WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Petroleo Brasileiro S.A. - Petrobras v. Domain Discreet Privacy Service

Case No. D2013-2069

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 Domain Discreet Privacy Service of Jacksonville, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <petrobrasniger.com> (the “Disputed Domain Name”) is registered with Register.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 Disputed Domain Name. On the same date, 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 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2014.

The Center appointed John Swinson 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 Petróleo Brasileiro S.A. – Petrobras, a Brazilian multinational energy company headquartered in Rio de Janeiro.

The Complainant owns a number of Brazilian trade mark registrations PETROBRAS, dating from as early as July 25, 1974. The Complainant also owns trade mark registrations PETROBRAS in a number of countries, including the United States. For the purposes of this decision, all of these trade marks will be collectively referred to as the “Trade Mark”.

The Complainant is also the owner of numerous domain names that incorporate the Trade Mark.

The Respondent is Domain Discreet Privacy Service of the United States. As the Respondent did not file a Response, little information is known about the Respondent.

According to the publicly available WhoIs database for the Disputed Domain Name, the Disputed Domain Name was registered with the Registrar on October 13, 2013. The WhoIs database records the current registrant of the Disputed Domain Name as the Respondent. The Respondent appears to be a “proxy registration” service that offers a form of domain privacy.

The Disputed Domain Name currently resolves to a holding page, produced by Register.com, that states:

“Sorry! This site is no longer available.
If you are the owner of this site, please call the number below and mention code WSN2240Z
Toll free within the U.S. & Canada: (877) 454-5212
Outside the U.S. & Canada: (902) 749-5312”

In the past, the website at the Disputed Domain Name has displayed links to various websites. Many of the links incorporated the Trade Mark and appeared to be related to the oil and gas industry.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions:

Identical or Confusingly Similar

The Disputed Domain Name is confusingly similar to the Trade Mark. It incorporates the Trade Mark in its entirety, followed by the word “Niger”, which is a country where the Complainant does business.

Rights or Legitimate Interests

The Respondent does not have rights or legitimate interests in the Disputed Domain Name for the following reasons:

- the Respondent does not run any business under the Trade Mark and has never used the Trade Mark to identify its products or services;

- the Respondent does not own any trade mark application or registration for the Trade Mark;

- the Complainant has never authorized the Respondent to use the Trade Mark;

- the Respondent has not been commonly known by the Disputed Domain Name;

- the Respondent is not using the Disputed Domain Name to offer bona fide goods or services, at one stage, the website at the Disputed Domain Name contained links to other websites; and

- the Respondent is not making a legitimate noncommercial use of the Disputed Domain Name.

Registered and Used in Bad Faith

The following is evidence that the Respondent registered and has used the Disputed Domain Name in bad faith:

- the website at the Disputed Domain Name contains sponsored links, some of which incorporate the Trade Mark;

- given the Complainant’s reputation, the Respondent must have known of the Complainant and the Trade Mark at the time it registered the Disputed Domain Name;

- the Respondent has not replied to the Complainant’s cease and desist letter (sent via email); and

- the Respondent has taken active steps to conceal its identity, through the use of a privacy service.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 has been registered and is being used in bad faith.

The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.

A. Procedural Matters

The Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant. However, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., The Uder Company Pty Ltd and Stay In Bed Milk & Bread Pty Ltd (trading as Aussie Farmers Direct) v. PrivacyProtect.org, Domain Admin, ID # 10760, WIPO Case No. D2012-0924 and cases cited therein).

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.

Where a domain name wholly incorporates a trade mark, the addition of a geographic indicator (i.e. “Niger”) will generally not distinguish the domain name from the trade mark (see, e.g., Google Inc. v. Google Adwords Service at HCMC, Vietnam, WIPO Case No. D2013-0298 and Nike, Inc. v. No Owner / Ashkan Mohammadi, WIPO Case No. D2013-1297). Here, the Panel finds that the distinctive element of the Disputed Domain Name is the Trade Mark. The addition of the geographic indicator “Niger” does nothing to prevent the confusing similarity of the Disputed Domain Name with the Trade Mark.

In light of the above, the Complainant succeeds on the first element of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

In the Panel’s opinion, the following establish a prima facie case:

- the Complainant has not licensed or otherwise authorized the Respondent to use the Trade Mark;

- there is nothing to suggest that the Respondent might be commonly known by the Disputed Domain Name;

- in the past, the website that the Disputed Domain Name resolved to was commercial in nature. It was a “link farm” website which directed Internet users to goods and services (presumably of competitors of the Complainant). This is not a fair commercial use of the Trade Mark, nor does it constitute a bona fide offering of goods or services (see, e.g., Petroleo Brasileiro S.A - Petrobras v. PrivacyProtect.org, WIPO Case No. D2011-1265 and cases cited therein). Further, at present the Disputed Domain Name is not in use (it is a simply a holding page).

The Respondent had the opportunity to demonstrate that it has rights or legitimate interests in respect of the Disputed Domain Name, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted, and the Complainant succeeds on the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith, including where a domain name is “used to intentionally attract, for commercial gain, Internet users to a web site or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that web site or location or of a product or service on that web site or location” (paragraph 4(b)(iv) of the Policy).

The Respondent has previously used the Disputed Domain Name to direct Internet users to a “link farm” website. The majority of the featured links incorporated the Trade Mark and/or were related to the oil and gas industry (and thus were likely links to websites of the Complainant’s competitors). It can reasonably be inferred that the Respondent was profiting from the website through “click-through revenue”. In light of this, the Panel is of the view that the Respondent was using the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent had the opportunity to make submissions to the contrary but failed to do so. The Panel infers from this failure to respond that the Respondent could not provide any evidence of good faith use of the Disputed Domain Name (see, e.g., The Uder Company Pty Ltd and Stay In Bed Milk & Bread Pty Ltd (trading as Aussie Farmers Direct) v. PrivacyProtect.org, Domain Admin, ID # 10760, Supra, and cases cited therein).

The Respondent’s failure to respond to the Complainant’s cease and desist letter compounds the Respondent’s bad faith registration and use. The decision HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062 (also cited in The Uder Company Pty Ltd and Stay In Bed Milk & Bread Pty Ltd (trading as Aussie Farmers Direct) v. PrivacyProtect.org, Domain Admin, ID # 10760, Supra) specifically addresses this issue in relation to privacy services:

“Any such bad faith is compounded when the domain name owner or its duly authorized privacy service, upon receipt of notice that the domain name is identical to a registered trademark, refuses to respond or even to disclose the domain name owner’s identity to the trademark owner. Such conduct is not consistent with what one reasonably would expect from a good faith registrant accused of cybersquatting.”

In light of the above, the Panel determines that the Respondent’s registration and use of the Disputed Domain Name constitutes 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, <petrobrasniger.com>, be transferred to the Complainant.

John Swinson
Sole Panelist
Date: January 24, 2014