WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Petroleo Brasileiro S.A. - Petrobras v. PPA Media Services, Ryan G Foo / Private Whois desafiopetrobras.com
Case No. D2012-0655
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 PPA Media Services, Ryan G Foo / Private Whois desafiopetrobras.com of Santiago, Chile and Nassau, the Bahamas, respectively.
2. The Domain Name and Registrar
The disputed domain name <desafiopetrobras.com> is registered with Internet.bs Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2012. On March 29, 2012, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name. On March 30, 2012, Internet.bs Corp. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 30, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 30, 2012.
The Center verified that the Complaint together with the amended 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 April 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 24, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2012.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on May 1, 2012. 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 in this administrative proceeding is Petroleo Brasileiro S.A. – Petrobras of Rio de Janeiro, Brazil, a Brazilian energy company with presence in 28 countries around the world and rated as the world’s 7th biggest oil company with shares traded at stock exchanges. The Complainant has proved to own several Brazilian, United States of America, Chilean and Community trademark registrations for the mark PETROBRAS and several domain names corresponding and or containing the PETROBRAS trademark, among them the domain names <desafiopetrobras.com.br> and <desafiobrmania.com.br>.
The Complainant’s trademark registrations for the trademark PETROBRAS, registered since June 1956, predate the disputed domain name registration. The domain names <desafiopetrobras.com.br> and <desafiobrmania.com.br> also predate the disputed domain name registration.
Desafio Petrobras (in English: “Petrobras challenge”) is an initiative of the Complainant to encourage employees of Petrobras gas stations and BR Mania stores to do a better job. This initiative too predates the registration of the disputed domain name, namely December 22, 2010.
5. Parties’ Contentions
The Complainant claims that:
1) The disputed domain name is confusingly similar to the PETROBRAS trademark.
2) The PETROBRAS trademarks are extensively used and enjoy widespread recognition.
3) The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, expressed or implied, to use the PETROBRAS trademark in a domain name or in any other manner.
4) The Respondent has never been known by the disputed domain name and has no legitimate interest in the PETROBRAS trademark or in the name “Petrobras”.
5) The previous indicated holder of the disputed domain name, i.e. “Standard Bearer Enterprises Limited”, after receiving a warning letter from the Complainant and upon renewing the disputed domain name on December 23, 2011, either transferred the disputed domain name to a third party or used the Private Whois service, in order to maintain its identity protected.
6) On the website to which the disputed domain name <desafiopetrobras.com> resolves, on February 9, 2012, Internet users could see sponsored links in Portuguese for “concurso Petrobras”, “vagas Petrobras”, “emprego certo em 2012” and others. Thus the Complainant affirms that the disputed domain name is being used in bad faith for commercial gain and to benefit from the goodwill and fame associated with the Complainant’s PETROBRAS trademark. Such use is contrary to a bona fide offering of goods or services or a legitimate interest.
7) The disputed domain name was registered in bad faith because it is inconceivable that the Respondent was unaware of the Complainant’s rights in the PETROBRAS trademark at the time of registration. To this end the Complainant underlines that the PETROBRAS trademark is registered and used also in Chile where the Respondent PPA Media Services, Ryan G Foo is located.
8) The disputed domain name <desafiopetrobras.com> is identical to other domain names owned by the Complainant namely: <desafiopetrobras.cl>; <desafiopetrobras.co>; <desafiopetrobras.com.ar>; <desafiopetrobras.com.br> and <desafiopetrobras.com.co>.
9) The disputed domain name is offered for sale.
The Complainant requests that the Panel issue a decision that the disputed domain name <desafiopetrobras.com> be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the PETROBRAS trademark and has stated that the disputed domain name is confusingly similar to it.
In order to substantiate this claim, the Complainant has argued that, “The disputed domain bears exactly the same word “PETROBRAS” registered by the Complainant as a trademark”.
This Panel notes that “Desafio Petrobras” is an initiative of the Complainant, basically aimed to reward the best Petrobras resellers. Therefore, it appears clear to the Panel that the addition of the generic term “desafio” to Complainant’s trademark PETROBRAS does not lessen confusion but on the contrary increases it.
It is therefore the Panel’s opinion that the addition of the generic term “desafio” (i.e. challenge in Portuguese) to Complainant’s trademark is not sufficient to avoid confusing similarity.
Supporting this, for example, is Lacoste Alligator S.A. v. Priscilla, Ranesha, Angel, Jane, Victor, Olivier, Carl, Darren, Angela, Jonathan, Michell, Oiu, Matthew, Pamela, Selima, Angela, John, Sally, Susanna, WIPO Case No. D2010-0988, where the panel wrote that:
“It is long established by past panel decisions that a domain name incorporating a trademark in its entirety with the addition of generic and non-distinctive prefixes and/or suffixes is confusingly similar to the trademark (e.g., Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing, WIPO Case No. D2010-0746; Chanel Inc. v. Dong Jiancai, WIPO Case No. D2010-0144).”
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. A respondent in a UDRP proceeding does not assume the burden of proof, but may establish rights or legitimate interests in a domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
i) that before any notice to the respondent of the dispute, the respondent used or made 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) that the respondent is commonly known by the domain name, even if the respondent has not acquired any trademark rights; or
iii) that the respondent intends to make a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
This Panel finds that here, the Respondent has no connection or affiliation with the Complainant, which has not licensed or otherwise authorised the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to be commonly known by the name “Petrobras” or by a similar name, and has not alleged any facts to justify any rights or legitimate interests in the disputed domain name. The Respondent does not appear to make any legitimate use of the disputed domain name for noncommercial activities. Finally, the Respondent has not replied to the Complaint, proving or at least alleging in any other way any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraphs 4(a)(iii) and 4(b) of the Policy, the following circumstances, 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:
i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Considering the Complainant’s trademark registrations, its domain names, the extensive use and promotion on the Internet on the one hand, and on the other, the Respondent’s use of the disputed domain name to offer links to a variety of other websites, including sites of Complainant’s competitors, the fact that the disputed domain name was for sale, the fact that Respondent chose for the disputed domain name a combination of Complainant’s trademark PETROBAS and a generic term, “desafio”, which is also used by the Complainant for one of its initiatives and is also identical to some domain names owned by the Complainant, shows that the Respondent must have known of the Complainant’s products, activities and trademarks and intentionally intended to create an association with the Complainant and its business. Therefore, in the absence of contrary evidence, the Panel finds:
1) that the Respondent, for the content displayed on its website, must have had actual knowledge of the Complainant’s trademark at the time of the registration of the disputed domain name;
2) that, due to the trademarks and domain name registrations held by the Complainant, the Respondent’s choice to register the disputed domain name cannot be casual but had to be intentional;
3) that the above described use of the disputed domain name i.e., to divert Internet users to the Respondent’s website where Internet users could have seen sponsored links in Portuguese for “concurso Petrobras”, “vagas Petrobras”, “emprego certo em 2012” and others, also supports an inference of bad faith use;
4) that the combination of the Complainant’s trademark PETROBAS and the generic term “desafio”, which is the exact combination used by the Complainant for years for one of its initiatives, cannot be casual;
5) that in the absence of any rebuttal by the Respondent of the Complainant’s claims, or any other indication in the case file, the Panel accepts as true the Complainant’s claims.
Accordingly, the Panel finds on the basis of the evidence presented that the Complainant has satisfied paragraph 4(a)(iii) 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 <desafiopetrobras.com> be transferred to the Complainant.
Dated: May 8, 2012