WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Petróleo Brasileiro S.A. – Petrobras v. Excellent Vision

Case No. D2013-2062

1. The Parties

The Complainant is Petróleo Brasileiro S.A. – Petrobras of Rio de Janeiro, Brazil, represented by Siqueira Castro Advogados, Brazil.

The Respondent is Excellent Vision of Ontario, Canada.

2. The Domain Names and Registrar

The disputed domain names <petrobrascareerng.com>, <petrobrascarreer.com>, <petrobras-corp.com>, <petrobraslondon.com> and <petrobrasuk.com> (the “Disputed Domain Names”) are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2013. On December 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On December 4, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the following domain names: <petrobras-corp.com>, <petrobraslondon.com> and <petrobrasuk.com>. On December 20, 2013, the Complainant submitted an amended Complaint to the Center by email. On December 21, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the following domain names: <petrobrascareerng.com> and <petrobrascarreer.com>. On December 23, 2013, the Complainant submitted a second amended Complaint to the Center by email.

The Center verified that the Complaint together with the amended Complaints 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 Complaints, and the proceedings commenced on December 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 13, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2014.

The Center appointed John Swinson as the sole panelist in this matter on January 22, 2014. 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 Petróleo Brasileiro S.A. – Petrobras, a Brazilian multinational energy company headquartered in Rio de Janeiro.

The Complainant owns a number of Brazilian trade mark registrations for PETROBRAS, dating from as early as July 25, 1974. The Complainant also owns trade mark registrations for PETROBRAS in a number of other countries. For the purposes of this decision, all of these trade marks will be collectively referred to as the “Trade Mark”.

The Complainant is also the owner of numerous domain names that incorporate the Trade Mark.

The first Respondent is Excellent Vision of Ontario, Canada. The Respondent has not filed a Response and consequently little is known about the Respondent.

The Disputed Domain Names were registered on the following dates:

- <petrobrascarreer.com>: July 31, 2013;

- <petrobrascareerng.com>: July 29, 2013;

- <petrobras-corp.com>: July 26, 2013;

- <petrobraslondon.com>: July 17, 2013; and

- <petrobrasuk.com>: July 1, 2013.

Currently, there are no websites operating at the Disputed Domain Names.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions.

Identical or Confusingly Similar

The Disputed Domain Names are confusingly similar to the Trade Mark. All of the Disputed Domain Names incorporate the Trade Mark in its entirety, followed by other words, indicating geographical localization (“london” and “uk”), job recruitment (“carreer” and “careering”) and corporation (“-corp”).

Rights or Legitimate Interests

The Respondent does not have rights or legitimate interests in the Disputed Domain Names for the following reasons:

- the Respondent does not run any business under the Trade Mark and has never used the Trade Mark to identify its products or services;

- the Respondent does not own any trade mark application or registration for the Trade Mark;

- the Complainant has never authorized the Respondent to use the Trade Mark;

- the Respondent has not been commonly known by any of the Disputed Domain Names;

- the Respondent is not using the Disputed Domain Names to offer bona fide goods or services, at least two of the websites at the Disputed Domain Names have been used to carry out a fake job scam, which aimed to attract Internet users by making employment offers in a fictional company. Currently, the websites at all of the Disputed Domain Names are empty; and

- the Respondent is not making a legitimate noncommercial use of the Disputed Domain Names.

Registered and Used in Bad Faith

The following is evidence that the Respondent registered and is using the Disputed Domain Names in bad faith:

- the websites at the Disputed Domain Names are empty. This amounts to passive holding as the Trade Mark has a strong reputation and is widely known;

- the Respondent has used at least two of the Disputed Domain Names in a fraudulent scam related to the sending of fake job offers. For example, the domain name <www.petrobrascareerng.com> has been listed on various domain blacklists and was denounced on a forum thread on an anti-fraud website. The email address “jobs@petrobrascareerng.com” has been used to send fake job offers to work in the non-existing company “Petrobras Nigeria Limited”. The emails containing the job offers requested that the applicant disclose personal information and in some cases requested a payment from the applicant;

- given the Complainant’s reputation, the Respondent must have known of the Complainant and the Trade Mark at the time it registered the Disputed Domain Names;

- the Respondent has not replied to the Complainant’s cease and desist letters (sent via email); and

- the Respondent has provided no evidence of any actual or contemplated good faith use of the Disputed Domain Names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) the Disputed Domain Names have been registered and are being used in bad faith.

The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.

A. Procedural Matters

The Panel confirms that the Center has complied with the steps required under the Policy and the Rules for notification of the Complaint to the Respondent. The Respondent had adequate notice of the Complaint and was given a reasonable opportunity to file a Response.

While the Respondent’s failure to file a response does not automatically result in a decision in favour of the Complainant, the Panel may draw reasonable inferences from the Respondent’s default (see e.g. Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to the Trade Mark.

<petrobraslondon.com> and <petrobrasuk.com>

Where a domain name incorporates a trade mark in its entirety, adding a geographic indicator (i.e. “London” and “UK”) will generally not distinguish the domain name from the trade mark (see e.g. Google Inc. v. Google Adwords Service at HCMC, Vietnam, WIPO Case No. D2013-0298 and Nike, Inc. v. No Owner / Ashkan Mohammadi, WIPO Case No. D2013-1297). Here, the Panel finds that the distinctive element of each of the relevant Disputed Domain Names is the Trade Mark. The addition of the geographic indicators “London” and “UK” (the country abbreviation for the United Kingdom) do not prevent the confusing similarity of the relevant Disputed Domain Names with the Trade Mark.

<petrobrascarreer.com>, <petrobrascareerng.com> and <petrobras-corp.com>

The relevant Disputed Domain Names are a combination of the Trade Mark and a descriptive term (i.e. “carreer”, “careerng” and “-corp”). The Panel finds that the Trade Mark is the dominant element in each of the relevant Disputed Domain Names. It is well established that the addition of a descriptive term to a trade mark does not prevent confusingly similarity (see e.g. Paris Hilton v. Turvill Consultants, WIPO Case No. D2012-0965 and the cases cited therein). The fact that “carreer” and “careerng” are misspellings of common dictionary words (being “career” and “careering”), or incorporate a geographical indicator, such as “ng” for “Nigeria”, does not prevent a finding of confusingly similarity.

The addition of the generic Top Level Domain (“gTLD”) “.com” in each of the Disputed Domain Names is without legal significance.

In light of the above, the Complainant succeeds on the first element of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel finds that the Complainant has made out a prima facie case for the following reasons:

- the Respondent has no connection with the Complainant;

- the Complainant has not consented to the Respondent's use of the Trade Mark;

- there is no evidence that the Respondent has been commonly known by any of the Disputed Domain Names; and

- the Disputed Domain Names are not in use. This is not a fair commercial use of the Trade Mark, nor does it constitute a bona fide offering of goods or services.

Additionally, the Complainant has provided evidence that in the past the email addresses “jobs@petrobrascareerng.com” and “jobs@petrobrasuk.com” have been used as an email server for sending fraudulent email messages purportedly on behalf of “Petrobras Nigeria Limited” and “Petrobras UK Limited”. The Complainant provided screen-shots of anti-fraud websites, which include the text of emails sent from these addresses. It appears to the Panel that the Respondent’s goal was to obtain personal information by convincing prospective job applicants that they had been successful. For example, one of the scam emails sent from “jobs@petrobrasuk.com” advised applicants that they would be required to provide “necessary documents” (including a copy of their passport) for immigration purposes. The Panel finds that the Respondent has used the Disputed Domain Names <petrobrascareerng.com> and <petrobrasuk.com> in a job fraud scam for commercial gain.

The Respondent had the opportunity to demonstrate that it has rights or legitimate interests in respect of the Disputed Domain Names, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted, and the Complainant succeeds on the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and is using the Disputed Domain Names in bad faith.

The Disputed Domain Names are not being actively used. They all resolve to blank pages. Passive holding does not prevent a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, affirmed in subsequent cases such as Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273 and Atlas Copco Aktiebolag v. MKC Supply Inc, WIPO Case No. D2011-1844). The Panel must determine whether the Respondent’s passive holding of the Disputed Domain Names can be considered registration and use in bad faith, taking into account all the circumstances of the case.

The Complainant and the Trade Mark are well known. Therefore, it is likely that the Respondent had knowledge of the both the Complainant and the Trade Mark when it registered the Disputed Domain Names. Where the reputation of a complainant in a given mark is significant and the mark has strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith on the part of the respondent may be inferred (see e.g. Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909 and cases cited therein). Here, the Panel can reasonably infer that the Respondent sought to make use of the reputation of the Complainant (at some point in time) and registered the Disputed Domain Names in bad faith.

As discussed above, it appears to the Panel that the Respondent has been using the <petrobrascareerng.com> and <petrobrasuk.com> domain names to carry out a job fraud scam. Previous Panels have found this to be evidence of bad faith registration and use. The Panel in ConAgra Foods RDM, Inc. v. Mark Berry, WIPO Case No. D2013-0240 helpfully extracted and summarized the previous decisions in respect of this matter:

“The use of a domain name (that is likely to be confused with the complainant’s mark) for purposes of a phishing scheme satisfies paragraph 4(b)(iv) of the Policy and constitutes bad faith registration and use. PCL Construction Holdings Ltd. v. Chye Ling, WIPO Case No. D2012-2498 (“Respondent’s exploitation of the Complainant’s trademark to perpetrate what appears to be a fraud on unsuspecting job applicants in particular and on Internet users in general demonstrates, in the view of this Panel, the Respondent’s bad faith”); Starwood Hotels & Resorts Worldwide, Inc. The Sheraton LLC, and Sheraton International, Inc. v. PrivacyProtect.org / power mark consult, mark pd, WIPO Case No. D2012-1125 (“Complainant has provided evidence showing that Respondent has used the disputed domain name in connection with fraudulent job fraud scam especially to provide cover for sending fraudulent email messages, and to redirect all Internet traffic to the disputed domain name to Complainant’s official website for the Sheraton Heathrow Hotel in order to confuse prospective job applicants so that they believe that the job offer and subsequent request for the applicant’s personal information and money is legitimate. The Panel finds that the public is likely to be confused into thinking that the disputed domain name <sheraton-heathrowhotel.com> has a connection with Complainant, which is contrary to fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves. The Panel finds Internet users may be led to believe that the disputed domain name is owned by Complainant or is the official authorized partner of Complainant, which is not the case, for Respondent’s commercial gain. The Panel therefore finds that Respondent registered and is using the disputed domain name in bad faith.”); Société des Hotels Meridien v. WhoIs Guard / Jim Thiam, WIPO Case No. D2011-1030 (“The Respondent’s exploitation of the Complainant’s goodwill for financial gain by perpetrating what appears to be a fraud on unsuspecting job applicants demonstrates in the view of this Panel the Respondent’s bad faith.”); Travellers Exchange Corporation Limited v. Sandy Dreben, WIPO Case No. D2009-1333 (“Using an email address associated with the Domain Name, pdirectemployer@careerstravelex.com> the Respondent has been phishing to attract people to fictitious jobs with Travelex UK Limited (a member of the Travelex Group). […] The activities of the Respondent in adopting the identity of the Complainant to conduct a phishing scam, clearly has the potential to cause enormous harm to the reputation of the Complainant, which operates a global and successful business. Any fraudulent use of the Domain Name inevitably conflicts with Complainant's trademarks by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Complainant's products and services. […] The Panel finds that the information regarding fraudulent activity, which is unchallenged by the Respondent, is clear evidence of its use of the Domain Name in bad faith.”).”

The Panel finds that the Respondent’s failure to respond to the Complainant’s cease and desist letters (via email) further evidences bad faith registration and use.

In light of the above, the Panel determines that the Respondent’s registration and use of the Disputed Domain Names constitutes bad faith.

7. Decision

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 <petrobrascareerng.com>, <petrobrascarreer.com>, <petrobras-corp.com>, <petrobraslondon.com> and <petrobrasuk.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: January 28, 2014