The Complainant has trade mark registrations consisting of the PETROBRAS word mark around the world including the United States with first use in commerce in the United States recorded as 1987. The Domain Name is confusingly similar to the Complainant’s trade mark consisting of the Complainant’s PETROBRAS registered trade mark and the country name “Nigeria” a place where the Complainant maintains that it develops its activities in the fields of oil and gas, a contention that has not been challenged by the Respondent. Whilst the Panel has not been referred to any evidence of the Complainant’s activities in Nigeria, Nigeria is, in any event, a country strongly associated with the oil industry. The distinctive part of the Domain Name is the “Petrobras” name. The addition of the country name does nothing to prevent the confusing similarity of the Domain Name with the Complainant’s PETROBRAS trade mark as it is merely a geographically descriptive name and indicative of a place where the Complainant says it does business and which is strongly associated with the oil industry. The “.info” suffix is ignored for the purposes of this test under the Policy. As such the Panel holds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy.
B. Rights or Legitimate Interests of the Respondent
The Respondent has not filed a Response. It has no consent from the Complainant, and it has not used the Domain Name for a bona fide offering of goods and services given its confusing use, as discussed below, and it is not commonly known by the Domain Name. Nor is it making noncommercial fair use of it. In the circumstances of this case, and in view of the Panel’s discussion below, the Panel finds that the second element of the Policy has been established.
C. Registered and Use in Bad Faith
Paragraph 4(b) of the Rules sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
“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, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”
The Respondent has not provided any explanation why it would be entitled to register a domain name equivalent to the Complainant’s trade mark with only the geographically descriptive term “Nigeria” added, Nigeria being a country well known for its oil industry. The website at the Domain Name has also been used for advertisement links to third party websites not connected to the Complainant. In the absence of a Response from the Respondent, considering the fame of the Complainant, the Panel is satisfied that the Complainant has shown that the Respondent both registered the Domain Name in bad faith and is using the Domain Name to attract Internet traffic to its site for commercial gain by creating a likelihood of confusion that its website is connected to the Complainant. As such the Panel finds that the Domain Name has been registered and is being used in bad faith and does not need to consider the further contentions of the Complainant as to the use of a privacy service and alleged provision of incomplete contact details.
For the foregoing reasons, the Panel orders that the Domain Name <petrobrasnigeria.info> be transferred to the Complainant.
Date: January 14, 2014