WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Petróleo Brasileiro S.A. - Petrobras v. Felipe Rego / Whois Privacy Protection Service, Inc.
Case No. D2013-2073
1. The Parties
Complainant is Petróleo Brasileiro S.A. - Petrobras of Rio de Janeiro, Brazil, represented by Siqueira Castro Advogados, Brazil.
Respondent is Felipe Rego of Nelspruit, South Africa / Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America.
2. The Domain Name and Registrar
The disputed domain name <uk-petrobras.com> is registered with eNom (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 December 2, 2013, 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 Complainant on December 4, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 10, 2013.
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 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. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 3, 2014.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on January 9, 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
Complainant is a major international energy company based in Brazil. As the seventh largest oil company in the world, Complainant has market capitalization of about USD 180 billion, and has over 80,000 employees. According to Forbes magazine, it is among the top 20 companies in the world for sales and market value. The company was founded in 1953 and owns registrations for the mark PETROBRAS in Brazil and around the world, including European Community Registration No. 008941015 (registered 2010) and 008941056 (registered 2010), and well as Brazilian Registration No. 006005098 (registered 1974), and South African Registration No. 2004/01017 (registered 2004), in the country where Respondent lists with the Registrar its address of record. In light of its global market presence and sales, the Panel finds the mark to be well known.
Complainant also owns the registration for several domain names that include its registered PETROBRAS mark, which it uses to introduce consumers to the goods and services associated with its mark. These include <petrobras.com> (registered March 6, 1996) and <petrobras.com.br> (registered June 14, 1996) as well as other top-level domains, including “.net”, “.org”, “.us”, “.fr”, “.pt”, and “.cl”.
The disputed domain name <uk-petrobras.com> was registered on August 25, 2013. Respondent has no affiliation with Complainant. Respondent registered through a privacy service, and has not used the disputed domain name for any active website. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby.
5. Parties’ Contentions
Complainant contends that (i) <uk-petrobras.com> is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Respondent did not file a reply to Complainant’s contentions in this proceeding.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel must first determine whether <uk-petrobras.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s well-known, registered trademark PETROBRAS, and merely adds a hyphen with letters “uk,” which is a geographically descriptive term for the United Kingdom of Great Britain and Northern Ireland, in Europe where Complainant has registered its marks and conducts activities in its energy business.
The Panel finds that the added term would be perceived by Internet users as descriptive of a website where they could find information about products or services regarding Complainant’s activities in or related to the United Kingdom. Accordingly, consumers would expect to find information offered by Complainant on such a website.
The WIPO Panel Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides guidance on cases where a geographically descriptive term is added to a mark. Paragraph 1.9 notes that “The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP.” See Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768 (<playboyturkey.com> transferred).
This Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that the respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
Respondent did not submit a reply to the Complaint. The Panel finds that Complainant has established a prima facie case of lack of rights or legitimate interests which Respondent has not rebutted. Accordingly, the Panel finds for Complainant on the second element of the Policy.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and is being used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location.” As noted in Section 4 of this Panel’s decision, Respondent has not used the disputed domain name for any active website.
Turning again to WIPO Overview 2.0 for guidance, the consensus view in paragraph 3.2 states that “With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith.” Rather, a panel must examine “all of the circumstances” including, for example, whether Complainant has a well-known trademark, and whether Respondent replies to the complaint, as well as whether Respondent attempts to shield its identity. Here, the Panel has found that Complainant’s mark is well known. Further, since Respondent did not reply, and has taken steps to shield its identity from Complainant, this case fits well within the consensus view of finding bad faith even for passive holding.
Therefore, this Panel finds that Respondent registered and is using the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
For all 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 <uk-petrobras.com> be transferred to Complainant.
Dated: January 19, 2014