WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Petroliam Nasional Berhad (PETRONAS) v. Internet Prolink SA
Case No. D2001-0379
1. The Parties
1.1 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 Centre, 50088 Kuala Lumpur, Malaysia.
1.2 The Respondent is Internet Prolink SA, ICC Ė CP 1863, Geneva 1215, Switzerland.
2. The Domain Name and Registrar
The domain name in dispute is <petronas.com>, 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., requesting 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 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 The WIPO Center was satisfied with 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.
3.5 On December 21, 2000, the Respondent via e-mail expressed its intention to transfer the impugned disputed domain name to the Complainant.
3.6 On January 9, 2001, the Complainant sent an e-mail to the WIPO Center seeking a temporary suspension of further proceedings, pending the actual transfer of the domain name from the Respondent to the Complainant.
3.7 Despite several reminders to the Respondent by the Complainant, the transfer was never effectuated.
3.8 On March 15, 2001, the Complainant wrote to the Center asking that the Complaint be activated. No formal deficiencies having been recorded on March 27, 2001, a Notification of Complaint and Commencement of Administrative Proceedings (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant,, Network Solutions, Inc and ICANN) setting a deadline of April 15, 2001, by which time the Respondent could file a response to the Complaint.
3.9 Having reviewed the communications 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".
3.10 On April 17, 2001, not having received any response, the WIPO Center sent the parties a formal Notification of Respondent Default.
3.11 In view of the Complainantís designation of a single member panel, the WIPO Center appointed the undersigned to serve as the sole Panelist. The Panel was required to forward its decision to WIPO by May 15, 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 Once 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 17, 1999, the Respondent (through its administrative contact, Mickey Coggins) wrote to the Complainant for the first time, asking if the Complainants were interested in the impugned domain name. The Respondent then wrote on October 13, 2000, mentioning that since he received some emails from customers who had mistaken his site for that of the Complainants, he redirected such mails to the Complainantís site. The Complainant indicated their interest in having the domain name transferred to them and even offered to reimburse the Respondent for the registration and renewals. However since there wasnít any response from the Respondent, the Complainant filed the present proceeding.
4.13 On the date of filing the complaint, the Respondent volunteered to transfer the domain name. The Complainant acting on this representation asked the center to suspend proceedings. However owing to the Respondentís inaction in effectuating the transfer, the Complainant was constrained to activate the proceedings.
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.com> 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 Respondent provides internet related services and in this respect the Complainantís trademark or/and service mark does not appear.
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.com>.
(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.com> 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.com> 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.com> 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.com>.
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 Mr. Coggins (the administrative contact for the impugned domain name) email messages indicates that he was well aware of the Complainantís rights in the trademark PETRONAS. Although he claims to have registered the domain name to prevent its appropriation by domain name "thieves", his actions indicate otherwise. To begin with, he registered the domain name in the name of the present Respondent which is a Swiss Company involved in Internet related services and not in his own name. Despite the Complainantís offer to refund his registration and renewal expenses, he never transferred the domain name to them.
5.11 The Respondentís actions of redirecting the impugned website and the emails to the Complainantís website, petronas.com.my, is calculated o mislead or deceive the public into believing that the impugned website belongs to the Complainant.
5.12 Acting on the Respondentís representations that they would transfer the domain name to the Complainant, the Complainant suspended the proceedings and suffered delay and detriment, owing to the Respondent not having done so.
5.13 The Complainant therefore states that the domain name petronas.com 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 and 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 The panel has decided a similar case, Petroliam Nasional Berhad (PETRONAS) v. Daniela Naidu, Case No. D2000-1777, where the panel found the Complainant to have exclusive trade/service mark rights in the name PETRONAS and had ordered that the domain name be transferred to the Complainant. The facts of this case are similar. Applying the UDRP to the facts of this case, the panel finds as follows:
a) The Complainant has a well known trade and service mark, "Petronas", registered in numerous countries and used extensively in relation to diverse products and services. The domain name is identical to this mark, 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. In the absence of any response, the panel is inclined to agree with the contention of the Complainant that the Respondent has no rights/ legitimate interests in the domain name. The Respondent, which is a Swiss Company involved in Internet related services is not known by the name PETRONAS and neither has it used this name in connection with any goods/services.
c) The fame and reputation of the name PETRONAS coupled with the fact that the Respondent has not filed a response show bad faith. The Respondent had vide its emails admitted knowledge of the Complainantís trademark. Even otherwise, the Complainant has substantial presence in Switzerland (the company has a 40% stakeholding in Sauber Petronas Engineering AG, which is a company located in Switzerland), and it is therefore unlikely that the Respondent had no knowledge of the Complainantís rights in PETRONAS.
d) The Respondent had vide his letter dated October 17, 1999, stated, "if you want this domain, please let me know. I have been paying for it for years"; Implicit in this letter is the demand for money in excess of out of pocket costs incurred in relation to registration of the domain name. The panel therefore infers bad faith from this as well.
e) Although Mr. Mickey Coggins, (the administrative contact for the impugned domain name) had claimed that he registered the domain name to prevent its appropriation by domain name "thieves", his actions indicate otherwise. To begin with, he registered the domain name in the name of the present Respondent, and not in his own name. Despite the Complainantís offer to refund his registration and renewal expenses, he never transferred the domain name to them. The Respondentís actions of redirecting the impugned website and the emails to the Complainantís website, petronas.com.my, show that he does not intend to use the website in connection with a bonafide offering of goods/services. Rather the sole aim of the registration is to misappropriate the reputation associated with the Complainantís famous trademark PETRONAS.
f) The Respondent misled the Complainant and the WIPO Center as to the transfer of the said disputed domain name for about three months (December 21, 2000 to March 15, 2001). During this period, the Respondent, despite several reminders, never initiated any steps to transfer the domain name. Rather it appears that his sole intention was to delay the UDRP process that had been initiated by the Complainant. This again reflects bad faith on the part of the Respondent.
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: May 16, 2001