Westmore · UDRP DecisionPetrobrasnavarra.com
The Panel ordered transfer of <petrobrasnavarra.com>. It found the domain confusingly similar to the PETROBRAS mark because it incorporated the mark in full and merely added the geographic term “Navarra.” The Complainant established a prima facie absence of rights or legitimate interests, which the defaulting Respondent did not rebut. Bad faith was found from the widely known and coined nature of PETROBRAS, the likelihood that the Respondent knew of the mark when registering the domain, the absence of an alternative explanation, and passive holding of the inactive domain.
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The case illustrates how a domain comprising a widely known, coined trademark plus a geographic term can satisfy confusing similarity, and how an inactive domain may still support bad faith where the mark is distinctive, the registrant likely knew of it, and no credible explanation or legitimate use is provided.
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 Petroleo Brasileiro S.A - Petrobras v. Ivonne Mora Case No. D2014-0992 1. The Parties Complainant is Petroleo Brasileiro S.A – Petrobras of Rio de Janeiro, RJ, Brazil, represented by Ouro Preto Advogados, Brazil. Respondent is Ivonne Mora of Bogotá, Colombia. 2. The Domain Name and Registrar The disputed domain name <petrobrasnavarra.com> is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2014. On June 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 13, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 June 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 14, 2014. The Center appointed Pablo A. Palazzi as the sole panelist in this matter on July 31, 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 Petroleo Brasileiro S.A. – Petrobras, a Brazilian multinational energy company headquartered in Rio de Janeiro. According to Petroleum Intelligence Weekly (PIW), a publication that divulges the ranking of the world’s 50 biggest and most important oil companies in 2007, Petrobras was rated the world’s 7th biggest oil company with shares traded at stock exchanges. Complainant owns a number of Brazilian trademark registrations for PETROBRAS, dating from as early as July 25, 1974. The Complainant also owns trademark registrations for PETROBRAS in several countries around the world. In addition, Complainant registered and has been using several domain names containing the trademark PETROBRAS. According to the registrar’s verification response, the disputed domain name was registered on August 21, 2013. 5. Parties’ Contentions A. Complainant Complainant alleges that the disputed domain name reproduces its registered trademark PETROBRAS and is, therefore, both identical and confusingly similar to its trademark. Complainant argues that Respondent has no rights or legitimate interests over the disputed domain name, as Respondent is not known by the disputed domain name, Respondent is not using the disputed domain name in connection with a bona fide offer of goods or services. Complainant argues that, in fact, Respondent is not making any use of the disputed domain name. With respect to bad faith, Complainant states that the disputed domain name was registered and is being used by Respondent in bad faith. Complainant has never authorized Respondent to use or register the trademark PETROBRAS as a domain name. In this sense, the disputed domain name < petrobrasnavarra.com> containing the term “petrobras” confuses Internet users, who are led to believe that the website was endorsed and authorized by the Complainant. Currently the page is empty, however, when accessed on November 27, 2013, Complainant states that users could see a message concerning environmental conservation, which led to confusion since Complainant has a strong role in protecting the environment, since operates in the oil and gas sector. Complainant states that by using the disputed domain name bearing Complainant´s trademark without an authorization or consent, it is clear that Respondent’s conduct is a parasitic exploitation of Complainant’s famous trademark, profiting unlawfully by attracting Internet users and creating a likelihood of confusion. Complainant states that in October 9, 2013, it sent a letter to Respondent requesting the cancellation or transfer of the disputed domain name to Complainant. According to Complainant, Respondent was acting in bad faith under the terms of Policy’s paragraph 4 (b) (iv) by using the disputed domain name for commercial gain both to attract Internet users to its website and to create a likelihood of confusion with Complainant’s famous trademark. Complainant cites General Electric Company v. Japan, Inc ., WIPO Case No. D2001-0410 and Vibram S.p.A. v. Chenyanbing, WIPO Case No. D2010-0981 . Complainant requests the transfer of the disputed domain name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Pursuant to the Policy, paragraph 4(a) Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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 Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the disputed domain name is identical or confusingly similar to the trademark. Where a domain name wholly incorporates a trademark, the addition of a geographic indicator ( i.e. “Navarra”) will generally not distinguish the domain name from the trade mark (see e.g. Google Inc. v. Google Adwords Service at HCMC, Vietnam , WIPO Case No. D2013-0298 and Nike, Inc. v. No Owner / Ashkan Mohammadi , WIPO Case No. D2013-1297 ). Here, the Panel finds that the distinctive element of the Disputed Domain Name is the Trademark PETROBRAS. The addition of the geographic indicator “Navarra” and the generic Top-Level Domain (gTLD) suffix, “.com” does nothing to prevent the confusing similarity of the disputed domain name with the trademark. In light of the above, the Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name that contains in its entirety Complainant’s PETROBRAS trademark. Complainant has made a prima facie case in support of its allegations and, therefore, the burden of production of evidence shifts to Respondent to show that it does have rights or legitimates interests in the disputed domain name, according to paragraph 4(a) (ii) of the Policy. Respondent did not reply to Complainant’s contentions and, therefore, did not submit any evidence of rights or legitimate interests over the disputed domain name. With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name. With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services. The disputed domain name is currently not in use. In view of the above, the Panel finds that Complainant has established the second condition of the paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith: (i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or (ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or (iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with 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 Respondent's website or location. The Panel finds that it is likely that Respondent was aware of Complainant and its reputation in the PETROBRAS trademark at the time the disputed domain name was registered. The PETROBRAS trademark has been extensively promoted by the Complainant around the globe, making it a well-known mark ( Petroleo Brasileiro S.A - Petrobras v. Daniel Macintyre, WIPO Case No. D2014-1075 ; Petroleo Brasileiro S.A - Petrobras v. Job Seeker Pty Ltd , WIPO Case No. D2011-1248 ; Petróleo Brasileiro S.A. – Petrobras v. Regina Machado G ., WIPO Case No. DBR2012-0004 ; and Petróleo Brasileiro S.A. - Petrobras v. Mohammad Ali Mokhtari, WIPO Case No. DIR2013-0004 ). It is thus highly likely that Respondent was fully aware of the existence of Complainant and its rights in the PETROBRAS trademark at the time it registered the disputed domain name. Furthermore, the PETROBRAS trademark is a coined term with no descriptive or generic meaning and as such it is not apparent why anybody would choose to register the disputed domain name unless seeking to create an association with Complainant. Finally, Respondent has provided no alternative explanation, either in this proceeding or in correspondence with Complainant, for its registration of the disputed domain name. Currently, the disputed domain name resolves to an unavailable web page, which, according to several prior UDRP decisions, is considered a case of passive holding of the disputed domain name. Prior UDRP decisions have ruled that passive holding does not prevent a finding of bad faith. See e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition , paragraph 3.2 ("WIPO Overview 2.0"). Considering all the circumstances of this case and notably the facts that Complainant has a widely known trade mark and Respondent failed to file a Response in this case, the Panel finds that Respondent registered and is using the disputed domain name in bad faith. Complainant has therefore established the third element of the paragraph 4(a) of the Policy. 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 <petrobrasnavarra.com> be transferred to Complainant. Pablo A. Palazzi Sole Panelist Date: August 14, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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