WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Petroliam Nasional Berhah v. Pertronasgas.com Inc.
Case No. D2002-0709
1. The Parties
1.1. The Complainant in this administrative proceeding is Petroliam Nasional Berhad (PETRONAS), Tower 1, Petronas Twin Towers, Kuala Lumpur City Centre, 50088, Kuala Lumpur, Malaysia.
1.2. The Respondent is Petronasgas.com Inc, 919E, Hillsdale Blvd, Suite 400, Foster City, CA94404, United States of America.
2. The Domain Name and Registrar
The Domain Name in dispute is <petronasgas.com> registered with ENOM, Inc.
3. Procedural History
3.1. Complaint was submitted to the WIPO Arbitration and Mediation Center (the "Center") on July 26, 2002.
3.2. An acknowledgement of the receipt of the complaint was sent to the Complainant on July 29, 2002.
3.3. A request for Registrar Verification was sent to the Registrar ENOM, Inc on July 29, 2002, requesting it to inter alia confirm that a copy of the complaint had been received by them; confirm that the domain name in issue is registered with them; etc. The Registrarís confirmation letter was received by the center on July 30, 2002.
3.4. On July 30, 2002, a Complaint Deficiency Notification was sent to the complainant notifying the formal deficiency with the complaint that the Registrar is ENOM and not Network Solutions. Hence, section VIII mutual jurisdiction of the complaint and the text "Network Solutions, Inc. is located in, namely, Virginia, United States" should be corrected.
3.6. On August 5, 2002, the Complainant sent four hard copies of the Amended complaint to the Center.
3.7. On August 6, 2002, the Center was satisfied with the formal requirements of the Policy, the Rules for the Uniform Domain Name Dispute Resolution Policy (the " Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution (the "Supplemental Rules"). The Panel independently agrees with the assessment of the Center in this regard. The Complainant also paid on time and in the required amount the fees for a sole panelist.
3.8. No formal deficiencies having being recorded, on August 6, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, Registrar and ICANN), setting a deadline of August 26, 2002, 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 Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent.
3.10. On August 28, 2002, not having received any response, the Center sent the parties a formal notification of Respondent default.
3.11. In view of the Complainants designation of a single member panel, on September 4, 2002, the Center has appointed the undersigned to serve as the sole Panelist. The Panel was required to forward its decision to the Center by September 18, 2002.
4. Factual Background
4.1. The Complainant, Petroliam Nasional Berhad, hereinafter referred, as PETRONAS is Malaysiaís national petroleum corporation and was incorporated on August 17, 1974. It is wholly owned by the Malaysian government and is vested, by virtue of the Petroleum Development Act 1974 ("the Act"), with the entire oil and gas resources in Malaysia and entrusted with the responsibility of developing and adding value to these resources. Article 2 of the Act vests the entire ownership in, and the exclusive rights, powers, liberties and privileges of exploring, exploiting, winning and obtaining petroleum whether onshore or offshore of Malaysia in PETRONAS. This made PETRONAS the sole concessionaire with the right and responsibility to develop and add value to Malaysia's petroleum resources.
4.2. PETRONAS is a fully integrated oil and gas entity engaged in a broad spectrum of petroleum and related value adding business activities ranging from upstream exploration and production of oil and gas to downstream oil refining; marketing and distribution of petroleum products; the operation and management of petrol service stations and the sale of lubricants; trading of oil and gas products; gas processing and liquefaction; gas transmission pipeline network operation; marketing of liquefied natural gas and liquefied petroleum gas; petrochemical manufacturing and marketing; and shipping. PETRONASí corporate headquarters are in the worldís tallest buildings namely the PETRONAS Twin Towers, located in the City Centre of Kuala Lumpur, Malaysia.
4.3. The PETRONAS group operates in at least 25 countries around the world, mainly in Latin America, Europe, Africa, Middle East, CIS, North and South Asia, South East Asia and Australia. PETRONASí gas activities are focused on enhancing and sustaining Malaysiaís reserves by promoting exploration and production (E&P activities) within the country and securing new acreages overseas. PETRONAS is directly involved in the exploration, development and production of gas in Malaysia, alongside multinational production sharing contractors. In line with Malaysiaís energy diversification strategy, PETRONAS is promoting the utilization of natural gas with the implementation of its three-phase Peninsular Gas Utilisation (PGU) project which started in 1984. The trans-peninsular gas transmission pipeline system spans over 2,271 km in length from the Complainantís gas processing plant complex in the East Coast of Peninsular Malaysia to the West Coast, stretching from the Malaysia-Thailand border in the north to Singapore in the south, supplying processed gas to meet the needs of the power, industrial and residential sectors in Malaysia as well as the power plants in Singapore. The system also comprises six Gas Processing Plants (GPP) with a combined capacity of 2,000 million standard cubic feet of gas per day. Plans are under way to link the PGU pipeline to the Trans Thailand-Malaysia Gas Pipeline system to transport gas from the Malaysia-Thailand Joint Development Area. This linkage will further enhance the security of supply to Malaysia and at the same time connect Thailand to the ASEAN Gas Grid. To promote the use of gas in the transportation sector PETRONAS embarked on the Natural Gas for Vehicles (NGV) programme in Malaysia where NGV dispensing facilities are available at selected PETRONAS service stations located at high traffic density areas.
4.4. The Complainant has also introduced the gas district cooling (GDC) system using natural gas as an energy source to produce chilled water for air conditioning together with co-generation in an integrated energy system. The GDC system is used at the Kuala Lumpur City Centre, where the PETRONAS Twin Towers is located, the Kuala Lumpur International Airport and the new government complex in Putrajaya, Malaysia. The Complainant through its marketing arm, PETRONAS Dagangan Berhad, operates liquefied petroleum gas (LPG) bottling plants in Malaysia which plants are primarily involved in bottling LPG into metal cylinders for both household and industrial consumption. These LPG-filled metal cylinders are marketed under the Complainantís trademark "PETRONAS" and bear the words "GAS PETRONAS" on each cylinder. These ubiquitous cylinders bearing the "GAS PETRONAS" name have permeated through all levels of society, and are commonly seen providing a source of cooking gas to households, restaurants, shops and stalls all over Malaysia. Overseas, the Complainant is also involved in LPG terminalling, bottling and distribution in China, Vietnam, Cambodia and the Philippines.
4.5. As at March 31, 2001, the PETRONAS Group comprised 62 wholly owned subsidiaries, 19 partly owned subsidiaries and 47 associated companies. The Complainant has been ranked among the worldís 500 largest corporations in the Fortune Global 500 listing. The Complainant has also been voted Best Malaysian Brand at the Superbrands Awards 2002 in Malaysia. The Petronas Group results for the financial year ended March 31, 2001, reflects a strong financial position. Turnover increased by 21% to a record of RM73.4 billion (USD19.13 billion), while profit before tax increased by 34.3% to RM29 billion (USD7.6 billion). The PETRONAS Groupís balance sheet position remained strong with total assets at RM139 billion (USD36.6 billion).
4.6. Apart from its core oil and gas activities, the Complainant is involved in the fields of inter alia education, arts and sports. The Complainant actively sponsors various major sporting events to promote the PETRONAS brand and corporate image. Under the PETRONAS Motorsports sponsorship programme, the Complainant is the main sponsor of the Sauber PETRONAS Formula One Grand Prix racing team, the Sprinta TVK motorcycle racing team, the PETRONAS EON racing team, the PETRONAS Primas PX2 touring car team and the Team PETRONAS SYNTIUM PROTON. For the Complainant, its involvement in Formula One was a key strategy to secure two objectives: firstly, to generate international awareness of the PETRONAS name and its activities; and secondly, to increase its technical capabilities in fields related to its core businesses.
4.7. In carrying out its trade, business and activities, the Complainant uses inter alia the trademark and/or servicemark PETRONAS. The mark PETRONAS appears on or in all its advertisements, promotional materials, buildings, sponsored premises, websites, sponsored events, properties, offices, petrol stations, packaging for its petroleum based products, signages, billboards, pamphlets and stationery among others. The Complainant advertises on billboards /lightboxes /unipoles in Vietnam and South Africa. The Complainant advertises in magazines and newspapers in Iran, Turkmenistan, Australia, Hong Kong, the United States (in Forbes Magazine), the United Kingdom, the United Arab Emirates, Saudi Arabia, Vietnam, South Africa, Singapore, Indonesia, Thailand, North and South African countries. The Complainantís mark is used in these advertisements in a manner so as to maximize exposure of the same to the public at large. A considerable amount of money has been expended to promote and to create the appropriate awareness in the PETRONAS mark both locally and internationally. For example, between the period of April 1992 to March 2002, the Complainant and its group of Companies spent approximately USD60 million on advertising and promotion expenditure.
4.8. In protecting and preserving its rights the Complainant has effected registrations of the same on a global basis and particularly in regions where the Complainant carries out its trade and business. Currently, the Complainant has registrations and applications pending in 40 countries. In addition, the Complainant has a pending US trade mark application for PETRONAS, which was filed on December 28, 2001.
4.9. The Complainantís website is located at "www.petronas.com". The website contains graphic and textual information on the Complainantís activities. Most of the facts and information stated herein can be found at the Complainantís website. The website can be accessed worldwide and was accessible as such beginning from March 1, 1996.
4.10. In various months of the year 2001, the Complainant carried out a series of domain name searches on the internet and discovered that an individual had registered the domain names <petronas-dagangan.com>, <mypetronasdagangan.com>, <petronasgas.com> and <mypetronas.com>. The address stated for the registrations was that of a Consulting Service in Malaysia. It seemed for the Complainant that the domain names had been registered with a view to offer them for sale to the Complainant or other interested entities, having chosen a to inlcude the words "DOMAIN FOR SALES" in the registration detailsof the said domain names. The Complainant on November 16, 2001 sent a cease and desist letter requesting the transfer of the domain names to the Complainant. The said individual responded to PETRONASís cease and desist letter in various ways, including the following:
(i) e-mails to the e-mail address of an officer of the Legal & Corporate Affairs Division of the Complainant on November 18, 2001, telling the Complainant to "go ahead with the legal proceeding. I have sold it to other parties".
(ii) e-mails entitled "Domain Ownership" and "Unlawful Claim from Petronas" addressed to the Internet Corporation for Assigned Names and Numbers ("ICANN") and copied to the e-mail address of an officer of the Legal & Corporate Affairs Division of the Complainant dated November 18, 2001.
(iii) publication of certain statements on the website www.petronasgas.com at URL http://18.104.22.168/petronasgas/ on November 19, 2001, stating inter alia "Petronas Sdn Bhd Ė a multimillion company is a bully".
(iv) postings of certain comments to the usenet newsgroup soc.culture.malaysia on November 20, 2001, the contents of which were copied to the e-mail address of an officer of the Legal & Corporate Affairs Division of the Complainant.
(v) an e-mail dated November 27, 2001, to the e-mail address of an officer of the Legal & Corporate Affairs Division of the Complainant, stating inter alia that the domain name <petronasgas.com> was not for sale.
4.11. The domain name <petronasgas.com> at the date of the latest search on July 25, 2002, is shown to have been registered to a US company called Petronasgas.com Inc, the Respondent, on November 6, 2001. The Complainant had never heard of the Respondent, Petronasgas.com Inc, before May 4, 2002. The Complainant therefore instructed an investigation into Petronasgas.com Inc to try and establish further information about the Respondent A search of the US telephone databases showed no telephone listing for Petronasgas.com Inc. Searches of specialist US records could not locate any further information about Petronasgas.com Inc nor its listed address. The inference therefore is that there is no such US registered company called Petronasgas.com Inc.
4.12. The complainant had not licensed or otherwise permitted the respondent to use the impugned domain name in any manner whatsoever.
5. Parities Contentions:
A. The Complainant has raised the following contentions:
Identical or Confusing Similarity
5.1. The domain name <petronasgas.com>, registered in the name of the Respondent, uses the word or name "PETRONAS" and is identical or confusingly similar to the Complainantís Trademarks and/or Service marks in which the Complainant has rights. Further, the domain name incorporates the word "gas", a word which is closely associated with the Complainantís name and Trademarks and/or Service marks given its core business areas.
Rights/ Legitimate interest
5.2. The Respondent has no rights or legitimate interests in respect of the domain name that is the subject of this complaint. The Respondent has not used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
5.3. The domain name <petronasgas.com> incorporates a well-known mark, belonging to the Complainant. Its very use by someone with no connection with the product suggests opportunistic bad faith. The complainant relies upon World Wrestling Federation Entertainment Inc v Michael Bossman (WIPO Case No. D1999-0001) and the case of Telstra Corporation Limited v Nuclear Marshmallows (WIPO Case No. D2000Ė0003).
5.4. The acts and conduct of the Respondent are calculated to deceive or mislead the trade and public into believing that the impugned domain name is that of the Complainant or is otherwise associate or connected with the Complainant.
5.5. The acts of the Respondent have deprived the Complainant of the right and the opportunity of having a domain name comprising its own trademark.
5.6. The Respondentís action by not trading and by not developing a legitimate website in connection with the domain name, appears as though the Respondent has only registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the domain name registrantís out-of-pocket costs directly related to the domain name.
B. The Respondent has not filed any response in these proceedings.
6. Discussions and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove the following:
- 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
- that the Respondent has no legitimate interests in respect of the domain name; and
- that the domain name has been registered and is being used in bad faith.
Each of these requirements will be dealt with separately.
A. Complainantís trademark rights; identical/confusing similarity
6.1. The Complainant has domain name registrations for the mark PETRONAS.COM and the mark PETRONAS is an abbreviation for "Petroliam Nasional Berhad". In addition to this, the Complainant has also furnished extensive evidence highlighting the use of this name and the reputation associated with the name PETRONAS . The Complainant has annexed copies of news reports in which the Complainant has been referred to as PETRONAS and has also submitted sufficient evidence to prove its reputation in the gas and petroleum industry. Use of the mark PETRONASGAS.COM, as a domain name by the Respondent will cause confusion as the Complainant has a registered domain name <petronas.com> and the impugned domain name will only lead to confusion as it is deceptively similar to the Complainants domain name.
B. Rights/Legitimate Interests
6.2. Paragraph 4(c) of the Policy enumerates circumstances which, if found by the panel to be proved will demonstrate the Respondentís rights or legitimate interests to the domain name.
6.3. The Respondent has not filed a response and the contentions of the complaint have not been met. In the absence of a response, the panel is inclined to believe that the Respondent has no rights or legitimate interest in the domain name. In fact the evidence indicates an overwhelming reputation in the domain name <petronasgas.com> and the panel is doubtful of the existence of a legitimate interest in this name in favour of a third party.
C. Bad Faith
6.4. Paragraph 4(b) of the Policy enumerates certain illustrative circumstances which, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
6.5. As stated in several earlier panel decisions, this paragraph is merely illustrative and the panel may rely on other factors in arriving at a determination that the domain name has been registered and is being used in bad faith. The panel finds that the following circumstances amply reveal that the domain name has been registered and is being used in bad faith:
(i) The passive holding of the domain name by the Respondent constitutes use of the domain name in bad faith because (i) the Complainantís name is an invented and coined mark that has a strong world wide reputation, (ii) there is no evidence of any actual or contemplated good faith use by the Respondent of the domain name and (iii) it is impossible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate.
(ii) The Respondent has only registered the domain name primarily for the purpose of disrupting the business of the Complainant. This is because browsers will assume that any website located at www.petronasgas.com is an authorised PETRONAS website, in particular given that the Complainant owns the domain name <petronas.com> and other domain names such as <petronas.net>, <petronas.org> and <petronas.co.uk>.
(iii) The Respondentís website will intentionally attract for commercial gain and/or divert traffic to the Respondentís website at <petronasgas.com> from the Complainantís website by creating a likelihood of confusion with the Complainantís marks as to the source, sponsorship, affiliation or endorsement of the Respondentís website and/or products and services on the Respondentís website. Given that the Complainant is involved in gas related activities, it is more than likely that a customer would search on the domain name <petronasgas.com> in a mistaken belief that that website was connected with the Complainant in some way.
(iv) The Respondent has registered and is using the domain name in bad faith as the domain name is registered under a trading name that does not appear to be a legal or existing entity in the United States.
For all of the foregoing reasons, the Panel decides that the domain name registered by the Respondent is identical and confusingly similar to the trademark 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 impugned domain name be transferred to the Complainant.
Dated: September 18, 2002