Westmore · UDRP DecisionPetrobras-nig.com
The Panel ordered transfer of <petrobras-nig.com>. It found the domain confusingly similar to the Complainant’s well-known registered PETROBRAS mark because it incorporated the mark and added only a hyphen and the geographically descriptive letters “nig,” referring to Nigeria. The Complainant established an unrebutted prima facie case that the Respondent lacked rights or legitimate interests. Despite the domain’s passive use, the well-known character of the mark and the Respondent’s failure to reply supported a finding of bad-faith registration and use.
The timeline behind petrobras-nig.com
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Westmore reconstructs the full history behind petrobras-nig.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
This decision illustrates that combining a well-known mark with a geographic abbreviation linked to the trademark owner’s business territory may reinforce rather than dispel an impression of affiliation. It also demonstrates that passive holding can satisfy the bad-faith element when the totality of the stated circumstances includes a well-known mark and an unanswered complaint.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Zentrum ADMINISTRATIVE PANEL DECISION Petróleo Brasileiro S.A. - Petrobras v. TDT Management Case No. D2013-2070 1. The Parties Complainant is Petróleo Brasileiro S.A. - Petrobras of Rio de Janeiro, Brazil, represented by Siqueira Castro Advogados, Brazil. Respondent is TDT Management of Dublin, Ireland. 2. The Domain Name and Registrar The disputed domain name <petrobras-nig.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (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 10, 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 Respondent of the Complaint, and the proceedings commenced on December 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 8, 2014. The Center appointed Lorelei Ritchie 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 Complainant is a major international energy company based in Brazil. As the seventh largest oil company in the world, Complainant has market capitalization of about USD 180 billion, and has over 80,000 employees. According to Forbes magazine, it is among the top 20 companies in the world for sales and market value. The company was founded in 1953 and owns registrations for the mark PETROBRAS in Brazil and around the world, including European Community Registration No. 008941015 (registered 2010) and 008941056 (registered 2010), as well as Brazilian Registration No. 006005098 (registered 1974), among others. In light of its global market presence and sales, the Panel finds the mark to be well known. Complainant also owns the registration for several domain names that include its registered PETROBRAS mark, which it uses to introduce consumers to the goods and services associated with its mark. These include <petrobras.com> (registered March 6, 1996) and <petrobras.com.br> (registered June 14, 1996) as well as other generic and country code top level domains, including “.net”, “.org”, “.us”, “.fr”, “.pt”, and “.cl”. The disputed domain name <petrobras-nig.com> was registered on September 9, 2013. Respondent has no affiliation with Complainant. Respondent has maintained a passive website at the URL associated with the disputed domain name. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby. 5. Parties’ Contentions A. Complainant Complainant contends that (i) <petrobras-nig.com> is identical or confusingly similar to Complainant’s trademark; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith. B. Respondent Respondent did not file a reply to Complainant’s contentions in this proceeding. 6. Discussion and Findings A. Identical or Confusingly Similar This Panel must first determine whether <petrobras-nig.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s well-known, registered trademark PETROBRAS, and merely adds a hyphen with letters “nig,” which is a geographically descriptive term for the country Nigeria, a place where Complainant conducts activities in its energy business. The Panel finds that the added term would be perceived by Internet users as descriptive of a website where they could find information about products or services regarding Complainant’s activities in or related to Nigeria. Accordingly, Internet consumers would expect to find information offered by Complainant on such a website. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions , Second Edition (“WIPO Overview 2.0”) provides guidance on cases where a geographically descriptive term is added to a mark. Paragraph 1.9 notes that “The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP.” See Playboy Enterprises Int’l, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768 , <playboyturkey.com> transferred. This Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in a domain name in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert Internet consumers or to tarnish the trademark or service mark at issue”. Respondent did not submit a reply to the Complaint, however. The Panel finds that Complainant has established a prima facie case of lack of rights and legitimate interests which Respondent has not rebutted. C. Registered and Used in Bad Faith There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site 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 [respondent’s] website or location or of a product or service on [the] web site or location.” As noted in Section 4 of this Panel’s decision, Respondent has merely established a passive website. Turning again to WIPO Overview 2.0 for guidance, the consensus view in Paragraph 3.2 states that “With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith.” Rather, a panel must examine “all of the circumstances” including, for example, whether Complainant has a well-known trademark, and whether Respondent replies to the Complaint. Here, the Panel has found that Complainant’s mark is well-known. Further, since Respondent did not reply, this case fits well within the consensus view of finding bad faith even for passive holding. Therefore, this Panel finds that Respondent registered and is using the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy. 7. Decision For all 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-nig.com> be transferred to Complainant. Lorelei Ritchie Sole Panelist Dated: January 23, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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