WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Petróleo Brasileiro S.A. - Petrobras v. BENOKRECRUITMENTAGENCY
Case No. D2013-2075
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 BENOKRECRUITMENTAGENCY of Windhoek, Namibia.
2. The Domain Name and Registrar
The disputed domain name <petrobrasnigeria.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 30, 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 4, 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 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2013.
The Center appointed Dawn Osborne as the sole panelist in this matter on January 8, 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 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 14, 2013 by the Respondent who appears to be based in Namibia. No content has been attached to the Domain Name.
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. It is also the owner of a trade mark application for PETROBRAS in Namibia where the Respondent appears to be based. 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 dating back to 1974. Based on its extensive use of the mark the Complainant has developed the goodwill and brand recognition of its mark. The Domain Name incorporates the Complainant’s PETROBRAS trade mark, followed by the country name Nigeria, one of the places where the Complainant develops its activities in the fields of oil and gas, thus generating the appearance that the Domain Name is owned by the Complainant. As such the Domain Name is identical or 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 make a bona fide offering of goods or services, but rather 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 is free riding on the Complainant's goodwill and trade mark and as such this 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 in 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.
The Complainant sent a warning letter to the Respondent, but did not receive a response.
With regard to the use of “Nigeria” in the Domain Name, the Complainant develops activities in the oil and gas field in the territory of Nigeria and the use of it indicates that the Respondent has previously known the PETROBRAS trade mark and has attempted to mislead Internet users.
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 in South Africa and Brazil, with registrations in Brazil dating back to 1974. The Domain Name is confusingly similar to the Complainant’s trade mark, as it consists of the Complainant’s PETROBRAS registered trademark and the country name “Nigeria”, a place where the Complainant says that it develops its activities in the fields of oil and gas, which has not been disputed by the Respondent. The distinctive part of the Domain Name is the PETROBRAS mark. The addition of the country name 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 says it does business and which is known for the strength of its oil industry. The “.com” suffix is typically ignored for the purposes of this test under the policy. 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 of the Respondent
The Respondent has not filed a Response. The Respondent has no consent from the Complainant to use the Domain Name or the PETROBRAS trade mark, and has not used the Domain Name for any bona fide offering of goods and services or indeed for any purpose including any non-commercial or fair use. The Respondent 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 Policy sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith. This case does not appear to fall squarely within these criteria, but they are non-exclusive.
This Panel has no doubt that any website connected to the Domain Name, given the Complainant’s global reputation, would drive traffic to third party goods and services in a confusing manner and could be used for commercial gain and be disruptive to the Complainant's business. Although no evidence is put forward of such use having yet taken place, the Panel can understand why the Complainant views the Domain Name as a threat which could be used to cause damage to the Complainant’s business. The Respondent has not provided any evidence of any reason why it should be allowed to hold such a Domain Name, given the Complainant's rights. The Panel agrees with the Complainant that the passive use of a well-known trademark can amount to bad faith use where there is no evidence of actual or intended good faith use and, that it does in this case.
Furthermore, there is also evidence that the Respondent has used the Domain Name to spread by email false job offers to work for the Complainant. 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.
Accordingly the Panel finds that the Domain Name has been registered and is being used in bad faith and paragraph 4(a)(iii) of the Policy has been satisfied.
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, <petrobrasnigeria.com> be transferred to the Complainant.
Date: January 15, 2014