WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Petroliam Nasional Berhad (PETRONAS) v. Daniela Naidu
Case No. D2000-1777
1. The Parties
The Complainant in this administrative proceeding is PETRONAS, the acronym for Petroliam Nasional Berhad, a company limited by shares incorporated in Malaysia, with its registered address at Tower 1, PETRONAS Twin Towers, Kuala Lumpur City Center, 50088 Kuala Lumpur, Malaysia.
The Respondent is Daniela Naidu with a contact address at 14510 Big Basin Way #205, Saratoga, CA 95070, United States of America.
2. The Domain Name and Registrar
The domain name in dispute is <petronas.net>, registered with Network Solutions, Inc., United States of America.
3. Procedural History
3.1 A Complaint was submitted to the WIPO Arbitration and Mediation Center by e-mail on December 21, 2000 and in hard copy on January 4, 2001.
3.2 A request for Registrar verification was transmitted to the Registrar, Network Solutions, Inc., on December 27, 2000, requesting for it to: (a) confirm that the domain name in issue is registered with Network Solutions, Inc.; (b) confirm that the Respondent is the current registrant of the domain name in dispute; (c) provide the full contact details [i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)] available in the Registrarís Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (d) confirm that the Uniform Domain Name Dispute Resolution Policy ("the Policy") is in effect; and (e) indicate the current status of the domain name.
3.3 On December 29, 2000, Network Solutions Inc., confirmed that the domain name in question was registered with Network Solutions, Inc., and that the Respondent was the current registrant of the domain name registration. It also confirmed that the domain name is currently in "Active" status. The Registrar also forwarded the requested Whois details and confirmed that the Policy is in effect.
3.4. On January 8, 2001 a Complaint Deficiency Notification was sent to the Complainant. The Complainant was required to amend Section VII, Paragraph 15 of the Complaint whereby the Complainant had to submit, with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name, to the jurisdiction of the courts at the location of the domain name holderís address.
3.5 On January 10, 2001 the WIPO Arbitration and Mediation Center received the amended Complaint by e-mail. A hard copy of the same was received on January 15, 2001.
3.6 The WIPO Center determined that the amended Complaint satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center in this regard. The Complainant also paid on time and in the required amount the fees for a sole Panelist.
3.7 No formal deficiencies having been recorded, on January 17, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, Network Solutions, Inc. and ICANN), setting a deadline of February 5, 2001, by which time the Respondent could file a response to the Complaint.
3.8 Having reviewed the communication records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to the Respondent."
3.9 On February 7, 2001, not having received any response, the WIPO Center sent the parties a formal Notification of Respondent Default.
3.10 In view of the Complainantís designation of a single member panel, the WIPO Center appointed Mr. Pravin Anand to serve as the sole Panelist. The Panel was required to forward its decision to WIPO by March 1, 2001.
4. Factual Background
4.1 The Complainant, Petroliam Nasional Berhad (PETRONAS), is Malaysiaís national petroleum corporation. It is wholly owned by the Malaysian government and is the sole concessionaire with the right and responsibility to develop and add value to Malaysiaís petroleum resources.
4.2 PETRONAS is engaged in a broad spectrum of petroleum and related value adding business activities. The PETRONAS group operates in 22 countries all around the world. The Complainant has been ranked as one among the worldís 500 largest corporations in the Fortune Global 500 listing. It is one of the largest petroleum refining corporations, in terms of its profits and returns.
4.3 In addition to its core oil and gas activities, the Complainant is involved in several other fields such as education, arts and sports.
4.4 The Complainant has been involved over the years in several education and human resource development activities. These include, setting up of an institute to provide technical training for employment by Malaysian petroleum industries called INSTEP; setting up of a technology university called the PETRONAS Technology University (UTP); the establishing of an interactive science discovery centre called PETROSAINS which is designed as an interactive museum.
4.5 PETRONAS also offers annual scholarship programmes to deserving students in Malaysia. These include programmes for domestic study and overseas education as well.
4.6 The Complainant has also initiated several programmes and facilities for the development of fine arts and culture. The PETRONAS Gallery was established to stimulate the development of visual arts. It provides an avenue for artists to display their artworks. The PETRONAS Performing Arts Group, a 90-member group was established to promote the performing arts. Additionally, the PETRONAS Philharmonic Hall, opened in 1998 is Malaysiaís first dedicated classical concert hall and has been host to several performances since then.
4.7 PETRONAS also sponsors several major sporting events to promote its brand and corporate image. The Complainant is the main sponsor of the Red Bull Ė Sauber Petronas Formula One Grand Prix racing team. Formula One, being one of the biggest media events in the world, the Complainant considers its involvement in the same to be an integral part of its strategy seeking to promote and generate awareness about its brand and to enhance its own technical capabilities in related fields. The home pages of the Formula One team are http://www.redbull-sauber.ch and http://www.sauber-petronas.ch.
4.8 Additionally, the Complainant also sponsors other racing teams such as the PETRONAS Sprinta Team TVK motorcycle racing team, the PETRONAS EON racing team, the PETRONAS Primas PX2 touring car team and the Team PETRONAS Syntium Opel.
4.9 In its trade, the Complainant uses the trademark and/or service mark PETRONAS. The same appears on all its advertisements, promotional materials, websites, properties, packaging, billboards, stationary and other items. The Complainant has also over the years spent a considerable amount of money in creating and promoting awareness in its mark PETRONAS, both nationally and internationally.
4.10 Further, in order to protect and preserve its rights in the said trademark / service mark, the Complainant has registered the mark on a global basis, primarily in regions where it carries out its operations.
4.11 The Complainant also owns and operates the website http://www.petronas.com.my, which contains information on the Complainantís activities. The site can be accessed worldwide as of March 1, 1996.
4.12 On October 2, 2000, the Complainant sent a letter to the Respondent asking the latter to cease using the domain name in dispute or to transfer the same to the Complainant. The letter was however returned with a remark that the Respondent had changed her address. The change was however, not reflected in the Whois database of the Registrar. Copies of the said letter were also transmitted through fax and e-mail to the Respondent. To date however, no response has been received by the Complainant to the same.
4.13 The Respondent is yet to activate the web-site petronas.net. The site is supposedly under construction.
4.14 Thereafter, the Complainant has instituted the present proceeding.
5. Partiesí Contentions
A. The Complainant has delineated its contentions under three broad heads as below:
Identical or confusing similarity
5.1 The domain name petronas.net registered in the name of the Respondent uses the word or name PETRONAS and is identical or confusingly similar to the Complainantís trademark and/or service mark in which the Complainant has rights.
5.2 The name PETRONAS refers to and is distinctive of the Complainant and of none other. The Respondent does not carry out any activity under the said name, either as a trademark or a service mark. Neither does the Respondentís name bear the word PETRONAS. Further, the website registered by the Respondent is yet to be activated and supposedly under construction.
5.3 It can therefore be gathered that the only rights/interests in the disputed domain name, which the Respondent has, are:
(a) to resell, rent or otherwise transfer the domain name registration to the Complainant or to any of the Complainantís competitors for valuable consideration in excess of the Respondentís out-of-pocket expenses directly related to the domain name petronas.net;
(b) to prevent the Complainant from reflecting the trade name or service mark in a corresponding domain name;
(c) to misappropriate the Complainantís goodwill and reputation through the use of the said domain name;
(d) to hold the Complainant at ransom under the threat or potential passing off;
(e) to dilute the distinctiveness of the Complainantís trade name or service mark; and/or
(f) to unlawfully interfere with the Complainantís trade and business and/or economic interests.
5.4 The acts and conduct of the Respondent are calculated to deceive and mislead or are likely to deceive and mislead the trade and public into believing that the domain name petronas.net registered by the Respondent is that of the Complainant or is otherwise howsoever associated, affiliated or connected with the Complainant.
5.5 The aforementioned acts and conduct of the Respondent are calculated to deceive and mislead or are likely to deceive and mislead the trade and public into believing that the domain name petronas.net is owned by an entity that is named PETRONAS or is in some way connected to the word PETRONAS.
5.6 The acts of the Respondent have deprived the Complainant of the right and opportunity of having a domain name comprising its own trade name, which is international in character. The Complainant has thereby suffered a loss of competitive advantage and identity on the Internet.
5.7 The acts and conduct of the Respondent leaves with it an instrument of deception, which may be used to perpetrate a wrong at law. The use of the domain name in dispute in any manner, by the Respondent would cause the Complainantís trade name to lose its distinctiveness and thereby devalue its goodwill and reputation associated with the same and will also thereby dilute the Complainantís mark.
5.8 The Respondent has passed off or attempted to pass off or is likely to pass off or enable the passing off of; the domain name petronas.net as and for that of the Complainant; its business and trade or that of any third party as being connected howsoever with those of the Complainant through the use of the domain name petronas.net.
5.9 The Respondentís acts constitute an infringement of the Complainantís registered trademarks, as also an unlawful interference with the commercial interests of the Complainant.
5.10 The Complainant therefore states that the domain name petronas.net was registered and is being used in bad faith by the Respondent.
B. The Respondent has not filed any response in these proceedings.
6. Discussions and Findings
6.1 Paragraph 4(a) of the Policy requires the Complainant to prove the following:
(a) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered and is being used in bad faith.
6.2 This is a fairly straightforward case. Applying the facts to the three elements of the Policy, the Panel finds:
(a) The domain name registered by the Respondent is identical or at least confusingly similar to the Complainantís well known trade and service mark registered in numerous countries and used extensively in relation to diverse products and services. Hence the first element of the Policy is satisfied.
(b) The Respondent has not filed a response and the averments of the complainant have, therefore, not been contradicted or met. There is no evidence on record to show that the Respondent has used the domain name petronas.net in any form whatsoever. Even the website of the Respondent is inactive and supposedly "under construction". Consequently, the Panel holds that the Respondent does not have any rights or legitimate interest in respect of the domain name petronas.net.
(c) The fame and reputation of the name PETRONAS coupled with the fact that the Respondent has not filed a response and has a passive website show bad faith. Moreover, the Complainant has averred that the contact details of the Respondent are incorrectly reflected in the Whois database of the Registrar. Here again, there is no denial by the Respondent, and this would show registration and use in bad faith.
For all the foregoing reasons, the Panel decides that the domain name registered by the Respondent is identical to the trade and service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the Respondentís domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the impugned domain name be transferred to the Complainant.
Dated: March 1, 2001.