WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Petroleo Brasileiro S.A. Petrobrás v. Whois Agent (328841971), Whois Privacy Protection Service, Inc. / Fernanda Viseu, Sindicato dos Petroleiros do Norte Fluminense

Case No. D2020-3260

1. The Parties

Complainant is Petroleo Brasileiro S.A. Petrobrás, Brazil, represented by Vaz e Dias Advogados e Associados, Brazil.

Respondent is Whois Agent (328841971), Whois Privacy Protection Service, Inc., Panama, / Fernanda Viseu, Sindicato dos Petroleiros do Norte Fluminense, Brazil.

2. The Domain Name and Registrar

The disputed domain name <epetrobras.com> is registered with eNom, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2020. On December 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 2020, 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 6, 2020, 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 7, 2020.

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 Respondent of the Complaint, and the proceedings commenced on December 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2020. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 31, 2020.

The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on January 11, 2021. 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 mixed-capital multinational company founded in 1953, which acts in the areas of energy, exploration, production, refining, marketing and transportation of oil, natural gas and derivatives.

Complainant is a corporation of extreme renown and recognition in its areas of operation. Petróleo Brasileiro S.A., better known by the acronym “Petrobras”, is one of the biggest companies in Brazil and, currently, one of the world leaders in the development of advanced technology for oil exploration in deep and ultra-deep waters.

Complainant owns more than 40 registrations for trademark PETROBRAS and its variations before the Brazilian Trademark Office since the 1950s (in addition to several other registrations for different marks), among which Brazilian trademark registration No. 002709007 for PETROBRAS registered on July 12, 1962. One of Complainant’s trademark registration for the word “PETROBRÁS” obtained the status of “high reputation” in 2012.

Complainant also owns several domain names registered in Brazil and abroad, for example <petrobras.com.br> - registered on June 14, 1996; and <petrobras.com> - registered on March 5, 1996.

In August 2020, Complainant filed a Complaint before the Brazilian Association for Intellectual Property’s Domain Name Dispute Resolution Center (“ABPI CASD-ND”) against the same Respondent claiming the transfer of the domain <epetrobras.com.br>, of its ownership. The dispute before ABPI CASD-ND has already been decided for the benefit of Complainant, so the domain name <epetrobras.com.br> was transferred to Petróleo Brasileiro S.A., as per decision issued on October 9, 2020.

In that opportunity, Respondent made clear it was also the owner of the current disputed domain name <epetrobras.com>, reason why Complaint decided to file the present Complaint too.

The disputed domain name was registered on August 4, 2020. The disputed domain name resolves to a website providing information about a political campaign against the privatization of Complainant.

5. Parties’ Contentions

A. Complainant

Complainant claims that the disputed domain name is confusingly similar to its trademark, since it incorporates the sign PETROBRAS in its entirety, with a mere addition of the letter “e”, which means “is”, in English.

Complainant notes, thus, that the addition of “e” calls further attention to its trademark PETROBRAS, establishing that whoever owns this domain name has any commercial relationship or is affiliated to Complainant’s Company – which is not true.

According to Complainant, this fact would raise the chances of confusion and wrongful association with Complainant’s trademark and business, fulfilling the requirements of paragraph 4(a)(i) of the Policy and paragraphs 3(b)(viii) and 3(b)(ix)(1) of the Rules.

Furthermore, Complainant affirms that Respondent does not have any rights or legitimate interests in respect of the trademark PETROBRAS, nor any permission to register the trademark as a domain name.

In this regard, Complainant informs that (i) Respondent does not own any registered trademarks or trade names corresponding to the disputed domain name; (ii) no license or authorization of any kind has been given by Complainant to Respondent to use or to register the trademark PETROBRAS in any form; (iii) Respondent has no prior rights or legitimate interest in the domain name, given that Complainant’s registrations for PETROBRAS precede in decades the registration of the disputed domain name; and that (iv) Respondent is currently not using the disputed domain name in connection with a bona fide offering of goods or services.

Therefore, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name, also fulfilling paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules.

Moreover, Complainant claims that Respondent registered and is using the disputed domain name in bad faith, since it would be seeking to intentionally attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites.

At last, also in this regard, Complainant affirms that it is impossible that Respondent was not aware of Complainant’s existence and rights as to the trademark PETROBRAS when of the disputed domain name was registered, especially given its high reputation status and the content of the website, which includes pictures of the company.

This way, the prevision of Policy, paragraphs 4(a)(iii), 4(b) and Rules, paragraph 3(b)(ix)(3) would also be fulfilled.

In view of the above, Complainant requests the disputed domain name <epetrobras.com> to be transferred to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

To succeed, in a UDRP complaint, complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following:

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The burden of proving these elements is upon Complainant.

Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the Complaint, the Panel’s decision shall be based upon the Complaint.

A. Identical or Confusingly Similar

Complainant has duly proven the first element under paragraph 4(a) of the Policy is met by showing evidence that it is the owner of several trademark and domain name registrations for the trademark PETROBRAS in Brazil and that such trademark is contained in its entirety in the disputed domain name.

The Panel finds that the disputed domain name is almost identical and, thus, confusingly similar to Complainant’s trademark PETROBRAS, with the sole addition of the letter “e” in the beginning, which is not sufficient to prevent a finding of confusing similarity between the disputed domain name and Complainant’s trademark.

Therefore, the Panel considers the requirements of the first element of paragraph 4(a) of the Policy to be satisfied.

B. Rights or Legitimate Interests

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) as follows: “[w]hile 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.”

In this case, noting the facts and contentions listed above, the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not replied to Complainant’s contentions, that burden has not been discharged, and the Panel has considered Complainant’s prima facie case to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name.

The issue in this case is whether Respondent is entitled to a free speech defense, as the disputed domain name is used for a political campaign launched by Respondent against the privatization of Complainant. In this regard, the WIPO Overview 3.0, section 2.5 provides the following:

“2.5 What are some core factors UDRP panels look at in assessing fair use?

Fundamentally, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry.

2.5.1 The nature of the domain name

Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation.

Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.

As described in more detail below and in sections 2.6 through section 2.8, UDRP panels have articulated a broad continuum of factors useful in assessing possible implied sponsorship or endorsement.

At one end, certain geographic terms (e.g., <trademark-usa.com>, or <trademark.nyc>), or terms with an “inherent Internet connotation” (e.g., <e-trademark.com>, <buy-trademark.com>, or <trademark.online>) are seen as tending to suggest sponsorship or endorsement by the trademark owner.”

The nature of the disputed domain name in this case is exactly as the example of the domain name <e-trademark.com> mentioned in the WIPO Overview 3.0. Furthermore, Respondent’s website is suitable for creating the impression that the campaign was created by Complainant itself, since there is no clear indication neither of the purpose nor of the true authorship of the initiative. This means that there is probably an intention to create confusion as to its origin, and possibly an intention to attract people who were looking for Complainant’s official website.

A domain name chosen for criticism purposes should not create an impression of association or endorsement by the criticized entity, as decided in the case Wal-Mart Stores, Inc. v. Domains by Proxy, LLC / UFCW International Union, WIPO Case No. D2013-1304 (regarding the domain names <reallywalmart.com>, <reallywalmart.info>, and <reallywalmart.net>):

“The Panel nonetheless agrees that Respondent registered and is using the disputed domain names in bad faith due to circumstances beyond those enumerated in paragraph 4(b) of the Policy. These include disruption of business and the use of confusingly similar domain names which do not, in the Panel’s view as explained above, qualify as a fair use.

In registering the disputed domain names here, Respondent used the term ‘really’ to directly and in a misleading manner signal sponsorship or affiliation with Complainant. Panels in other proceedings involving noncommercial protest sites have found that the use of a misleading domain name that did not signal a lack of sponsorship or affiliation with the mark holder can amount to bad faith. E.g., 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461 and Banque Cantonale de Genève, supra. Those proceedings involved mostly neutral domain names, none of which were so strong in suggesting a relation with the right holder as the disputed domain names in this proceeding. Without embracing so broad a rule as that used in those other proceedings, the Panel is comfortable in ruling that in the specific circumstances of this case, the use of the term ‘really’ constitutes bad faith for purposes of the Policy. The Panel also finds that the use of language, trademarks, and a style on the website to which the disputed domain name routes that imitates Complainant’s website is also misleading; it compounds the confusion, while the language of the website does not clearly and immediately dispel that confusion.”

Thus, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists several circumstances that, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances, however, are not exhaustive, but suits as examples to create some parameters to the panelists, notwithstanding that bad faith is recognized from other circumstances.

The Panel notes the nature of the disputed domain name, which is almost identical to Complainant’s trademark PETROBRAS and domain name <petrobras.com>. In this case, Respondent uses Complainant’s trademark and pictures of the company’s headquarters in Brazil to decorate the page hosted by <epetrobras.com> in a way that it looks like being a Complainant’s official website, what can be seen as a clear intention to mislead Internet users to think that Complainant supports the political cause in question.

The Panel also finds that the use of Portuguese language, Complainant’s trademarks and the style of the website to which the disputed name routes, shows an intention to resemble a Complainant’s official website.

These circumstances compound the confusion and mislead internet users to believe that Respondent’s website is in some way associated to Complainant.

In addition, the fact that Respondent did not file any response to the Complaint affirms the Panel’s conclusion that Respondent acted in bad faith under the Policy, without any evidence showing otherwise.

Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy. As such, the Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

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 <epetrobras.com> be transferred to Complainant.

Gabriel F. Leonardos
Sole Panelist
Date: January 28, 2021