WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Petroleo Brasileiro S.A - Petrobras v. li wei
Case No. D2015-1292
1. The Parties
The Complainant is Petroleo Brasileiro S.A of Rio de Janeiro, Brazil, represented by Ouro Preto Advogados, Brazil.
The Respondent is li wei of Rizhao, Shandong, China.
2. The Domain Name and Registrar
The disputed domain name <petrobras.wang> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2015. On July 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 28, 2015, 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.
On July 30, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Respondent sent a couple of email communications indicating that he did not understand English and he requested the Complainant to send all materials in Chinese. On July 31, 2015, the Complainant confirmed its request that English be the language of the proceeding.
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 in both Chinese and English, and the proceeding commenced on August 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2015. On August 27, 2015, the Center informed the parties that it would proceed with panel appointment.
The Center appointed Douglas Clark as the sole panelist in this matter on September 4, 2015. 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, which is generally known by the name Petrobras, is a multinational Brazilian energy company. It is the owner of registrations the trade mark PETROBRAS in Brazil and a number of other countries around the world. According to the Complaint it does not have a registration for PETROBRAS in China. The Complainant is also the registrant of the domain names <petrobras.com>; <petrobras.net>; and <petrobras.org>.
The Respondent is an individual resident in China.
The disputed domain name was registered on December 13, 2014.
5. Parties’ Contentions
The Complainant’s contentions are set out below.
The Complainant submits that the disputed domain name <petrobas.wang> consists of the trade mark PETROBAS and the generic Top-Level Domains (gTLD) “.wang”. The disputed domain name is, therefore, other than the gTLD, identical to the Complainant’s trademark.
The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name. He is not commonly known by the name. He has not received any consent or license from the Complainant to use the Complainant’s trademark.
The Complainant submits that the disputed domain name was registered and is being used in bad faith with the intention of confusing Internet users as to some link between the disputed domain name and the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Language of the Proceeding
The language of the Registration Agreement is Chinese. Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The Complainant requested the language of the proceeding to be English on the grounds that the Complainant has no knowledge of Chinese and it will need to incur substantial expense in translation. The Complainant also submitted that it had sent a warning letter in English to the Respondent and this showed the Respondent understood English. No response was received to the warning letter.
The Respondent responded that he did not understand English and requested that correspondence be in Chinese.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint.”
The Panel does not consider the fact that a warning letter had been sent in English to be evidence that the Respondent understood English, particularly when no reply was received.
Nevertheless, as set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delay in this matter. The Respondent has been informed of the nature of this proceeding by the Center in Chinese and could have provided even a short defence in Chinese that may have explained its position. “Petrobas” has no meaning in Chinese and other than the Complainant the Panel is not aware of any company or individual that uses this name. The registration of the disputed domain name appears to be a clear case of cybersquatting. The availability of new gTLDs is creating many more opportunities for cybersquatting which will stretch the resources of many brand owners. The Panel must take this into account when deciding on the language of the proceeding.
These factors lead the Panel to determine to follow the Center’s preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English.
The Panel finds that this is a clear case of domain name hijacking that the UDRP was designed to stop.
A. Identical or Confusingly Similar
The disputed domain name is made up of the Complainant’s registered trade mark PETROBAS and the gTLD “.wang”. Other than the gTLD, it is identical to the Complainant’s registered trade mark and to the Complainant’s domain names <petrobras.com>; <petrobras.net>; and <petrobras.org>.
Although it appears that the Complainant does not have a trade mark registration for PETROBAS in China, this does not preclude a finding of identity or confusing similarity. As set out in paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)
“If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration (or first use) [see also paragraph 1.4 below], and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. However, such factors may bear on a panel’s determination whether the respondent has registered and used the domain name in bad faith under the third element of the UDRP.”
The first element of the Policy is made out.
B. Rights or Legitimate Interests
The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not responded to the Complaint to assert any rights or legitimate interests in the disputed domain name. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.
The Panel finds that the second element of the Policy is made out.
C. Registered and Used in Bad Faith
The Panel has no hesitation in finding that the disputed domain name was registered in bad faith and is being used in bad faith.
Paragraph 4(b)(iv) of the Policy provides that a registrant has registered and is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
While the disputed domain name has not yet been used, there is no possible use that the disputed domain name could be used for other than to create confusion that a website under the disputed domain name is in some way related to the Complainant. (See paragraph 3.2 of the WIPO Overview 2.0).
The Panel finds that the third element of the Policy is made out.
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 <petrobas.wang> be transferred to the Complainant.
Date: September 7, 2015