WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Petroleo Brasileiro S.A - Petrobras v. PrivacyProtect.org
Case No. D2011-1265
1. The Parties
Complainant is Petroleo Brasileiro S.A – Petrobras of Rio de Janeiro, Brazil represented by Siqueria Castro Advogados, Brazil.
Respondent is PrivacyProtect.org of Nobby Beach, Australia.
2. The Domain Name and Registrar
The disputed domain name <cartaopetrobras.com> is registered with Bargin Register Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2011. On July 25, 2011, the Center transmitted by e-mail to Bargin Register Inc. a request for registrar verification in connection with the disputed domain name. Bargin Register Inc. failed to reply to the Center’s request for registrar verification.
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 Respondent of the Complaint, and the proceedings commenced on August 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 29, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 7, 2011.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on September 7, 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
Complainant has registered the word trademark PETROBRAS on the register of the National Institute of Industrial Property/Instituto Nacional da Propriedade Industrial (INPI) in Brazil, Registration Number 002709007, dated July 12, 1962, in International Class (IC) 1, covering chemicals and chemical products used for agriculture, fertilizers1; Registration Number 004101260, dated December 3, 1971, in IC 1, covering, inter alia, acetylene and acids; Registration Number 004101570, dated December 10, 1981, in IC 4, covering, inter alia, fuel oil; Registration Number 006005098, dated July 25, 1994, in IC 37, covering, inter alia, hydrocarbon exploration, mining, refining and processing;2 registration number 006005101, dated July 25, 1994, in IC 39, covering, inter alia, extraction and refining of hydrocarbon products from shale. Complainant has more recently registered the word trademark PETROBRAS in a number of jurisdictions outside Brazil, including China, Chile, the United States of America and the European Union, and it has provided evidence of such registrations. Because the registrations in Brazil suffice to support ownership of a trademark for purposes of this proceeding, the Panel forgoes providing details of the additional registrations outside Brazil.
Complainant is an integrated energy company with extensive operations in exploration, extraction, refining and distribution in Brazil and other countries. Complainant is ranked among the largest and most valuable business enterprises in the world. It was ranked as the fourth largest energy company by Platts Top 250 Global Energy Company Rankings in 2010. Other recent rankings indicate that Complainant is among the five most valuable enterprises in the world by market value (UOL, September 24, 2010, citing Thompson Reuters and FT Global 500). Complainant engages in extensive use of the PETROBRAS trademark, inter alia, to market petroleum-based products in Brazil and other countries.
Complainant has registered a number of domain names incorporating the PETROBRAS trademark, including <petrobras.com> (registered in 1996) and <petrobras.com.br> (registered in 1996), and it operates a commercial Internet website in Portuguese, English and Spanish at “www.petrobras.com”.
The registrar of the disputed domain name identified by the Center through an Internic WhoIs search is Bargin Register Inc. The Center on repeated occasions requested Bargin Register Inc. to verify registration data with respect to Respondent, but did not receive a response. The Internic WhoIs report indicates that Respondent is PrivacyProtect.org, providing an e-mail and post office box contact address in Australia, including this statement: “Note - All Postal Mails Rejected”. In light of the failure of Bargin Register Inc. to verify data regarding Respondent, the Internic WhoIs report generated by the Center is the best available evidence of the identity of the registrant of the disputed domain name. The Panel proceeds on the basis that Respondent is the registrant of the disputed domain name. According to the Internic WhoIs report, the record of registration of the disputed domain name was created on April 27, 2008.
Respondent has made use of the disputed domain name to direct Internet users to a link farm parking page with the heading “Cartopetrobras.com”. That parking page displays links to various credit card companies, including Visa and MasterCard, and includes links referring to Complainant. There also are subject matter headings and links for certain “popular categories”, including “wedding”, “flowers”, “beauty” and “showers” (with related subheadings and links). The printout of the link farm parking page generated by Complainant in Brazil shows results mainly in Portuguese. A similar printout generated by the Center in Switzerland shows results almost exclusively in English. As of the date of this decision, Respondent has deactivated the connection between the disputed domain name and the link farm parking page described above.
By e-mail dated November 5, 2010 (to the contact address indicated on Respondent’s WhoIs registration data), Complainant transmitted a cease-and-desist-and-transfer demand to Respondent. Complainant did not receive any reply.
The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)). Domain name registrars are required by ICANN rules to condition registration on acceptance by registrants of an agreement incorporating the Policy for settlement of disputes.3 Complainant was not able to locate the form of registration agreement used by Bargin Register Inc.4 Based on ICANN requirements, the Panel assumes there is a registration agreement in effect between Respondent and Bargin Register Inc. that subjects Respondent to dispute settlement under the Policy.
5. Parties’ Contentions
Complainant asserts rights in the trademark PETROBRAS as evidenced by registration in Brazil and other countries, and extensive use in commerce. Complainant contends that its PETROBRAS mark is well-known.
Complainant alleges that the disputed domain name is identical and confusingly similar to its trademark as it incorporates that distinctive trademark.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent does not run any business under the trademark term, or own any trademark application or registration for that term; (2) Complainant has not authorized Respondent to use its trademark, including in the disputed domain name; (3) Respondent has not made a bona fide use of the disputed domain name because the website it has associated with that name is intended to confuse Internet users; (4) Respondent has not been commonly known by the disputed domain name, and; (5) Respondent has not made legitimate noncommercial or fair use of the disputed domain name because it has used the name to operate a deceptive link farm website.
Complainant alleges that Respondent registered and has used the disputed domain name in bad faith because: (1) Complainant sent a warning letter to Respondent to which it did not reply; (2) Respondent appears to have used false or incomplete contact details in its registration, which is evidence of bad faith; (3) by operating the link farm website Respondent is attempting to divert Internet users for commercial gain, taking advantage of Complainant’s trademark and goodwill, and; (5) Respondent must have had knowledge of Complainant and its trademark when it registered the disputed domain name. Complainant concludes that Respondent registered and has used the disputed domain name for commercial gain to attract Internet users to its website by creating confusion as to Complainant as the source, sponsor, affiliate or endorser of Respondent’s website.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center transmitted notification of the Complaint and commencement of the administrative proceeding to Respondent at the e-mail and physical addresses provided in its record of registration. Respondent did not reply to e-mail notification. The express courier delivery service engaged by the Center could not identify a physical address associated with the information in the record of registration. It appears to the Panel that Respondent deliberately took steps to avoid contact by third parties. The Center took those steps prescribed by the Policy and Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided substantial evidence of ownership of rights in the trademark PETROBRAS based on registration in Brazil and other countries, and based on extensive use in commerce in Brazil and other countries (see Factual Background, supra). Complainant has provided sufficient evidence to establish that its PETROBRAS trademark is well-known in Brazil and other countries. The Panel determines that Complainant owns rights in the trademark PETROBRAS, and that the PETROBRAS trademark is well-known.
The disputed domain name directly incorporates Complainant’s PETROBRAS trademark, preceded by the term “cartao”. The term “cartao” in Portuguese has the meaning “card” in English.5 For the Brazilian or other Portuguese-speaking Internet user, the disputed domain name combines a term equivalent to “card” with the well-known trademark of an energy company (i.e., Complainant). Such an Internet user might reasonably expect the energy company to offer credit card or purchasing card services, and might reasonably expect the disputed domain name in this proceeding to be associated with Complainant. The Panel determines that the disputed domain name is confusingly similar to Complainant’s trademark.6
The Panel determines that Complainant has rights in a trademark and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c)).
Complainant has argued that Respondent lacks rights or legitimate interests in the disputed domain name because Respondent does not run any business under Complainant’s trademark term, or own any trademark application or registration for that term; Complainant has not authorized Respondent to use its trademark, including in the disputed domain name; Respondent has not made a bona fide use of the disputed domain name because the website it has associated with that name is intended to confuse Internet users; Respondent has not been commonly known by the disputed domain name, and; Respondent has not made legitimate noncommercial or fair use of the disputed domain name because it has used the name to operate a deceptive link farm website. Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent’s sole use of the disputed domain name has been in connection with a link farm parking page that advertises goods and services of third parties. Operating a link farm parking page using Complainant’s distinctive well-known trademark in a domain name, and providing connection to goods and/or services of third parties does not establish rights or legitimate interests.7 See, e.g., Editorial Armonia, S.A, de C.V. v. Cagri Sadik Bayram, WIPO Case No. D2010-1963; Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404; VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager, WIPO Case No. D2010-0925; Overstock.com, Inc. v. Metro Media, WIPO Case No. DME2009-0001; Fifth Third Bancorp v. Texas International Property Associates, WIPO Case No. D2007-0537; MasterCard International Incorporated v. Paul Barbell, WIPO Case No. D2007-1139; Shaw Industries Group, Inc., and Columbia Insurance Company v. Parth Shah, WIPO Case No. D2007-1368; and Alfa Laval AB and Alfa Laval Corporate AB v. Alfalava.com, WIPO Case No. D2007-1881.
Respondent has provided no justification for its registration and use of the disputed domain name that might establish rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include that: “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or of a product or service on [respondent’s] web site or location”.
Respondent registered and has used Complainant’s well-known and distinctive PETROBRAS trademark in the disputed domain name to direct Internet users to a link farm parking page that presumably generates pay-per-click click revenues. Internet users expecting the disputed domain name to direct them to a website operated or sponsored by Complainant are instead directed to a website advertising and offering goods and/or services of third parties. Respondent has intentionally used Complainant’s trademark in the disputed domain name for commercial gain to create Internet user confusion regarding Complainant as source, sponsor, affiliate or endorser of Respondent’s website.
The Panel determines that Respondent registered and has used the disputed domain name in bad faith within the meaning of the Policy.
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, <cartaopetrobras.com>, be transferred to Complainant.
Frederick M. Abbott
Dated: September 22, 2011
1 Complainant’s initial trademark registration in 1962 showed the mark as PETROBRÁS. Subsequent registrations and general usage do not include the accent mark. (Translations of product classifications from Portuguese by the Panel.)
2 Complainant indicates in its table of trademarks that the two latest dated marks identified in the text were registered on July 25, 1974. The documents reviewed by the Panel appear to indicate that the registrations were issued on July 25, 1994. It is possible that the 1994 registrations are based on earlier registrations. A discrepancy between these dates is not material to this proceeding, and the Panel has not found it necessary to seek clarification from Complainant.
3 See, e.g., “.Com Registry-Registrar Agreement (1 July 2010)”, para. 2.6, at http://www.verisigninc.com/en_US/products-and-services/domain-name-services/become-registrar/com-net-registrar/index.xhtml.
4 The Panel attempted to identify a registration form on the Bargin Register Inc. website. Without attempting to proceed through the registration process, the Panel was unable to do so.
5 Confirmed by Google Translate (Panel translation executed September 22, 2011).
6 Under these circumstances, addition of the generic top-level domain (gTLD) “.com” is not relevant to assessment of confusing similarity.
7 Complainant did not expressly indicate whether it issues a credit card or gasoline purchase card under its trademark in Brazil or elsewhere, and the Panel does not make an assumption concerning that.