WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Petróleo Brasileiro S.A. - Petrobras v. AK Bright
Case No. D2013-2063
1. The Parties
The Complainant is Petróleo Brasileiro S.A. - Petrobras of Rio de Janeiro, Brazil, represented by Siqueira Castro Advogados, Brazil.
The Respondent is AK Bright of Imc, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <petrobras-uk.com> ("the Domain Name") is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2013. On December 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 11, 2013, 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 December 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2014.
The Center appointed Dawn Osborne as the sole panelist in this matter on January 10, 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 a Brazilian energy company with trade mark registrations for PETROBRAS for oil and gas related services around the world including the European Community where its registrations date back to 2010, South Africa where its registrations date back to 2004 (and also Brazil where its registrations date back to 1974).
The Domain Name was registered on March 3, 2013, by the Respondent who is based in Nigeria. No content has been attached to the Domain Name, however it has been used in emails for false offers of employment.
5. Parties’ Contentions
The Complainant's contentions can be summarised as follows:
The Complainant is a Brazilian energy company with trade mark registrations for PETROBRAS around the world including in South Africa where its registration dates from 2004 and the European Community where its registrations date back to 2010. (The Complainant also says in its Complaint that it is the owner of a trade mark registration for PETROBRAS in Nigeria where the Respondent is based registered in October 2011, but no registration certificate for this has been provided.) It owns several domain names containing its PETROBRAS mark including <petrobras.com>. The PETROBRAS trade mark is very familiar to consumers in Brazil where it is also registered with registrations back to 1974 and based on its extensive use of the mark the Complainant has developed a goodwill and brand recognition of its mark. The Domain Name bears the Complainant's PETROBRAS trade mark followed by the country abbreviation “uk”, thus generating the appearance that the Domain Name is owned by the Complainant and is its website for the United Kingdom of Great Britain and Northern Ireland. As such the Domain Name is identical and confusingly similar to the Complainant's trade mark.
The Respondent does not run any business under the name “Petrobras”, has never used such expression to identify its goods and services, is not commonly known by it and does not appear to have any trade mark application or registration for the word “Petrobras”. The Complainant has never authorised the Respondent to use its trade mark PETROBRAS. The Respondent is not using the Domain Name to offer goods and services with bona fide, but has not connected it to any content, which is not a legitimate non-commercial or fair use. The Respondent has no rights or legitimate interests in the Domain Name.
By having no content on the web page attached to the Domain Name, the Respondent's conduct is a free ride on the Complainant's goodwill and trade mark and is a clear case of passive holding which amounts to registration and use in bad faith. In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the panel held that passive holding of a domain name containing a mark with a strong reputation is bad faith where there is no evidence of actual or contemplated good faith use. There is also evidence that the Respondent has used the Domain Name to spread by email false job offers to work for the Complainant in the United Kingdom. The Respondent is, therefore, using the Complainant's mark to intentionally attract for commercial gain Internet users to an Internet location fulfilling the requirements of paragraph 4(b) (iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The 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 Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or confusing similarity
The Complainant has trade mark registrations consisting of the PETROBRAS word mark around the world including South Africa, the European Community and Brazil with registrations in Brazil dating back to 1974.
The Complainant says it also owns a registration in Nigeria where the Respondent is based dating back to October 2011, but no registration certificate has been provided to verify this. The Domain Name is confusingly similar to the Complainant's trade mark consisting of the Complainant's PETROBRAS registered trademark and the country abbreviation “uk” designating the United Kingdom. The distinctive part of the Domain Name is the “Petrobras” name. The addition of the country abbreviation does nothing to prevent the confusing similarity of the Domain Name with the Complainant's PETROBRAS trade mark as it is merely a geographically descriptive name and indicative of a place where the Complainant has registered trade mark rights. The “.com” suffix is ignored for the purposes of this test under the Policy as it is purely descriptive in the context of a domain name. As such the Panel holds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy.
B. Rights or Legitimate Interests
The Respondent has not filed a Response. It has no consent from the Complainant, and it has not used the Domain Name for a bona fide offering of goods and services, it has not attached any content to the Domain Name but has used it to send false job offers by email which is not a noncommercial or fair use. It does not appear to be commonly known by the Domain Name. In the circumstances of this case, and in view of the Panel’s discussion below, the Panel finds that the second element of the Policy has been established.
C. Registered and Use in Bad Faith
Paragraph 4(b) of the Rules sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
“by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”
The Respondent has not provided any explanation why it would be entitled to register a domain name equivalent to the Complainant's trade mark with only a generic geographical abbreviation added. Further, in the opinion of the Panel the use made of the Domain Name is deceptive to make false offers of employment. As such the Panel finds that the Domain Name has been used in a way likely to confuse people into believing the Domain Name is registered to or connected to the Complainant. The use of the trade mark by email suggests that the Respondent is well aware of the Complainant and its business. In the absence of a Response from the Respondent, considering the reputation of the Complainant and the emails sent using the Domain Name the Panel is satisfied that the Complainant has shown that the Respondent registered the Domain Name in bad faith and has used the Domain Name to attract Internet traffic by e mail for commercial gain by creating a likelihood of confusion that its email destination and its services are connected to the Complainant. As such the Panel finds that the Domain Name has been registered and is being used in bad faith satisfying the third limb of the Policy. It is, therefore, not necessary to consider further the Complainant's representations as to passive holding.
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-uk.com> be transferred to the Complainant.
Date: January 21, 2014