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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Petroleo Brasileiro S.A - Petrobras v. PrivacyProtect.org / Milan Kovac

Case No. D2011-1251

1. The Parties

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

The Respondent is PrivacyProtect.org of Shanghai, China / Milan Kovac of Bratislava, Slovakia.

2. The Domain Name and Registrar

The disputed domain name <petrobraspremia.com> is registered with Hebei Guoji Maoyi (Shanghai) Ltd aka Hebei International Trading (Shanghai) Co., Ltd d/b/a HebeiDomains.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2011. On July 22, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 2011, 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 29, 2011 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 August 2, 2011. On August 1, 2011, the Center transmitted an email communication to the parties in both Slovak and English regarding the language of the proceeding. On August 2, 2011, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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 August 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 29, 2011.

The Center appointed Irina V. Savelieva as the sole panelist in this matter on September 14, 2011. 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.

Upon examining the evidence supplied by the Complainant the Panel issued the Administrative Panel Procedural Order No. 1 on October 3, 2011, in which it invited the Complainant to submit further evidence, including in relation to a similar domain name <petrobrasspremmia.com> owned by a subsidiary (Petrobras Engergie S.A.) of the Complainant.

On October 3, 2011, the Complainant submitted further evidence following the Administrative Panel Procedural Order No. 1 providing further evidence.

4. Factual Background

The Complainant is a Brazilian energy company with presence in 27 countries worldwide. The Complainant is ranked 7th world’s biggest oil company with shares traded at stock exchanges according to Petroleum Intelligence Weekly.

The Complainant has achieved international recognition and has developed proprietary technology for ultra deep water drilling, in order to produce oil at competitive prices on offshore fields at increasingly deeper depths. The Complainant attracts interest from around the world and is signing cooperation agreements with companies around the world to explore and produce from the submarine Brazilian platform. Opening the exploration and production area to international partners has generated, in turn, opportunities for the Complainant to participate in exploration and production projects around the world.

Therefore it is inevitable that the Complainant has created an identity between the word and trademark PETROBRAS, which is now associated with the services provided by the Complainant. The PETROBRAS trademark is therefore familiar to consumers in Brazil and other countries.

The Complainant has also registered and maintains websites at several domain names all containing the PETROBRAS trademark.

The PETROBRAS trademark commands substantial goodwill and brand recognition in light of the above.

The disputed domain name was registered on November 21, 2009.

5. Parties’ Contentions

A. Complainant

(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights:

- The Complainant is the owner of several registrations and applications in Brazil and in other countries for the PETROBRAS trademark, which is a distinctive part of the Complainant’s trade name.

- The disputed domain name reproduces the PETROBRAS trademark of the Complainant and therefore identical and confusingly similar to the Complainant’s trademark.

- The Complainant is further the owner of several registrations and applications in Latin America for the PETROBRAS PREMMIA trademark, which incorporates the distinctive part of the Complainant’s trade name.

- The disputed domain name incorporates the Complainant’s PETROBRAS trademark followed by the term “premia”. The term “premia” in Portuguese and Spanish has the meaning of “award, prize” and is therefore generic.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name:

- The Complainant, being one of the biggest oil companies in the world has created an identity with the PETROBRAS trademark generating association of this trademark with the Complainant, regardless of the products and services offered to the consumers.

- The Respondent does not run any business under the “petrobras” name and has never used such name to identify its products of services. As far as the Complainant is aware, the Respondent does not own any PETROBRAS trademark application of registration.

- The Complainant has never authorized the Respondent to use the PETROBRAS trademark or to incorporate it into the disputed domain name. The use of the PETROBRAS trademark in the disputed domain name is abusive and illegitimate.

- The Respondent is not using the disputed domain name to offer bona fide goods or services as the website associated with the disputed domain name only contains sponsored links.

- There is no evidence to show that the Respondent has been commonly known by the PETROBRAS trademark or trade name.

- There is no evidence to show that the Respondent is making a legitimate use of the disputed domain name. In effect the current use of the disputed domain name is intended to attract Internet users to the website associated with the disputed domain name and to divert Internet users to the products and services offered on such website, which has no connection with the Complainant.

(c) The disputed domain names was registered and is being used in bad faith:

- The overall appearance of the website associated with the disputed domain name has varied with time, however there is evidence to show that the website associated with the disputed domain name had sponsored links bearing the PETROBRAS trademark of the Complainant.

- The Complainant sent via email a warning letter to the Respondent’s privacy protect service asking to cease the use of the PETROBRAS trademark of the Complainant and to transfer the disputed domain name to the Complainant. However the Complainant received no response.

- Provision of false or misleading information in connection with the registration of a domain name has been found to indicate bad faith on behalf of the Respondent.

- The Respondent is using the goodwill associated with the PETROBRAS trademark of the Complainant to divert Internet users to the website associated with the dispute domain name and is an indication of bad faith on behalf of the Respondent.

- The bad faith provision is also evidenced by the fact that the Respondent registered a domain name incorporating a trademark of a well-known company. It is clear that the Respondent was aware of the PETROBRAS trademark of the Complainant and the goodwill associated with it.

- Bad faith is further evidenced by the fact that the disputed domain name is being used by the Respondent to intentionally attempt to attract, for commercial gain, Internet users to the website associated with the disputed domain name by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website or a product or service.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceedings and Identity of the Respondent

The language of the registration agreement for the disputed domain name is Slovak. The Complainant has provided a request for the administrative proceedings to be conducted in English. The Respondent has not responded in any way to the Complaint.

The Complainant requests English to be the language of the administrative proceedings. This is based on the fact that the language of the proceedings involving the Respondent has been raised in two other WIPO cases, namely Intesa Sanpaolo S.p.A. v. Milan Kovac, WIPO Case No. D2010-1159 and Revlon Consumer Products Corporation v. Privacy-Protect.org / Milan Kovac, WIPO Case No. D2010-1806. In both cases, the Respondent did not comment on the language of the proceedings by the specified due date and the panels decided that the language of the proceedings should remain English. Additionally in both cases the Respondent did not file a reply to the Complainant’s contentions.

The Panel notes the request for English to be the language of the administrative proceedings. The Panel further notes that the Respondent has not filed any Response to the Complaint in either language.

The Panel finds that English should be the language of the administrative proceedings. The Panel finds that the Respondent being properly notified about the proceedings was given an opportunity to present his position on the matter of the language of the administrative proceedings; however, the Respondent has not communicated any response. Taking into account that the Respondent did not file any Response and that the Complaint was originally submitted in English, the Panel finds it appropriate to conduct these proceedings in English in order to minimize any possible costs associated with the proceedings and to ensure that the proceedings are conducted in an efficient and timely manner. The Panel further notes that all of the Center’s communications have been transmitted in both Slovak and English.

B. Identical or Confusingly Similar

The Complainant has registered the PETROBRAS and PETROBRAS PREMMIA trademarks in a number of jurisdictions. The Complainant submits that the disputed domain name is confusingly similar to its trademarks as the disputed domain name incorporates the PETROBRAS trademark in its entirety. As the word “petrobras” has no meaning in the English language, the Panel finds the Complainant’s PETROBRAS trademark to be highly distinctive.

In relation to the incorporation in the disputed domain name of the generic term “premia”, the Panel finds that the inclusion of a generic term together with a trademark cannot contribute to distinguishing the disputed domain name from a registered trademark where such domain name incorporates a distinctive trademark. The Panel finds that due to the high distinctiveness of the PETROBRAS trademark of the Complainant, the addition of the merely generic term “premia” in the disputed domain name does not avoid a finding of confusing similarity in this case.

The Panel further notes the PETROBRAS PREMMIA trademark of the Complainant. Since the disputed domain name <petrobraspremia.com> contains the word “premia”, it is also confusingly similar to the PETROBRAS PREMMIA trademark of the Complainant since the disputed domain name consists solely of the trademark of the Complainant with simply one letter missing, which does not materially change the perception of the disputed domain name in relation to the PETROBRAS PREMMIA trademark of the Complainant.

It is clear in the Panel’s view that in the mind of an Internet user the disputed domain name could be directly associated with the Complainant’s trademarks, which is likely to be confusing to the public as suggesting either an operation of the Complainant or one associated with or endorsed by it. (See AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327).

Accordingly, the Panel finds the incorporation of the merely generic term “premia” in the disputed domain name <petrobraspremia.com> does not prevent a finding of confusingly similarity to the Complainant’s PETROBRAS trademark.

Similarly, the Panel finds the different spelling in the disputed domain name <petrobraspremia.com> as compared to the PETROBRAS PREMMIA trademark of the Complainant does not prevent a finding of confusingly similarity to the Complainant’s PETROBRAS PREMMIA trademark.

The Panel finds that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.

Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainant’s assertions, the Panel needs to consider whether the Respondent has rights or legitimate interests in the disputed domain name.

According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:

(i) the respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s marks.

A respondent may elect to show rights or legitimate interests, non-exhaustively, by producing evidence under paragraphs 4(c)(i)-(iii) of the Policy.

By not responding to the Complainant’s contentions, the Respondent in these proceedings has not attempted to demonstrate its rights or legitimate interests.

The Panel further notes that, there is no evidence that before any notice of the dispute with the Complainant, the Respondent was using the disputed domain name for a bona fide offering of goods or services.

According to the documents submitted by the Complainant the disputed domain name links to a website that contains links to other websites, and is using the PETROBRAS trademark of the Complainant. The Complainant further contends that it has not granted any permission to the Respondent to use the PETROBRAS trademark of the Complainant in any way, such as incorporating it in the disputed domain name or using it on websites associated with them.

This use of the disputed domain name, in this Panel’s view, cannot constitute a bona fide offering of goods and services in the circumstances of this case, so there is no evidence that the Respondent is able to show rights or legitimate interests in respect of the disputed domain names under paragraph 4(c)(i) of the Policy.

As to paragraph 4(c)(ii) of the Policy, there is no evidence that the Respondent has been commonly known by the disputed domain name.

The disputed domain name was registered on November 21, 2009, while the Complainant has been trading and acquiring goodwill in its PETROBRAS trademark internationally much earlier than the registration of the disputed domain name so it is highly unlikely that the Respondent has been commonly known by the disputed domain name as provided in paragraph 4(c)(ii) of the Policy.

It is the Panel’s view, on the present facts, that the Respondent most likely registered the disputed domain name with full awareness of the Complainant’s PETROBRAS trademark as well as the goodwill associated with it. This is evidenced by the Respondent’s use of the PETROBRAS trademark of the Complainant both in the disputed domain name and on the website associated with it.

There is further evidence that the Respondent is possibly making commercial use from the disputed domain name (by linking to other websites). The Respondent is using the disputed domain name to further misleadingly divert customers to websites that are not associated with the Complainant. Therefore paragraph 4(c)(iii) of the Policy does not apply.

The Panel finds the Complainant has carried out its burden of proof to show that the Respondent has no rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or has 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 the complainants, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.

The Complainant contends that the disputed domain name was registered and is being used primarily for the purpose of confusing and misleading the public as to the affiliation of the disputed domain name as well as associated website with the PETROBRAS trademark of the Complainant.

The Panel finds that the Respondent's use of the disputed domain name has created a risk of confusion with the Complainant’s products and the PETROBRAS trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name and the website associated with it.

The Panel finds that the Complainant has presented evidence that the Respondent is in violation of the provisions of paragraph 4(b)(iv) of the Policy in respect of the disputed domain name.

The Panel holds that the Respondent has registered the disputed domain name in bad faith. In the circumstances, the Respondent must have known about the Complainant’s products and should have been aware of the PETROBRAS trademark of the Complainant. The Panel is not aware of the Respondent conducting any legitimate business activity using the disputed domain name. These findings, together with the finding that the Respondent has no rights or legitimate interests in the disputed domain name, lead the Panel to conclude that the disputed domain name was registered and used by the Respondent in bad faith.

The Panel also draws inferences of bad faith from the lack of a formal response from the Respondent to the Complaint.

The Panel finds the Complainant has shown that the Respondent registered and used the disputed domain name 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 domain name, <petrobraspremia.com> be transferred to the Complainant.

Irina V. Savelieva
Sole Panelist
Dated: October 15, 2011

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