WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Petroleo Brasileiro S.A - Petrobras v. Antonio Jose Martins
Case No. D2014-1401
1. The Parties
The Complainant is Petroleo Brasileiro S.A - Petrobras of Rio de Janeiro, Brazil, represented by Ouro Preto Santos, Brazil.
The Respondent is Antonio Jose Martins of Rio de Janeiro, Brazil.
2. The Domain Name and Registrar
The disputed domain name <apetrobrasquequeremos.com> is registered with Wild West Domains, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 15, 2014. On August 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 18, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and disclosing registrant and contact information for the disputed domain name.
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 August 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 15, 2014.
On September 12, 2014, the Respondent informed the Center that it "requested the definitive cancellation of the disputed domain name to the WordPress provider".
On September 15, 2014, the Center sent a communication to the parties informing them about the possibility of suspension of the proceedings.
On September 19, 2014, the Complainant sent a communication to the Center requesting suspension of the present case.
On September 22, 2014, the Center notified the suspension of proceedings to the parties until October22, 2014 inclusive.
On October 22, 2014, the Complainant requested the Center to re-institute the proceedings since the Respondent did not contact the Complainant during the suspension period. The Center re-instituted the proceedings on October 23, 2014.
Accordingly, the Center notified the Respondent's default on October 24, 2014.
The Center appointed Erica Aoki as the sole panelist in this matter on October 29, 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.
The language of the administrative proceeding is English.
4. Factual Background
The Complainant is a Brazilian energy company with presence in 28 countries around the world and used to be the world's 7th biggest oil company with shares traded at stock exchange market.
The Complainant is owner of the trademark PETROBRAS and its variations are registered/filed in a wide range of international classes before the Brazilian Patent and Trademark Office since July 25, 1974, and in many other countries around the world.
The Complainant also registered and has been using several domain names containing the trademark PETROBRAS.
The Respondent registered the disputed domain name <apetrobrasquequeremos.com> on February 20, 2012.
5. Parties' Contentions
The Complainant is the owner of several trademark registrations for PETROBRAS in jurisdictions around the world.
Also, Complainant owns the domain names <petrobras.com.br> and <petrobras.com>, among other domain names containing the term "petrobras".
The Complainant contends that the disputed domain name is confusingly similar to its trademark. The disputed domain name includes PETROBRAS trademark and the phrase: - a PETROBRAS que queremos – meaning, the PETROBRAS that we want.
Furthermore, the Complainant contends that the Respondent has no rights or legitimate interests in relation to the disputed domain name. The Respondent has no trademark registered that consists of or contains the word "petrobras". The Complainant has not granted the Respondent any rights to use the PETROBRAS trademark. The Respondent's activities do not relate to the products commercialized under the PETROBRAS trademark and the Respondent has never been known to be related or associated to this trademark.
The Complainant contends that bad faith can be deduced by the fact that the by accessing the website of the disputed domain name there is no content related to the disputed domain name and it is clear that the trademark PETROBRAS is an important component of the disputed domain name violating the Complainant'srights.
The Respondent has first sent a communication on September 12, 2014, informing his intention to cancel the registration of the disputed domain name, but has failed to do so. The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In the Panel's view, the Complainant has satisfied the requirements specified under paragraph 4(a) of the Policy:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in respect of which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Based on the facts presented by the Complainant, the Panel finds that the disputed domain name is confusingly similar to a mark in which the Complainant has rights, as required under paragraph 4(a)(i) of the Policy. The Panel finds that the disputed domain name is confusingly similar to the Complainant's registered trademark, as the disputed domain name includes the Complainant's PETROBRAS mark in full with the addition of the nondistinctive prefix "a" and suffixes "que queremos".
B. Rights or Legitimate Interests
The Panel finds the following on the record in this Policy proceeding:
- The Respondent is in default and thus has made no affirmative attempt to show any rights or legitimate interests in the disputed domain name;
- The Policy indicates that a registrant may have a right or legitimate interest in a domain name if it was making use of the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute;
- The Respondent's knowledge of the Complainant's right is presumed since PETROBRAS is a famous trademark;
- The Respondent is in no way connected with the Complainant and has no authorization to use any of the Complainant's trademarks; and
- There is no evidence that the Respondent is or was commonly known by the disputed domain name as an individual, business or other organization.
Thus, in the Panel's view, the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence of the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
Further, the Panel notes that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use activity.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith.
In the Panel's view, there is no doubt that the Respondent, who is located in Brazil, was aware of the Complainant's rights in the PETROBRAS mark at the time the disputed domain name was registered, indicating that such registration was made in bad faith.
Considering the fame of the Complainant's trademark in Brazil and the lack of evidence of any actual or contemplated good faith use of the disputed domain name, the Panel finds that the Respondent's passive holding of the disputed domain name amounts to bad faith use.
Accordingly, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, under paragraph 4(a)(iii) of the Policy.
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 <apetrobrasquequeremos.com> be transferred to the Complainant, as requested in the Complaint.
Date: November 12, 2014