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WIPO-UDRP Decision
D2013-0407

Case number
D2013-0407
Complainant
Petróleo Brasileiro S.A. - Petrobras
Respondent
PrivacyProtect.org/ Michael Loughlin, N/A
Panelist
Samuel, Adam
Affected Domains
Status
Closed
Decision
Transfer
Date of Decision
22.04.2013

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Petróleo Brasileiro S.A. - Petrobras v. PrivacyProtect.org / Michael Loughlin, N/A

Case No. D2013-0407

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 PrivacyProtect.org of Nobby Beach, Queensland, Australia / Michael Loughlin of Dubai, Abu Dhabi, United Arab Emirates.

2. The Domain Name And Registrar

The disputed domain name <petrobras-sa.org> is registered with Click Registrar, Inc. d/b/a publicdomainregistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2013. On February 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 12, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 14, 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 March 19, 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 proceedings commenced on March 20, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 10, 2013.

The Center appointed Adam Samuel as the sole panelist in this matter on April 16, 2013. 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 well-known brazilian energy company and one of the largest oil companies in the world. It is the legal owner of a number of trademarks around the world for petrobras, including us trademark registration, no. 3722769, dated December 8, 2009. The disputed domain name was registered on July 11, 2012. The complainant markets its products through a number of domain names, notably <petrobras.com> which was registered on march 5, 1996.

5. Parties’ Contentions

This section sets out the Complainant’s contentions without expressing the Panel’s view of them.

A. Complainant

The Complainant owns registrations for the trademark, PETROBRAS, in many different countries. Based on its extensive use of this trademark, the Complainant has developed substantial goodwill and brand recognition for its mark. PETROBRAS is also a distinctive part of the Complainant’s trade name. The disputed domain name bears exactly the same word “petrobras” as the Complainant’s trademark followed by the word “sa” which means joint-stock company.

The Respondent does not run any business under the name “Petrobras” and has never used such an expression to identify his products or services. The Complainant has never authorized the use of its trademark PETROBRAS by the Respondent.

The website to which the disputed domain name resolves contains a statement that “the website is a free parking page provided by Gossimer as a convenience to their customers. The domain owner is currently creating a great website for this domain.”

By using the disputed domain name and having no substantial content for its webpage, the Respondent is making it clear that it is taking a “free-ride” on the Complainant’s goodwill and trademark. The Respondent has also taken active steps to hide his true identity by protecting his contact information by using a Privacy Service.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion And Findings

Under the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it 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 has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name consists of the Complainant’s trademark and “-sa” and the necessary standard generic top-level domain (gTLD) suffix “.org”. The Complainant’s trademark is a made-up word intended to indicate the Complainant’s connection with both petrol and Brazil. The Panel can think of a number of possible meanings of “-sa” in this context in addition to the one suggested by the Complainant. The important point to note here, though, is that the Complainant’s highly distinctive trademark represents the predominant part of the dispute domain name. The addition of generic or meaningless words and the gTLD suffix “.org” to a trademark does not prevent the resulting domain name from being confusingly similar to the trademark concerned. This is particularly the case here where the trademark is not a word in general use. For these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or legitimate interests

The Respondent is not called “Petrobras” or anything similar and does not appear to trade under that or any related name. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. For these reasons, and in the absence of any response, notably one contradicting the Complainant’s claim that the Respondent has never been connected to it in any way, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant’s trademark is extremely well known worldwide. It is impossible, at least without a Response to the Complaint, to identify a reason why the Respondent registered the disputed domain name except to benefit in some way from the Complainant’s trademark. The only explanation of what has happened seems to be that the Respondent’s motive in registering the disputed domain name was either to disrupt the Complainant’s relationship with its customers or potential customers, attempt to attract Internet users for potential gain or persuade the Complainant to buy the disputed domain name for an amount in excess of the Respondent’s out-of-pocket expenses. These all constitute evidence of registration and use in bad faith.

The Respondent has not put any content on the website to which the disputed domain name resolves. However, the act of retaining a domain name without any right or legitimate interest in doing so, knowing that it replicates some else’s trademark and thus prevents that other person from exploiting the name, is itself use in bad faith.

For all these reasons, the Panel concludes that the Respondent registered and is using the dispute domain name in bad faith.

The Panel, though, rejects the view that the use of a Privacy Service itself constitutes bad faith. Privacy Services can be used legitimately to hide contact details about the legitimate owners of domain names. See paragraph 3.9, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

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 <petrobras-sa.org> be transferred to the Complainant.

Adam Samuel
Sole Panelist
Date: April 22, 2013