Westmore · UDRP DecisionPetrobrasnigerian.com
The Panel ordered transfer of <petrobrasnigerian.com>. It found the domain confusingly similar to the Complainant’s registered PETROBRAS mark, notwithstanding the addition of the geographical term “nigerian.” The Respondent had no demonstrated rights or legitimate interests because the website was empty and the record showed no bona fide use, evidence that the Respondent was commonly known by the domain, fair use, trademark rights, license, or relationship with the Complainant. Bad faith was found from the targeting of the distinctive PETROBRAS mark, likely hoped-for commercial gain, passive holding, the Respondent’s default, and evidence that the Registrar had suspended the domain “due to 419 scam activities.”
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This decision illustrates how a domain consisting of a distinctive trademark plus a geographical term can satisfy confusing similarity and how passive holding may support bad faith when combined with targeting, default, lack of a plausible legitimate use, and registrar evidence associating the domain with scam activity. It also confirms that respondent default does not eliminate the complainant’s burden to prove every UDRP element.
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. Frank, Peter Anderson Lawfirm Case No. D2014-1073 1. The Parties The Complainant is Petroleo Brasileiro S.A – Petrobras of Rio de Janeiro, Brazil, represented by Ouro Preto Advogados, Brazil. The Respondent is Frank, Peter Anderson Lawfirm of Dallas, Texas, United States of America. 2. The Domain Name and Registrar The disputed domain name <petrobrasnigerian.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 June 20, 2014. On June 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 24, 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 June 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 23, 2014. The Center appointed Christos A. Theodoulou as the sole panelist in this matter on August 13, 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 a presence in 28 countries. According to the uncontested allegations of the Complainant, it is among the 50 biggest oil companies in the world. The Complainant’s markPETROBAS has been registered in Brazil under many registrations since July 25, 1974 and also in many countries like India, Japan, Russian Federation, South Africa and other countries, and also as a Community Trademark. Further, the Complainant has registered and uses several domain names containing the word “petrobras” since 1996. The disputed domain name <petrobrasnigerian.com> was created on January 7, 2014. The disputed domain name is apparently not actually used and the webpage is empty. According to the uncontested allegations of the Complainant, supported by a letter of the Registrar, the disputed domain name is suspended “due to 419 scam activities”. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Before engaging in the threefold discussion of paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue relating to the default of the Respondent. The implications of a default in this case are telling since the Complainant has the burden of proof, according to paragraph 4(a) of the Policy (“In the administrative proceeding, the complainant must prove that each of these three elements are present”). As such, the Panel cannot merely grant the Complainant’s request automatically due to the default, but it has to examine instead the evidence presented to determine whether or not the Complainant has proved its case, as required by the Policy. See FNAC v. Gauthier Raymond , WIPO Case No. D2004-0881 ; Sonofon A/S v. Vladimir Aleksic , WIPO Case No. D2007-0668 ; Gaudi Trade SpA v. Transure Enterprise Ltd , WIPO Case No. D2009-1028 . The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy. A. Identical or Confusingly Similar The Complainant has presented evidence to demonstrate that it owns registered trademark rights in PETROBRAS throughout the world. The mere fact that the Respondent has added to the PETROBRAS mark the geographical term “nigerian” and the suffix “.com” does not to this Panel affect the essence of the matter: the disputed domain name is identical or confusingly similar to the trademark of the Complainant and, in the circumstances of this case, is by itself sufficient to establish the criterion of identity or confusing similarity for purposes of the Policy, as many previous UDRP panels have found. See e.g. , Oki Data Americas , Inc. v. ASD, Inc. , WIPO Case No. D2001-0903 ; Koninklijke Philips Electronics N.V. v. K. Harjani Electronics Ltd. , WIPO Case No. D2002-1021 ; DFDS A/S v. NOLDC INC, WIPO Case No. D2006-1070 ; American Automobile Association, Inc. v. Bladimir Boyiko and Andrew Michailov, WIPO Case No. D2006-0252 . In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point and holds that the disputed domain name <petrobrasnigerian.com> is identical to the Complainant’s trademark PETROBRAS. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances which, if found by a panel to be proved based on its evaluation of the evidence presented, shall demonstrate a registrant’s right to or legitimate interest in a domain name. These examples are discussed in turn below, with regard to the specific facts of this case. (i) Use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute: In the Panel’s view, the Respondent is not using the disputed domain name. According to the available record, the website at the disputed domain name is empty. (ii) An indication that the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark rights: In this case, there is no such indication from the present record. (iii) Legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue: Again, in this case there is no such indication from the record, since the Respondent is not using the disputed domain name. Further, the Respondent does not seem to have any trademark registrations including the term “petrobras”. Additionally, it is to be noted that the Respondent did not present evidence of any license by the Complainant, with whom there seems be no relationship whatsoever. As a conclusion on this point, the Panel finds that the Complainant has established an uncontested, prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant’s argument on this point is mainly based on the circumstances mentioned in paragraph 4(b)(iv) of the Policy in order to demonstrate the Respondent’s bad faith registration and use of the disputed domain name. In reviewing the present case, it appears that the Respondent has registered the disputed domain name, to create a likelihood of confusion with the Complainant’s trademarks. The Panel finds it highly unlikely that the Respondent would register randomly and unintentionally a domain name that is identical or confusingly similar to the Complainant’s distinctive PETROBRAS trademark. Rather, on a reasonable examination of the evidence, it seems to this Panel more likely that such registration and use by the Respondent would be motivated by a hoped-for capitalization, i.e. , commercial gain from the Complainant’s reputation. The Panel also notes the default of the Respondent, which in the present circumstances “reinforces the inference of bad faith registration and bad faith use”. The Hongkong and Shanghai Banking Corporation Limited v. Bill Lynn , WIPO Case No. D2001-0915 . The Panel wishes to comment on the question of use of the disputed domain name <petrobrasnigerian.com>. As said above, attempts to access the website for the disputed domain name result in an empty webpage. There is evidence in the record that the Registrar wrote to the Complainant stating that the disputed domain name is currently suspended “due to 419 scam activities” as also mentioned above. Taking previous decisions into account, the Panel finds that under the circumstances of this case (the default of the Respondent, no answer to the cease and desist letter of the Respondent, passive holding of the domain name by the Respondent, suspension of the disputed domain name “due to 419 scam activities”) the behaviour of the Respondent amounts to bad faith (see e.g. WIPO Case No. D2000-0003 , Telstra Corporation Limited v. Nuclear Marshmallows , WIPO Case No. D2000-0021 Ingersoll-Rand Co. v. Frank Guly . As a consequence of the above, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly, the Panel finds that the Complainant has successfully proven that the disputed domain name is identical or confusingly similar to trademarks and service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name, and 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 <petrobrasnigerian.com> be transferred to the Complainant. Christos A. Theodoulou Sole Panelist Date: August 18, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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