WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Petróleo Brasileiro S.A - Petrobras v. Timucin Ersoz
Case No. D2014-1672
1. The Parties
The Complainant is Petróleo Brasileiro S.A - Petrobras of Rio de Janeiro, Brazil, represented by Ouro Preto Advogados, Brazil.
The Respondent is Timucin Ersoz of Izmir, Turkey.
2. The Domain Name and Registrar
The disputed domain name <petrobras.club> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 25, 2014. On September 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 27, 2014, 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.
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 October 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 23, 2014.
The Center appointed Anna Carabelli as the sole panelist in this matter on October 29, 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.
The Complaint has been submitted in English and the language of the proceeding is English.
4. Factual Background
The Complainant is a Brazilian multinational energy corporation, with headquarters in Rio de Janeiro, whose core business focuses on refining, marketing and production of oil and derivatives products. In this field, the Complainant is one of the major companies in the world in terms of revenues and it is present and operates at global level in over 20 countries.
Since 1974 the Complainant is the owner of a number of national, international and community trademarks consisting of the word "petrobras" (Annexes 4 and 5 to the Complaint).
Furthermore, the Complainant owns various domain names, including <petrobras.com> and <petrobras.us> (Annex 6 to the Complaint), that are used in connection with the Complainant's online commercial activity.
The Complainant has invested significantly in advertising and media campaigns, also online, in order to spread its brand and trademarks, and to further expand the presence of the corporation worldwide, as it results from Annex 7 to the Complaint.
The disputed domain name <petrobras.club> was registered on May 24, 2014, as shown by a copy of the Registrar's WhoIs database annexed to the Complaint (Annex 2 to the Complaint). The disputed domain name resolves to a website featuring several sponsored links to other websites, as shown in the printout dated September 23, 2014 (Annex 8 to the Complaint).
On September 2, 2014, the Complainant requested the Respondent to cease and desist from any use of the disputed domain name <petrobras.club> and to transfer or cancel it. The Respondent replied on the same day stating that it would not comply with the Complainant's requests and offered to sell the disputed domain name to the Complainant (Annex 9 to the Complaint).
5. Parties' Contentions
The Complainant contends that:
- the Complainant's trademark PETROBRAS is a distinctive mark enjoying worldwide reputation and registered in Brazil and in many other countries;
- the disputed domain name is identical with or confusingly similar to the Complainant's registered trademark, since it incorporates it entirely;
- the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant emphasizes that it has not licensed or otherwise authorized the Respondent to use its PETROBRAS trademark, or to apply for any domain name incorporating such mark. The Respondent is not commonly known by the domain name, and does not trade under the name "Petrobras" or make any legitimate use thereof and does not appear to own any trademark applications or registrations for PETROBRAS in connection with any good or services.
- the trademark PETROBRAS is firmly associated to the Complainant, one of the major energy companies in the world;
- the disputed domain name was registered in bad faith given that the Respondent could not ignore the existence of the Complainant when the disputed domain name was registered given the strong reputation and distinctive character of the Complainant's mark PETROBRAS;
- the disputed domain name is being used in bad faith to advertise links to other websites and to redirect users. In doing so the Respondent is profiting from the goodwill in the Complainant's trademarks and creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement.
- the Complainant refers to previous UDRP decisions according to which: (a) the registration and use of a domain name for the purposes of re-directing users to others' website, constitutes bad faith use, and, (b) the first-come, first-served principle, with regard to domain names registration, requires that the first to come is in good faith. On the contrary, the registration of a domain name by someone without connection with the Complainant suggests opportunistic bad faith if no legitimate interest is clearly proven;
- further evidence of bad faith are the Respondent's refusal to comply with the Complainant's cease and desist letter and offer to sell the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the disputed domain name is identical or confusingly similar to the Complainant's trademark or service mark; and
(ii) the 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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the Respondent, shall be evidence of the Respondent's rights to or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
The Complainant has proved that it owns numerous trademark registrations and applications for the mark PETROBRAS in Brazil as well as in many other countries.
The disputed domain name consists of the PETROBRAS trademark in its entirety and it is well established that "the fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy" (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249; Accor v. Payam Avarane Khorshid Co. and Nextone Media Limited, WIPO Case No. DIR2010-0001; Sopra Group and Steria v. JSP, WIPO Case No. D2014-0673).
Moreover, according to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2, the applicable top-level suffix in the domain name (".club") in the present case would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration) (Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182;
Consequently, the Panel finds that the Complainant has met the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The consensus view of WIPO panelists concerning the burden of establishing lack of rights or legitimate interests in respect of a domain name is as follows: "While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP." (WIPO Overview 2.0, paragraph 2.1.)
In the present case the Complainant has established a prima facie evidence that the Respondent lacks rights or legitimate interests in the disputed domain name in relation to the three circumstances identified in paragraph 4(c) of the Policy, namely: (i) bona fide prior use; (ii) common association with the disputed domain name, and (iii) legitimate noncommercial use. The Respondent did not exercise its right to respond in these proceedings thus failing to rebut the prima facie case made by the Complainant (or to advance any other argument supporting rights or legitimate interests).
Accordingly, the Panel finds that the Complainant has established paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the international reputation of the PETROBRAS mark and the significant advertising campaigns conducted by the Complainant through the years, the Panel finds that in all likelihood the Respondent could not ignore the Complainant's well-known PETROBRAS trademark at the time it registered the disputed domain name. In addition, as it has been widely established by previous UDRP cases the Respondent's registration of the disputed domain name and continued use of it to redirect Internet users, i.e., particularly customers and potential customers of the Complainant from the Complainant's website to a different website, constitutes bad faith registration and use (Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319; Netwizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768; Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537). The Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's trademark, in particular as to the affiliation or endorsement of its website and the sponsored links contained therein.
In the Panel's view, the circumstance that the Respondent offered to sell the disputed domain name to the Complainant constitutes further evidence of the Respondent's bad faith under paragraph 4(b)(i) of the Policy.
Accordingly, the Panel finds that the Complainant has established 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 <petrobras.club> be transferred to the Complainant.
Date: November 12, 2014