Westmore · UDRP DecisionPetrobrasaustralia.com
The Panel ordered transfer of <petrobrasaustralia.com>. It found the domain confusingly similar to the Complainant’s internationally well-known PETROBRAS mark because it incorporated the mark in full and merely added the geographic term “Australia.” The Complainant established a prima facie case that the Respondent lacked rights or legitimate interests, which the Respondent did not rebut. Registration and use in bad faith were found based on the mark’s distinctiveness and reputation, the implausibility of independent creation, passive holding, the Respondent’s default, and apparently incomplete contact details.
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The decision illustrates that combining a well-known, distinctive trademark with a geographic term may remain confusingly similar and may suggest an apparent regional association. It also demonstrates that non-use does not prevent a bad-faith finding where the mark’s reputation and distinctiveness, the respondent’s default, the circumstances of registration, and deficient contact information collectively support passive-holding bad faith.
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. Lirong Shi Case No. D2013-2077 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 Lirong Shi of Jinjiang, Fujian, China. 2. The Domain Name and Registrar The disputed domain name <petrobrasaustralia.com> (“the Domain Name”) is registered with Jiangsu Bangning Science & technology Co. Ltd. (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 and 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 December 16, 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 19, 2013. On December 16, 2013, the Center also transmitted an email to the parties in both English and Chinese regarding the language of proceedings. On December 26, 2013, the Complainant filed its language submission requesting that English be the language of proceedings. The Respondent did not submit any comments on the language of proceedings within the specific due date. 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 December 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 17, 2014. The Center appointed Karen Fong as the sole panelist in this matter on January 27, 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 ranked as the seventh biggest oil company in the world. It has a presence in 28 countries around the world. The Complainant’s stocks are publicly traded on a number of stock exchanges. The Complainant trades under the trade mark PETROBRAS. It owns many trade mark registrations for the mark in Brazil and other parts of the world. The earliest trade mark registration submitted in evidence dates back to 1974. The Complainant also owns a number of domain names which incorporate the PETROBRAS trade mark. They include <petrobras.com>, <petrobras.com.br>, <petrobras.net>, <petrobras.org>, <petrobras.us>, <petrobras.fr>, <petrobras.pt> and <petrobras.cl>. The Domain Name was registered on July 21, 2013. It does not appear that the Domain Name has ever been connected to an active website. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name is identical or confusingly similar to the PETROBRAS trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely 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 was registered and is being used in bad faith. B. Preliminary Procedural Issue – Language of the Proceeding The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the registration agreement is Chinese. The Complainant submits in its Request for English to be the Language of the Administrative Proceeding filed on December 26, 2013 that the language of the proceeding should be English for the following reasons: (1) The website of the Registrar is in English which is evidence that the Respondent understands and communicates in English; (2) The Complainant being a Brazilian company has no knowledge of the Chinese language and it would therefore cause enormous additional expense and delay for the Complaint and the supporting evidence to be translated; (3) English is widely recognized as the standard language for business and communications around the world; (4) The Respondent will be given an unfair advantage if the language of the proceeding is Chinese. The Panel accepts the Complainant’s submissions regarding the language of the proceeding and is satisfied that the Respondent will not be disadvantaged from the proceeding being in English. The Complainant on the other hand may be unduly disadvantaged by having to conduct the proceedings in Chinese. Furthermore, the Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. The Respondent has failed to file a response. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding. C. Identical or Confusingly Similar The Panel is satisfied that the Complainant has established that it has rights to the trade mark PETROBRAS and the mark is well known internationally. The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Complainant’s registered trade mark PETROBRAS is the dominant portion of the Domain Name. The addition of “Australia” a geographical indicator does nothing to minimize the risk of confusion. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic domain suffix “.com”. For the reasons above, the Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. D. Rights or Legitimate Interests The Complainant alleges that it has not licensed, consented or otherwise authorized the Respondent to use its PETROBRAS trade mark in the Domain Name or any other manner. The Respondent is not commonly known by the Domain Name. As far as the Complainant is aware, the Respondent does not own any trade mark application or registration for the word “Petrobras”. The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name. Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. E. Registered and Used in Bad Faith To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement. The Panel is satisfied that the Respondent must have been aware of the Complainant’s PETROBRAS marks when it registered the Domain Name. The Domain Name incorporates the Complainant’s well-known trade mark in its entirety. PETROBRAS is also a distinctive word with no ordinary meaning in the English or Chinese language. Hence it is highly unlikely that the Respondent created this name independently. In the Panel’s view, the above is evidence that the registration of the Domain Name was in bad faith. In relation to ascertaining whether the Domain Name is being used in bad faith, the fact that the Domain Name is not connected to an active website does not prevent a finding of bad faith. The consensus view in paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions , Second Edition states that the apparent lack of active use of the domain name without any active attempt to sell or to contact the trade mark owner does not prevent a finding of bad faith. The panel has to examine the circumstances of the case to determine whether the respondent is acting in bad faith. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa . In addition to the circumstances of registration referred to above, the following facts indicate that the Domain Name is being used in bad faith – the Complainant has a well known trade mark, the Respondent failed to file a response, the Respondent does not appear to have given a proper contact address when he/she registered the Domain Name. It will be surprising if one is able to locate someone at “jinjiangshi, jinjiang, Fujian, 362200” without a street number or proper street name. Considering the circumstances, the Panel finds that the Domain Name is also being used in bad faith. Therefore, the Panel finds that the Respondent has registered and is using the 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 Domain Name <petrobrasaustralia.com> be transferred to the Complainant. Karen Fong Sole Panelist Date: February 11, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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