WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Petroleo Brasileiro S.A - Petrobras v. Paul Morel, Petrobrina and Whois Agent, Whois Privacy Protection Service, Inc.

Case No. D2015-1096

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 Paul Morel, Petrobrina of Rio de Janeiro, Brazil; Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America.

2. The Domain Name and Registrar

The disputed domain name <dadospetrobras.org> is registered with Name.com LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 25, 2015. On June 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 July 1, 2015 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 July 3, 2015.

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 July 8, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 29, 2015.

The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on August 5, 2015. 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 the Brazilian energy company Petroleo Brasileiro S.A - Petrobras, with its head offices in Rio de Janeiro, Brazil. The Complainant's activities are present in 28 countries.

Among other registrations in different countries granted before 2014 (the year the disputed domain name was registered), the Complainant owns the Brazilian Registrations Nos. 003676935, filed on February 1, 1968 and granted on February 1, 1978, in national class 11/10 (newspapers, magazines and periodicals in general), 006005098 and 006005101, both filed on March 9, 1970 and granted on July 25, 1974, in respective national classes 37/10 (geology, survey, topography, aerophotogrammetry, oceanography, geodesic and similar services) and 38/20.40 (cargo transportation services, storage and packaging of goods in general; auxiliary services for transportation in general and for storage), all for the mark PETROBRAS.

The mark PETROBRAS is used to identify the Complainant's oil and gas services and goods.

The Complainant owns domain names bearing its trademark PETROBRAS, such as the domain names <petrobras.com.br>, registered on June 14, 1996, <petrobras.org>, registered on July 1st, 2002, and <petrobras.com>, registered on March 6, 1996.

The Respondent is Paul Morel, Petrobrina of Rio de Janeiro, Brazil.

The disputed domain name was registered on August 20, 2014.

5. Parties' Contentions

A. Complainant

The Complainant claims that the disputed domain name <dadospetrobras.org> incorporates its trademark PETROBRAS. The Complainant cites Accor v. Payam Avarane Khorshid Co. and Nextone Media Limited, in WIPO Case No. DIR2010-0001 (which it was decided that the incorporation of a third party's entire mark suffices to "establish confusing similarity."

According to the Complainant, no authorization to use the trademark PETROBRAS or to register domain names encompassing it has been granted to the Respondent by the Complainant.

The Complainant alleges that the Respondent is not known by the disputed domain name <dadospetrobras.org> and that it has no prior rights or legitimate interests in the disputed domain name. The Complainant argues that the use of the mark PETROBRAS by the Respondent in the disputed domain name is abusive and illegitimate.

It argues that the Respondent is using the disputed domain name in bad faith to identify a page containing sponsored links to other websites, which can be verified in Annex 8 and in the printed screen on page 11 of the Complaint.

It claims that the reputation of the Complainant's business predates the Respondent's registration of the disputed domain name and that the Respondent could not ignore the Complainant's trademark.

The Complainant alleges that the Respondent uses a privacy service to protect its identity and cites decisions (namely, TDS Telecommunication Corporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services, WIPO Case No. D2006-1620; CCM IP S.A. v. Traverito Traverito, WIPO Case No. D2007-0542; and Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598), considering that domain name registrants that use privacy services without legitimate reasons are probably aiming to avoid enforcement of third parties' rights.

The Complainant also argues that it sent a warning letter to the Respondent on September 17, 2014, which is attached in Annex 9, but has never received a response to it.

For these reasons the Complainant finds that the Respondent is acting in bad faith by using the disputed domain name.

Finally, the Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

As per paragraph 4(a) of the Policy, 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;

(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.

A. Identical or Confusingly Similar

The evidence presented demonstrates that the Complainant is the owner of the trademark PETROBRAS in several countries, including in Brazil, in different classes to cover goods and services associated with the oil and gas services offered by the Complainant, and of the domain names <petrobras.com.br>, <petrobras.org> and <petrobras.com>, among others. The Complainant's trademarks and domains predate the disputed domain name.

The disputed domain name comprises the Complainant's trademark PETROBRAS with the addition of the word "dados," which means "data" in Portuguese.

The main element of the disputed domain name is PETROBRAS, which is identical to the Complainant's trademark PETROBRAS.

The expression "dados" is not enough to avoid confusion by Internet users, since it gives the idea of a website related to information about the Complainant's company.

The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant's trademark.

B. Rights or Legitimate Interests

The Respondent has not submitted a response to the Complaint.

The Respondent has no authorization to use the Complainant's trademark or to register domain names containing the trademark PETROBRAS.

The Respondent is not known by the trademark PETROBRAS.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The trademark PETROBRAS is registered by the Complainant in several countries, including in Brazil, where the Respondent is domiciled, in different classes, basically to cover goods and services related to energy, oil and gas.

The disputed domain name uses the trademark PETROBRAS with the addition of the word "dados," which does not avoid confusion with the Complainant's trademark.

The Respondent has no rights or legitimate interests in using the trademark PETROBRAS.

The website at the disputed domain name currently displays sponsored links, some of which advertise job offers in the Complainant's company, offers to buy the Complainant's stock or information about the stock of the Complainant.

In view of the above reasons, this Panel finds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's trademark.

This Panel finds that the Respondent's intention of taking undue advantage of the trademark PETROBRAS as described in paragraph 4(b)(iv) of the Policy has been demonstrated.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used in 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 name, <dadospetrobras.org> be transferred to the Complainant.

Mario Soerensen Garcia
Sole Panelist
Date: August 14, 2015