WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Petroleo Brasileiro S.A - Petrobras v. Monica Mitchell
Case No. D2014-1675
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 Monica Mitchell of Palm Beach, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <petrobras.xyz> (the "Domain Name") is registered with Instra Corporation Pty Ltd. (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 Domain Name. On September 26, 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 Response was filed with the Center on October 20, 2014.
The Center appointed Steven A. Maier as the sole panelist in this matter on October 21, 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 an energy company registered in Brazil. It is one of the world's largest oil companies and has particular expertise in ultra deep water technology.
The Complainant is the owner of numerous registrations for the trademark PETROBRAS in Brazil and in various other territories around the world. The registrations include, by way of example, the following:
- Brazil trademark number 006005098 for PETROBRAS registered on July 25, 1974 in Brazilian national Class 37/10;
- India trademark number 1188265 for PETROBRAS registered on March 31, 2003 in International Class 01;
- Russian Federation trademark number 263270 for PETROBRAS registered on February 5, 2004 in International Classes 37 and 43;
- Australia trademark number 1447766 for PETROBRAS registered with effect from September 12, 2011 in International Class 40;
The Complainant's submissions include evidence of similar registrations in numerous other jurisdictions worldwide.
The Respondent registered the Domain Name on June 28, 2014.
According to the evidence submitted by the Complainant, the Domain Name resolved (on a date which is not apparent) to a website at "www.petrobras.xyz". The home page of the website was headed: "Petro Bras & Lingerie" and continued: "Petro put together all the special offers in Bras & Lingerie to give you a simple way to take advantage of promotions". The page contained a series of photographs of lingerie worn by models, together with names and descriptions of the lingerie and, in each case, what was stated to be the "Amazon.com price" and an apparent facility to "Add To Wish List". The page also contained apparent links to pages including "Amazon's Terms of Compliance", together with the statement: "Certain content that appears on this site comes from Amazon Services LLC."
As at the date of the Panel's review, the Domain Name did not resolve to any active website.
5. Parties' Contentions
The Complainant submits that it is recognized as the world's 7th largest oil company and has a presence in 28 countries. It states that it is known particularly for its ultra deep water technology, enabling oil to be extracted at competitive prices at increasingly greater depths. It submits evidence of its registrations for the trademark PETROBRAS in various countries, including the marks referred to above. It states that it also owns and uses numerous domain names incorporating the term "petrobras", including <petrobras.com>, <petrobras.net>, <petrobras.org>, <petrobras.us> and others.
The Complainant states that the mark PETROBRAS is associated with itself and its services in the minds of the public owing to its massive investment in numerous sectors. It provides copies of articles from sources including Forbes magazine, the Guardian and Fox News, including a Guardian article from November 2010 which commences: "Petrobras aspires to be world's biggest oil producer: Petrobras will invest $224bn over next five years with a target to produce 5.4m barrels of oil and gas a day over the next decade, the most produced by any publicly quoted company in the world."
The Complainant submits that, as a result of the above matters and further investment in advertising and publicity, its mark PETROBRAS has acquired a significant reputation before the general public in Brazil and worldwide.
The Complainant submits that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i) of the Policy).
The Complainant contends that the Domain Name, <petrobras.xyz>, exactly incorporates its trademark PETROBRAS and is therefore both identical and confusingly similar to that trademark.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii) of the Policy).
The Complainant states that it has never authorized the Respondent to use its trademark PETROBRAS to identify any business or for the purpose of any domain name. It also submits that the Respondent does not run any business under the name "Petrobras" and that the Respondent has no trademark rights in that name: it states that the Complainant is the only entity entitled to use the trademark PETROBRAS in more than 20 countries.
The Complainant further submits that the Respondent is unable to demonstrate any of the circumstances set out under paragraph 4 of the Policy as being indicative of rights or legitimate interests. In particular:
(i) The Respondent is not using the Domain Name for the purposes of any bona fide offering of goods or services (paragraph 4(c)(i) of the Policy). This is because the Respondent fails to satisfy the criteria set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and, in particular, fails properly to disclose her lack of relationship with the Complainant as trademark owner.
(ii) The Respondent has not been commonly known by the Domain Name (paragraph 4(c)(ii) of the Policy). The Complainant states that the Domain Name was registered in June 2014 which provides an insufficient period for the Respondent to claim to have been commonly known by that name.
(iii) The Respondent is not making legitimate noncommercial or fair use of the Domain Name as contemplated by paragraph 4(c)(iii) of the Policy. Instead, the Respondent intends to use the Domain Name to divert Internet users to her website and to tarnish the trademark at issue.
The Complainant submits that the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
The Complainant refers to the Respondent's website described above. It states that the Respondent is using the Domain Name to free ride on the Complainant's trademark and goodwill. The Complainant submits that the Respondent cannot maintain a domain name which incorporates the Complainant's trademark because to do so falsely suggests an affiliation between the parties. While the domain name registration system may operate on a "first come first served" basis, a registrant must nevertheless come in good faith: a registration without a legitimate interest suggests opportunistic bad faith.
The Complainant states that it sent a letter (in fact an email) to the Respondent on August 5, 2014 demanding a cancellation or transfer of the Domain Name and exhibits a copy of that email and of the Respondent's reply. The reply states:
I received your recent email regarding my ownership of the domain name: petrobras.xyz. I am currently using that particular domain name to advertise and sell bras and lingerie in the US. My web site has nothing to do with petroleum; and I highly doubt that women's under ware can be confused with oil and gas production. Additionally, according to the US Trademark office, the name petrobras has no relevance in English.
Please be aware that I will not surrender the domain name in question nor will I stop using that name as I have spent considerable time and expense creating my web site. However am willing to consider finding a new name for my web site and selling you that particular name, but only for a reasonable price.
Please let me know at your earliest convenience if you are interested.
MGR GSE LLC"
The Complainant contends that the Respondent has intentionally attempted to attract Internet users to her website for commercial gain by creating a likelihood of confusion with the Complainant's trademark (paragraph 4(b)(iv) of the Policy). The Complainant submits that, accordingly, the Domain Name was registered and has been used in bad faith.
The Complainant seeks a transfer of the Domain Name.
The Respondent states that the Complainant had ample time to secure the Domain Name in the period for registration reserved to trademark owners. It failed to do so, meaning that the name became available to the public and could be claimed by others including the Respondent. The Respondent makes disparaging assertions as to the possible reasons for the Complainant's failure to secure the Domain Name within the relevant period.
The Respondent submits that the Domain Name has symbolic meaning for her. In particular, it combines the name "Petro", which is the surname of an important person in her life, with the term "bras" which simply describes that item of underwear. She registered the Domain Name for the sole purpose of selling women's lingerie and has used the Domain Name for the purposes of an English-language website which could not on any basis be confused with that of a petroleum company by anyone who has viewed the home page. The Respondent submits that the term "petrobras" has no meaning in English and that, therefore, there can be no confusion between her lingerie business and that of the Complainant. Furthermore, the terms "Petro" and "Bras" are clearly separated on the website. The Respondent asserts that "only a complete cretin" could confuse her website with that of a petrochemical company.
The Respondent states that there was no obligation for her to obtain a trademark in connection with her business and that many web-based businesses operate without a trademark.
The Respondent submits that she has spent approximately USD 5,000 on setting up her business and it is unacceptable to expect her simply to abandon the Domain Name. The Respondent states that she did not approach the Complainant seeking to sell the Domain Name and any suggestion that she registered the name in order to extort money from the Complainant would be false. However, when the Complainant wrote to her concerning the Domain Name, she offered to compromise by transferring the Domain Name if the Complainant would reimburse her website development costs. The Complainant failed to respond to this offer and its refusal to try to reach an amicable settlement is indicative of bad faith on the Complainant's part.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it is the owner of registrations for the trademark PETROBRAS in a number of territories throughout the world. The Panel also finds that the Complainant is the owner of substantial unregistered trademark rights in the mark PETROBRAS as a result of the nature and scale of its business internationally. The Domain Name <petrobras.xyz> consists of a term which is identical to the Complainant's trademark, together with the gTLD "xyz" which (as is well-established in decisions under the UDRP) is to be ignored for the purposes of comparison. In the circumstances, the Complainant has established that that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant submits that it did not authorize the Respondent to use its trademark PETROBRAS for the purpose of the Domain Name, that the Respondent has not commonly been known by that name and that the Respondent is not making legitimate noncommercial or fair use of the Domain Name. The Panel accepts these submissions, which are not disputed by the Respondent.
The Respondent submits that she was entitled to register the Domain Name on a "first come first served" basis because the Complainant failed to register the name within the period reserved to trademark owners. However, the mere ability of a registrant to register a domain name does not of itself give rise to rights or legitimate interests in that name, and this is no less the case in circumstances where a trademark owner could itself have, but failed to, register the name during any "sunrise" or similar period.
The Respondent submits that she registered the Domain Name for the sole purpose of selling women's lingerie, which she has done by means of a website which could on no view be confused with any website of the Complainant. Under paragraph 4(c)(i) of the Policy, a respondent may demonstrate rights or legitimate interests in a domain name where it can show:
"… 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…"
The question for the Panel, therefore, is whether the Respondent has demonstrated any such bona fide offering of goods or services in this case. In the view of the Panel the Respondent has not. Dealing first with the Respondent's website, this appears to have consisted principally of images and descriptions copied from Amazon.com. In some cases these contained links to products being sold on Amazon.com, either by "Amazon" itself or by Amazon sellers having no apparent connection with the Respondent. There is no explanation from the Respondent of her relationship, if any, with Amazon and she has submitted no evidence concerning any commercial operations of her website or business. In the circumstances, it is not apparent to the Panel that the Respondent has made, or is able to make, any sales from her website or that it has any other bona fide commercial function. The Panel also notes that the website appears to have been taken offline.
Secondly, the Panel does not consider the Respondent's explanation for her choice of the Domain Name to be credible.
While the Respondent contends that term "petrobras" has no meaning in English, that is not a submission that assists her. Where a registrant may be more able to demonstrate rights or legitimate interests in a name which is generic or descriptive in nature, this is not the case of the name which consists of a coined or invented term as in the case of the Domain Name.
Accordingly, the Panel finds that that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Panel accepts the Respondent's submission that it is highly unlikely that any Internet user, having viewed her website, would be confused into believing that it was a website operated by or connected with the Complainant. However, this is by no means conclusive of the issue of bad faith. The Domain Name, <petrobras.xyz>, consists of the Complainant's trademark PETROBRAS in an unadorned form subject only to the gTLD "xyz". In these circumstances, in the view of the Panel, it is highly likely that Internet users would assume the Domain Name to be registered or otherwise connected with the Complainant and that any such Internet users who access the Respondent's website may do so on that assumption. While such users may well then realize that the website has no connection with the Complainant, they will nevertheless have been attracted to the website by virtue of the confusion caused by the Domain Name.
For similar reasons, it makes no difference that the terms "Petro" and "Bras" are separated as they appear on the Respondent's website.
As stated above, the Panel does not accept the Respondent's explanation for her choice of the Domain Name. In the circumstances, the Panel infers that the Respondent was aware of the Respondent's trademark PETROBRAS at the date of her registration of the Domain Name and that she registered it with the objective of taking advantage of the Complainant's goodwill in that trademark.
The Respondent submits that, since she did not approach the Complainant seeking to sell the Domain Name, it should not be inferred that she registered the Domain Name principally for the purpose contemplated by paragraph 4(b)(i) of the Policy, namely:
"… that you have registered or you have 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 documented out-of-pocket costs directly related to the domain name…"
The Panel does not accept the Respondent's submission in this regard. In cases where a registrant has registered a domain name principally for this purpose, it is perfectly possible that the registrant would sit back and wait to be approached by the trademark owner before suggesting that the domain name might be for sale. The Panel notes that, in response to the Complainant's approach to the Respondent in this case, she offered to sell the name to the Complainant for a "reasonable price" and has since suggested that her costs of setting up the "Petro Bras" business was in the region of USD 5,000. In view not least of its findings concerning the insubstantial nature of that purported business, the Panel considers this to be highly unlikely.
While there are a number of possibilities as to the Respondent's primary motivation in registering the Domain Name, the Panel is unable to identify any that does not involve her taking unfair advantage of the Complainant's goodwill in its PETROBRAS trademark, by virtue of the likely confusion described above, in circumstances where the Respondent can demonstrate no rights or legitimate interests in the Domain Name. Therefore, the Panel finds that the Domain Name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <petrobras.xyz>, be transferred to the Complainant.
Steven A. Maier
Date: October 24, 2014