Westmore · UDRP DecisionPetrobrasileiro.com
The Panel ordered transfer of <petrobrasileiro.com> to Petróleo Brasileiro S.A. - Petrobras. It found the domain confusingly similar to the PETROBRAS trademark because “Petrobrasileiro” conveyed substantially the same meaning and could make PETROBRAS appear to be its shortened form. The Respondent had no authorization or demonstrated rights or legitimate interests. Bad faith registration and use were found based on the Respondent’s passive holding of the inactive domain, the reputation of PETROBRAS, the absence of any demonstrated legitimate connection to the name, and the domain remaining registered to the Respondent despite the suspended website account.
The timeline behind petrobrasileiro.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind petrobrasileiro.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
This decision illustrates a transfer based on a semantic expansion of a mark rather than a simple misspelling or exact reproduction. It also shows that a suspended or inactive website does not preclude bad-faith use where the panel finds passive holding in the context of a reputed mark, no authorization, no demonstrated legitimate interest, and no respondent rebuttal.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Petróleo Brasileiro S.A. - Petrobras v. Thabata Lino Case No. D2013-2066 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 Thabata Lino of Araraquara, São Paulo, Brazil. 2. The Domain Name and Registrar The disputed domain name <petrobrasileiro.com> is registered with eNom (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 disputed domain name. On December 2, 2013, 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 December 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2013. The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on January 9, 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 presence in 28 countries around the world, ranked as the 7th biggest oil company in the world, with shares traded at stock exchanges, by the Petroleum Intelligence Weekly (PIW). As a reference in the energy field, the Complainant has been endeavoring to protect its intellectual property rights around the world. In Brazil, the Complainant is the titleholder of the trademark PETROBRAS in a wide range of international classes before the Brazilian Institute of Industrial Property (Annex 4 of the Complaint). Furthermore, the Complainant owns several registrations for trademark PETROBRAS in many countries (Annex 5 of the Complaint). In addition, in order to develop its commercial activity on the Internet, the Complainant registered and has been using several domain names containing the trademark PETROBRAS (Annex 6 of the Complaint). PETROBRAS trademarks are widespread among general public and are very familiar to consumers in Brazil and in other countries (Annex 7 of the Complaint). On October 22, 2013, the Respondent registered the disputed domain name <petrobrasileiro.com>. The Complainant sent a warning letter October 29, 2013, by email, to the Respondent informing the violation of Petrobras’ rights over the registration and use of the disputed domain name <petrobrasileiro.com> and requesting its cancellation or transfer to the Complainant (Annex 10 of the Complaint). The Respondent has never replied to this warning letter. By accessing the website at the disputed domain name <petrobrasileiro.com>, Internet users cannot find any content related to the disputed domain name. On the contrary, the webpage has a sign stating “this account has been suspended” (Annex 8 of the Complaint). 5. Parties’ Contentions A. Complainant The Complainant argues that the disputed domain name creates an identity between the word and trademark PETROBRAS, generating the association of trademark PETROBRAS to the services provided by it. In addition, the Complainant alleges that it has conquered a remarkable reputation and image before general public in Brazil and worldwide. As a consequence, based on its extensive use of the trademark PETROBRAS, the Complainant has developed a substantial goodwill and brand recognition on its mark. For this reason, the Complainant states that the unauthorized use of the word and trademark PETROBRAS by the Respondent violates Complainant’s intellectual property rights. The Complainant argues that by using the disputed domain name with no content on its webpage, it is clear that the Respondent’s conduct is a free-ride on the Complainant’s goodwill and trademark. Furthermore, the Complainant argues that having the account at “www.petrobrasileiro.com” suspended is a clear case of passive holding, which amounts to a demonstration of bad faith. Once the Respondent is a Brazilian resident it is very unlikely that it had not previous knowledge of Complainant’s trademark. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Bearing in mind the dimension of the Complainant and the reputation of its company name, trademarks and any other rights over the term “Petrobras”, that is a fantasy name composed of “Petro” (petroleum) + “Bras” (Brazil), the mere registration of the disputed domain name <petrobrasileiro.com>, that has the apparent exact meaning of “Petrobras”, configures a paradigmatic case in which, in a prima facie analysis, there is no doubt for the Panel and for any reasonable person that fulfills the concept of bonus pater familias that the Respondent is violating the intellectual property rights of the Complainant. Notwithstanding the above, and in order to comply with the Policy and Rules, the Panel will examine that the three requirements below have been met. A. Identical or Confusingly Similar The first legal ground to be demonstrated by the Complainant, according to the provisions of the Policy, is the fact that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks. As mentioned in item 6 above, this case is paradigmatic of that situation. The disputed domain name <petrobrasileiro.com> is composed by the exact same terms as the prior rights of the Complainant. The prefix “Petro” plus the prefix “bras” just adding the suffix “ileiro”, do not change, in any way, the meaning of the term “Petrobras”. In fact, “Brasileiro” means citizen of Brazil or something that is made in Brazil, therefore when one compares “Petrobras” and “Petrobrasileiro”, one concludes that it has the same meaning, and, more damaging than that, “Petrobras” could be construed as the shorter version of “Petrobrasileiro”. Therefore, in this Panel’s assessment, the degree of confusing similarity is the highest possible, once compared with other identical or confusingly similar situations, in which the meaning of the term added makes no sense or changes, in any way, the final meaning of the word. For the above mentioned reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests The second legal ground to be demonstrated by the Complainant, according to the provisions of the Policy, is the Respondent’s absence of any rights or legitimate interests in the disputed domain name. It is public and notorious that the Complainant is the owner of the company name, trademarks and domain names composed by the term “Petrobras” and the Complainant has never authorized the use of those rights by the Respondent, thus establishing a prima facie case against the Respondent. Once the Respondent has not submitted any reply to the Complainant’s contentions and the Panel does not find any evidence of Respondent’s rights or legitimate interests, the Panel finds that there are no rights of legitimate interests of the Respondent over the disputed domain name. C. Registered and Used in Bad Faith The third legal ground to be demonstrated by the Complainant, according to the provisions of the Policy, is that the disputed domain name was registered and is being used in bad faith. According to The Royal Bank of Scotland Group plc v. Ash Aster, WIPO Case No. D2012-1718 , the fact that the account has been suspended is not an impeditive factor to the finding of bad faith or to the transfer of the disputed domain name. Consequently, the panel found that there is still bad faith even if the domain name was already suspended, but remained registered in respondent’s name, as in the present case. As shown in Telstra Corporation Limited v. Nuclear Marshmallows , WIPO Case No. D2000-0003 , the panel held that the passive holding of the domain name by the respondent amounts to the respondent acting in bad faith. The present case is a clear case of passive holding, as although the Respondent has the disputed domain name <petrobrasileiro.com> inactive, its registration remains in Respondent’s name even though it has already been shown that the Respondent has no rights or legitimate interests over the disputed domain name. As cited in the Complaint and stated in LACER, S.A. v Constanti Gómez Marzo , WIPO Case No. D2001-0177 , after recognizing the principle of first come first served in the registration of domain names, the Panel held that the first come must come in good faith and the registration of domain names by someone without connection with the Complainant suggests opportunistic bad faith, if no legitimate interest is clearly proven. To conclude, the Panel transcribes below an excerpt of the mentioned decision: “The lack of use of the domain name must also be reexamined under the perspective of good or bad faith. The lack of use 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.” Accordingly, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. 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 <petrobrasileiro.com> be transferred to the Complainant. Gonçalo M. C. Da Cunha Ferreira Sole Panelist Date: January 23, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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