WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Petroleo Brasileiro S.A - Petrobras v. Job Seeker Pty Ltd
Case No. D2011-1248
1. The Parties
The Complainant is Petroleo Brasileiro S.A - Petrobras of Rio de Janeiro, Brazil, represented by Siqueira Castro Advogados, Brazil.
The Respondent is Job Seeker Pty Ltd of Sydney, Australia.
2. The Domain Names and Registrar
The disputed domain names <petrobrasjobs.com> and <petrobrasjobs.info> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2011. On July 22, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On July 24, 2011, GoDaddy.com, Inc. 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 July 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2011.
The Center appointed Angela Fox as the sole panelist in this matter on August 23, 2011. 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 petroleum and energy company with a presence in 27 countries.
It has a substantial business. In 2007, an industry publication ranked it the world’s 7th largest publicly traded oil company, and in 2010 Forbes magazine ranked it 18th in the Forbes Global 2000, a list of global corporations ranked by sales, profits, assets and market value.
The Complainant carries out its activities under the trademark PETROBRAS, which it has registered, or applied to register, in jurisdictions around the world. Annexed to the Complaint were copies of registration certificates and current details of registrations for PETROBRAS and marks including PETROBRAS in Brazil (including registration nos. 2709007, 4101260, 4101570, 6005098 and 6005101 dating from as early as 1962) and the United States (including registration nos. 3676471 and 3722769, both registered in 2009), as well as pending applications in other countries, including China, Chile and the European Union.
The Complainant uses domain names comprising or incorporating PETROBRAS in respect of its online commercial activities. Annexed to the Complaint were details of the following domain names registered and used by the Complainant: <petrobras.com> (registered in 1996); <petrobras.com.br> (registered in 1996); <petrobrascombustiveis.com.br> (registered in 2008); <petrobrasbioenergia.com.br> (registered in 2008); <petrobrasdistribuidora.net.br> (registered in 2009); and <petrobrasmazine.com.br> (registered in 2007).
The disputed domain names <petrobrasjobs.com> and <petrobrasjobs.info> were registered on May 14, 2010. They have been in use for parking websites containing links to sponsored third-party advertisements relating inter alia to petroleum and gas. Screenshots of the linked websites were included in the Complaint.
On November 11, 2010, the Complainant sent a cease and desist demand to the Respondent by email, seeking transfer of the disputed domain names. On the same day, the Respondent replied by email, stating,
First of all, I have no intention to violate ‘PETROBRAS’ trademark. I subscribed to an after-market domain name arbitrator and bought nearly 100 domain names related to jobs a few months ago. One of them was ‘petrobrasjobs.com’ and with it, I got ‘petrobrasjobs.info’ for free. I haven’t used any websites with those domain names and they are still being parked at Godaddy.com. I had no idea how big PETROBRAS is and I had never heard of it at the time. I simply purchased those domain names in batch.
As I said before, I had no intention to violate your trademark. I can transfer both petrobrasjobs.com and petrobrasjobs.info to you for a small fee. What I’m asking is about the average profit I make on buying and reselling domain names: $1000 per domain name or $2000 for both petrobrasjobs.com and petrobrasjobs.info.
No further correspondence was referred to in the Complaint, which was filed on July 21, 2011.
5. Parties’ Contentions
The Complainant claims that the disputed domain names are identical or confusingly similar to its registered PETROBRAS trademark, because the sole distinctive element is identical and the remaining element, “jobs”, is non-distinctive. The Complainant moreover contends that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has not authorized the Respondent to register or use the PETROBRAS mark, and asserts that the Respondent has not been known by a name corresponding to it. Nor in the Complainant’s submission has the Respondent been using the disputed domain names in connection with any bona fide offering of goods or services or any legitimate noncommercial or fair use.
Finally, the Complainant contends that the disputed domain names were registered, and have been used, in bad faith. The Complainant asserts that the Respondent’s admission of involvement in the buying and reselling of domain names, and its offer to sell the disputed domain names to the Complainant, indicates that the Respondent never intended any bona fide use. The Complainant submits that the Respondent registered the disputed domain names for the purpose of selling them to the Complainant at a price exceeding its out-of-pocket registration expenses. The Complainant further alleges that the sponsored links relating to gas and petroleum on the Respondent’s linked websites point to an intention to free-ride on the Complainant’s goodwill and trademark, in which the Complainant claims to have a substantial reputation. The Complainant submits that by using the disputed domain names the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s PETROBRAS mark as to the source, sponsorship, affiliation or endorsement of its website or of a product or service on that website.
The Complainant seeks the transfer of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent's default.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
The Complainant has proved that it owns registered trademark rights in PETROBRAS and marks incorporating PETROBRAS in Brazil and the United States. That word appears in its entirety in both disputed domain names. The remaining element in each of the disputed domain names is the generic word “jobs”.
The mere addition of a generic or descriptive term to a trademark does not avoid confusing similarity between the trademark and a disputed domain name, particularly where the descriptor is capable of being perceived as relevant to the complainant's business (see inter alia American Automobile Association, Inc. v Nevis Domains LLC, WIPO Case No. D2006-0489; The American Automobile Association, Inc. v AAA-Vacationsunlimeted, WIPO Case No. D2009-0373; Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001-0778; Amazon.com, Inc. v. PDC, WIPO Case No. D2003-0076; and National Association for Stock Car Auto Racing, Inc. v. David Crawford, Jr., WIPO Case No. D2001-1338).
In this case, the generic word “jobs” in the disputed domain names does not detract from the confusing similarity created by the inclusion of the Complainant's trademark PETROBRAS. On the contrary, it is likely to increase it by creating the impression that the disputed domain names link to a website maintained or endorsed by the Complainant, providing information on employment with the Complainant’s company.
The Panel finds that the disputed domain names are confusingly similar to the Complainant's registered PETROBRAS trademark.
B. Rights or Legitimate Interests
The Respondent has used the disputed domain names for what appear to be pay-per-click landing web pages hosting sponsored links to third-party commercial websites, some of which have related to gas and petroleum (although those links appear now to have been removed). The Respondent has not denied the Complainant’s allegation that it profits from click-through revenue arising from these links.
The only distinctive element of the disputed domain names is “petrobras”, which has no descriptive meaning, and which the Complainant has shown is widely known in the petroleum, gas and energy fields as denoting the Complainant’s business. The attractiveness of the disputed domain names as pay-per-click landing web page addresses is derived from the presence of the Complainant's distinctive trademark, and indeed the sponsored links on the landing web pages associated with the disputed domain names have sought to trade on this by including links to third-party websites in the energy field. Such activities do not, in the Panel’s view, amount to bona fide commercial use (see, inter alia, American Automobile Association, Inc. v Texas International Property Associates, WIPO Case No. D2007-0592; mVisible Technologies Inc v. Navigation Catalyst Systems, Inc, WIPO Case No. D2007-1141; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448; Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006; The Knot, Inv. v. In Knot we Trust LTD, WIPO Case No. D2006-0340); and Brink's Network, Inc. v. Asproductions, WIPO Case No. D2007-0353).
The burden of proving absence of a right or legitimate interest in a disputed domain name falls on complainants, but panels have long recognised that the information needed to prove such a right or interest is normally in the possession of respondents (see, inter alia, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). In this case, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, and the Respondent has not attempted to refute the Complainant's assertions.
There is nothing in the record to suggest that the Respondent has any rights or legitimate interests in the disputed domain names. The Panel finds that it has none.
C. Registered and Used in Bad Faith
The Respondent did not file a response to the Complaint, but in the annexed pre-action correspondence the Respondent claimed that it had not known about the Complainant’s PETROBRAS trademark at the time it acquired the disputed domain names, which it claimed were part of a bulk batch of nearly 100.
The Respondent does not state why it purchased this bulk batch but in the absence of any indication to the contrary it seems likely that the domain names were purchased for the purpose for which the disputed domain names were in fact used: namely, for targeted, and most likely automated, advertising in the form of pay-per-click landing web pages, and for onward re-sale where the opportunity arose.
The Complainant has shown in evidence that its PETROBRAS trademark was well-known internationally within the oil and energy fields at the time the disputed domain names were registered. The Respondent does not appear to be active in that field, and it is possible that the Respondent may indeed not have known about the Complainant at the time the disputed domain names were acquired. Even if that is true, however, the Respondent has an express obligation under paragraph 2 of the Policy to ensure that domain names that it acquires “do not infringe upon or otherwise violate the rights of any third party,” and under that same paragraph warrants and represents that domain name registrations it acquires do not in fact have that effect. The Respondent is not excused from the effect of that obligation and warranty merely by virtue of having registered the disputed domain names as part of a bulk batch. If that were the case, then the practice of bulk registration by commercial domainers and re-sellers would effectively strip paragraph 2 of the Policy of any real effect (see inter alia Balglow Finance S.A, Fortuna Comércio e Franquias Ltda. v. Name Administration Inc. (BVI), WIPO Case No. D2008-1216; Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448; and Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304).
A number of panels have addressed the practice of bulk registration and held that registrants cannot simply “turn a blind eye” to the possibility that domain names they have purchased may violate third-party trademark rights. Registrants must make reasonable efforts to ensure that the domain names they acquire do not infringe third-party rights in line with their obligation under paragraph 2 of the Policy (Balglow Finance S.A, Fortuna Comércio e Franquias Ltda. v. Name Administration Inc. (BVI), WIPO Case No. D2008-1216; and Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448)
In this case, there is no evidence that the Respondent made such efforts in relation to the disputed domain names, even though they clearly contained a distinctive, non-descriptive element that even a cursory Internet search would have revealed to be the Complainant’s trademark. Moreover, when confronted by the Complainant, the Respondent attempted to profit from the trademark value of the disputed domain names by offering to sell them to the Complainant for costs clearly exceeding its out of pocket registration costs (indeed, by its own admission, the Respondent did not pay at all for <petrobrasjobs.info>, which it received for free following its purchase of <petrobrasjobs.com>).
If the Respondent had known about the Complainant’s trademark when it acquired the disputed domain names, then in the Panel’s view there would be no doubt that the Respondent had acted in bad faith in acquiring and using them in respect of its pay-per-click landing websites. Even if the Respondent did not know of the Complainant’s rights, however, paragraph 2 of the Policy placed it under an obligation to take reasonable measures to ensure that domain names it acquired did not infringe third-party rights, which it manifestly failed to do in this case. At best, the Respondent’s conduct reflects recklessness as to whether domain names that it acquired and used to derive pay-per-click revenue were likely to mislead Internet users, and to the eventual consequences of such use. The Respondent’s subsequent attempt to profit from the confusing similarity by selling the disputed domain names to the Complainant for inflated sums demonstrates the extent of this recklessness, which in the Panel’s view rises to an intentional attempt to attract Internet users for commercial gain by creating what the Respondent should have realized from the outset, had it made reasonable enquiries at that time, was a likelihood of confusion with the PETROBRAS mark.
In the Panel’s view, the Respondent’s conduct allows the Panel to infer both bad faith registration and use under paragraph 4(b)(iv) of the Policy, because there is evidence that by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's site or of a product or service on it.
The Panel finds that the Respondent's conduct constitutes evidence of registration and use in bad faith.
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 names <petrobrasjobs.com> and <petrobrasjobs.info> be transferred to the Complainant.
Dated: September 6, 2011