WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Petroleo Brasileiro S.A - Petrobras v. Daniel MacIntyre, Ethical Island
Case No. D2014-1674
1. The Parties
The Complainant is Petroleo Brasileiro S.A – Petrobras of Rio de Janeiro, Brazil, represented by Ouro Preto Advogados, Brazil.
The Respondent is Daniel MacIntyre, Ethical Island of San Mateo, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <petrobras.ventures> 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 26, 2014, the Registrar 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 October 1, 2014 providing the registrant information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 6, 2014.
The Center verified that 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 October 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2014.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on November 7, 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 proceedings were conducted in English since that is the language of the disputed domain name’s registration agreement, as confirmed by the Registrar.
4. Factual Background
The Complainant is Brazil’s state energy company and one of the largest oil producers in the world.
Since 1974, the Complainant is the owner of the PETROBRAS mark, which it uses in connection with its fully integrated activities in the energy sector, namely exploration, production, refining, marketing, transportation, and distribution of oil products, petrochemicals, natural gas, electricity, chemical gas, and biofuels.
The Complainant is also the owner of community trademark registrations “CTM” and numerous trademark registrations for PETROBRAS in countries like the Russian Federation, South Africa, India, Japan, Australia, Colombia, New Zealand, Ecuador, Bolivia, Costa Rica, and Mexico.
According to the Registrar’s verification response, the disputed domain name was registered on February 9, 2014.
The disputed domain name currently resolves to a page showing a full-sized image of a snail, and the following post: “Slowly Changing the World, One Quote at a Time!”.
The Complainant previously brought administrative proceedings against the Respondent over a domain name other than the one disputed here, with the Respondent also defaulting in those proceedings. The UDRP panel appointed in that case ordered the transfer of the domain name <petrobras.holdings> on August 12, 2014. See Petroleo Brasileiro S.A - Petrobras v. Daniel Macintyre, WIPO Case No. D2014-1075.
5. Parties’ Contentions
The Complainant’s main submissions are as follows:
The disputed domain name bears exactly the same word “Petrobras”, registered by the Complainant as a trademark;
As held in Accor v. Payam Avarane Khorshid Co. and Nextone Media Limited, WIPO Case No. DIR2010-0001, the fact that a domain name incorporates a complainant’s registered mark in its entirety is sufficient to establish confusing similarity for the purpose of the first element of the Policy;
There is no doubt that the disputed domain name illegally reproduces the Complainant’s trademark, and therefore, is both identical and confusingly similar to the Complainant’s trademark;
The Respondent does not run any business by the name of “Petrobras” nor has ever used that term to identify its products or services, if any;
As far as the Complainant is aware, the Respondent does not own any trademark application or registration for the word “Petrobras”;
The Complainant has never authorized use of its PETROBRAS mark by the Respondent, either as a trademark or a domain name;
Since the Complainant is the only company entitled to use the PETROBRAS mark in Brazil and in more than 20 countries, it is clear that the Respondent’s use of the Complainant’s mark as a domain name is abusive and illegitimate;
None of the grounds provided by paragraph 4(c) of the Policy to prove rights or legitimate interests in the disputed domain name are applicable to the benefit of the Respondent;
The Respondent’s use of the Complainant’s Petrobras mark confuses Internet users, who are led to believe that the website associated with the disputed domain name is endorsed by the Complainant;
The Respondent’s passive use of the disputed domain name amounts to bad faith under numerous UDRP precedents;
In view of the Complainant’s longstanding reputation in its PETROBRAS mark, it is difficult to believe that the Respondent did not have actual knowledge of the Complainant’s activities under said mark;
The Panel in Petroleo Brasileiro S.A - Petrobras v. Daniel Macintyre, WIPO Case No. D2014-1075, involving the same parties, found that the Respondent reproduced a well known mark and was acting in bad faith;
The fact that the Respondent is still trying to profit unlawfully from the Complainant’s famous trademark reiterates its bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that:
i. the disputed domain name is identical or confusingly similar to a trademark 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 name; and
iii. the disputed domain name is registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
As explained in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the test for confusing similarity under the UDRP involves a straightforward visual or aural comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent Internet user confusion.
In the Panel’s view, Petrobras is readily recognized within the disputed domain name as the Complainant’s well known mark in the oil industry worldwide.
Similarly, the Panel observes that the mark PETROBRAS is entirely included in the disputed domain name, to the exclusion of the “.ventures” generic Top-Level Domain.
It is well established that a gTLD such “.ventures”1 may be excluded from the comparison of a complainant’s trademark and a domain name.
The Panel is of the opinion that the presence of “.ventures” in the disputed domain name does nothing to prevent the latter from being mistaken as the Complainant’s well known mark.
Accordingly, the Panel finds that the disputed domain name is identical to the Complainant’s PETROBRAS mark in the sense of Policy, paragraph 4(a)(i).
The Complainant has thus passed through the first gateway of paragraph 4(a) of the Policy.
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)). Paragraph 4(c) of the Policy provides that “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 [the Respondent’s] 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.”
As noted in paragraph 2.1 of the WIPO Overview 2.0, the burden is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).
The Complainant represents that it did not authorize use of its PETROBRAS mark to the Respondent, either as a domain name or otherwise. The Complainant also submits that it is the only one entitled to use the PETROBRAS mark, which has become famous.
Considering the reputation of the Complainant’s mark; the immateriality and vagueness of the Respondent’s website; and the previous finding made against the Respondent in Petroleo Brasileiro S.A - Petrobras v. Daniel Macintyre, WIPO Case No. D2014-1075, the Panel is persuaded that the Respondent has no rights or legitimate interests whatsoever in the disputed domain name.
This conclusion is only reinforced by the Respondent’s default in the instant proceedings. See Pavillion Agency, Inc.,Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221 (finding that the respondent’s failure to respond can be construed as an admission that it has no rights or legitimate interests in the disputed domain name); Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., eResolution Case No. AF-0336 (finding no rights or legitimate interests where no such rights or interests were immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed).
Consequently, the Complainant has satisfied the second prong of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires a complainant to show that the domain name has been registered and is being used in bad faith in order to be successful in its complaint. Paragraph 4(b) of the Policy sets forth a number of non-exclusive grounds of bad faith registration and use:
“(i) circumstances indicating that you [the respondent] have registered or…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 your [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] have 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 you [the respondent] have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent’s] website 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 your [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.”
It has been established that the Complainant holds registered trademark rights in Brazil over the mark PETROBRAS since 1974.
Besides Brazil, the Complainant carries out business under the PETROBRAS mark in 24 countries around the world2 .
Since Petrobras is a household name in the Brazilian and international energy markets, the Complainant’s mark has become well known within and without Brazil. See Petróleo Brasileiro S.A. - Petrobras v. Mohammad Ali Mokhtari, WIPO Case No. DIR2013-0004 (This Panel finds that the trademark PETROBRAS belonging to the Complainant has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the world).
Accordingly, the Panel has little difficulty in inferring that the Respondent’s deliberate selection of a domain name featuring the mark PETROBRAS evidences bad faith registration and use under the Policy. See Singapore Airlines Limited v. European Travel Network, WIPO Case No. D2000-0641 (where the selection of the disputed domain name is so obviously connected to the complainant’s well-known trademark, its very use by someone with no connection with the complainant suggests opportunistic bad faith).
The finding of bad faith registration and use is corroborated by the Respondent’s previous cybersquatting on the PETROBRAS mark. See Petroleo Brasileiro S.A - Petrobras v. Daniel Macintyre, WIPO Case No. D2014-1075 (holding that the respondent registered and used the disputed domain name <petrobras.holdings> in bad faith to the detriment of complainant).
As noted by the UDRP panel in that case, the Respondent was also found to have acted in bad faith in Statoil ASA v. Daniel MacIntyre, Ethical Island, WIPO Case No. D2014-0369 (holding that respondent registered and used the disputed domain names <statoil.holdings> and <statoil.ventures> in bad faith).
This pattern of bad faith conduct squarely falls under paragraph 4(b)(ii) of the Policy. See Intel Corporation v. Marcel Engenheiro / Pentium Capital, WIPOCase No. D2013-1745 (holding that respondent had engaged in a pattern of bad faith within the meaning of Policy paragraph 4(b)(ii), where two panels had previously found against it).
In sum, the Panel holds that the disputed domain name was registered and is being used in bad faith within the purview of the Policy.
The Complainant has therefore discharged its burden in connection with 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.ventures> be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Date: November 21, 2014
1 The <.ventures> gTLD was approved by ICANN on November 6, 2013. The Registry operator Donuts Inc. allows said gTLD to be registered by the general public.
2 Source: http://www.petrobras.com/en/about-us/global-presence/