WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Petrobras Netherlands B.V., Petróleo Brasileiro S.A. - PETROBRAS v. Privacy protection service – whoisproxy.ru / Gandolyan Vladislav
Case No. D2017-2120
1. The Parties
The Complainants are Petrobras Netherlands B.V. of Rotterdam, The Netherlands and Petróleo Brasileiro S.A. - PETROBRAS of Rio de Janeiro, Brazil, represented by Houthoff Buruma Netherlands.
The Respondent is Privacy protection service - whoisproxy.ru of Moscow, Russian Federation / Gandolyan Vladislav of Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <petrobrasbv.com> is registered with Regional Network Information Center, JSC dba RU-CENTER (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2017. On October 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 2, 2017, 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 the Complainants on November 3, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on November 8, 2017.
The Complaint and the amended Complaint were submitted in the English language. The language of the Registration Agreement for the disputed domain name is Russian. On November 3, 2017 the Center sent an email communication to the Parties in both English and Russian regarding the language of the proceeding. On November 6, 2017, the Complainants requested that English be the language of the proceeding as submitted in the Complaint. The Respondent did not reply to the Center’s communication regarding the language of the proceeding or the Complainants’ submission.
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 and 4, the Center formally notified the Respondent of the Complaint in both the Russian and English languages, and the proceedings commenced on November 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default in both the Russian and English languages on December 1, 2017.
The Center appointed Assen Alexiev as the sole panelist in this matter on January 12, 2018. 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.
In respect of the language of the proceedings, the Panel notes the following: according to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, 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 Complainants have submitted their Complaint in the English language, and request the proceeding to be held in English with the argument that it would be unfair and unwarranted to delay the proceedings in order to translate the Complaint. The Complainants also point out that the Respondent has a good command of the English language, evident from the fact that the Respondent has sent multiple sophisticated emails in English from an email linked to the disputed domain name, containing as attachments two agreements that are very well drafted in the English language. The Center has sent all its messages to the Respondent in both English and Russian, and has invited the Respondent to express its views on the language of the proceeding. The Respondent has refrained from doing so, and has thus not objected to the Complainants’ request the proceedings to be held in English.
In these circumstances, it appears to the Panel that using the English language in this proceeding will be fair and efficient and will not put either of the parties at a disadvantage. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English. At the same time, the Panel will take into account all evidence in the case file available in English or Russian languages.
4. Factual Background
The Complainant Petróleo Brasileiro S.A. – PETROBRAS (the “First Complainant”), is a Brazilian multinational group that is active on a global scale in the area of exploitation and production, refining, marketing, transport and distribution of oil products, natural gas, electricity and biofuel. The Complainant Petrobras Netherlands B.V. (the “Second Complainant”) is a subsidiary of the First Complainant.
The First Complainant is the owner of the following trademark registrations of the sign PETROBRAS (the “PETROBRAS trademark”):
- the European Union trade mark PETROBRAS with registration No. 003068211, registered on May 12, 2004, for goods and services in International Classes 1, 4, 35, 39 and 42;
- the Benelux figurative trademark BR PETROBRAS with registration No. 0688072, registered on June 20, 2000, for goods and services in International Classes 1, 4, 35, 37, 39, 40 and 42; and
- the European Union trademark BR PETROBRAS with registration No. 012278743, registered on April 1, 2014, under number for goods and/or services in classes 1, 4, 35, 37, 39, 40 and 42.
The disputed domain name was registered on August 11, 2017 and it appears that it is being used as a fraudulent email scheme
5. Parties’ Contentions
The Complainants submit that the Second Complainant is a Dutch subsidiary of the First Complainant, and has permission from the latter to use the PETROBRAS trademarks for its business and in its company name. On this basis, the Complainants have common legal interests in the PETROBRAS trademark. These interests are affected by the Respondent’s conduct because the Respondent has attempted on several occasions to falsely represent itself to third parties as being the Second Complainant. The Respondent’s alleged fraudulent conduct includes trademark and tradename infringement and corporate identity theft, which affects both Complainants.
The Complainants submit that the disputed domain name is confusingly similar to the PETROBRAS trademark, as it incorporates their trademark in its entirety. The addition of “bv” does not remove that confusion because most people would not attach any meaning to these letters and to them PETROBRAS is the dominant element in the combination “petrobrasbv”. People with an understanding of the Dutch language would understand the letters “bv”as being an indication of the legal form of the company, i.e., besloten vennootschap - a private company with limited liability. Therefore, such people would understand the combination “petrobrasbv” as referring to a Dutch subsidiary of the First Complainant.
The Complainants contend that the Respondent has no rights to or legitimate interests in the disputed domain name, as it has no trade name rights of its own to the disputed domain name, and has not requested and received a permission from the Complainants to use the PETROBRAS trademark. The use of the disputed domain name for illegal activities such as fraud does not establish rights to or legitimate interests in a domain name. The Respondent uses the disputed domain name for fraudulent activities, such as contacting the Complainants’ clients and third parties to place orders with the Respondent on the supposition that the Respondent is the Second Complainant.
The disputed domain name has been registered and is being used by the Respondent in bad faith under paragraph 4(b)(iv) of the Policy. The Respondent is representing itself as if it were the Second Complainant, and by causing confusion, the Respondent is attempting to realize a commercial gain by free-riding on the reputation of the Complainants. This use of the disputed domain name negatively affects the name and reputation of the Complainants.
The Complainants request that the disputed domain name be transferred to the Second Complainant.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainants must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In this proceeding, the Respondent has not used the opportunity provided to it under the Rules and has not submitted a Response addressing the contentions of the Complainants and the evidence submitted by them.
A. Identical or Confusingly Similar
The Complainants have provided evidence and have thus established their rights in the PETROBRAS trademark. The First Complainant is the owner of this trademark, while the Second Complainant has been authorized by the First Complainant to use the trademark.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.
The relevant part of the disputed domain name is therefore the section “petrobrasbv”, which contains the elements “petrobras” and “bv”. The “petrobras” element is identical to the PETROBRAS trademark. The element “bv” is identical to the Dutch language abbreviation for a private limited company, and the Second Complainant is registered as a company in the Netherlands. In the Panel’s view, the inclusion of this combination in the disputed domain name may lead Internet users, especially such based in the Netherlands, to believe that the disputed domain name represents an official online location of a Dutch company of the Petrobras group.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the PETROBRAS trademark in which the Complainants have rights.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainants have contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent has not been authorized by them to use the PETROBRAS trademark. Rather, the Respondent has used the disputed domain name to falsely claim to be the Second Complainant and thus attract business from the Complainants’ clients and from third parties. Thus, the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not alleged that it is has rights and legitimate interests in the disputed domain name and has not disputed the Complainants’ allegations in this proceeding.
The disputed domain name incorporates the PETROBRAS trademark entirely with the addition of the element “bv”, which represent the Dutch language acronym for a private limited company. This makes it likely that Internet users may regard the disputed domain name and email addresses linked to it as being official addresses of the Second Complainant. This likelihood of confusion is further increased by the Respondent’s use of the PETROBRAS trademark and logo on draft agreements sent to third parties.
On the basis of the above, the Panel is satisfied that the Respondent, being well aware of the Complainants, is likely to have registered and used the disputed domain name in an attempt to exploit the noteriety of the PETROBRAS trademark to mislead Internet users that the Respondent is the Second Complainant and to receive profit from business with them without disclosing the lack of any relationship with or endorsement by the Complainants. In the Panel’s view, such conduct does not appear to be legitimate and cannot be regarded as giving rise to rights and legitimate interests of the Respondent.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
As discussed above, the disputed domain name fully incorporates the PETROBRAS trademark and is confusingly similar to it. The Respondent does not deny that the disputed domain name is used for sending emails that contain it and falsely claim that the Respondent is the Second Complainant.
On the basis of the above, and in view of the considerations of the Panel set out in the section related to rights and legitimate interests, the Panel finds that the Respondent is likely to have registered the disputed domain name with knowledge of the Complainants and targeting the PETROBRAS trademark in an attempt to attract business by confusing Internet users that they are dealing with the Second Complainant. On the basis of the above, the Panel accepts that this conduct of the Respondent amounts to bad faith registration of the disputed domain name.
The Respondent has not denied that the disputed domain name is being used for the distribution to third parties of fraudulent emails that offer services that are similar to the services offered by the Complainants and describe the Respondent as being the Second Complainant. Such use may confuse Internet users that they are receive genuine business offers from the Second Complainant. In view of this, the Panel accepts that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the disputed domain name or other online location, by creating a likelihood of confusion with the Complainants’ PETROBRAS trademark as to the source, sponsorship, affiliation, or endorsement by the Complainants of the Respondent and of the business offered by the Respondent to these Internet users. Therefore, the Panel finds that the disputed domain name has been used in bad faith.
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 <petrobrasbv.com> be transferred to the Second Complainant, Petrobras Netherlands BV.
Date: January 30, 2018