WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Petroleo Brasileiro S.A. - Petrobras v. H Bouma, Stichting Petrobras Compensation Foundation
Case No. D2016-0816
1. The Parties
The Complainant is Petroleo Brasileiro S.A. – Petrobras of Rio de Janeiro, Brazil, represented by Ouro Preto Advogados, Brazil.
The Respondent is H Bouma, Stichting Petrobras Compensation Foundation of Eindhoven, Netherlands.
2. The Domain Name and Registrar
The disputed domain name <petrobrascompensation.com> is registered with Key-Systems GmbH dba domaindiscount24.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 25, 2016. On April 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 26, 2016, 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 and informing that the language used in the registration agreement was Dutch. On April 27, 2016 the Center sent an email to the Parties inviting them to submit comments regarding the language of proceedings. On April 28, 2016, the Complainant submitted a requested that English be the language of proceedings. The Respondent did not submit any comments.
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 and 4, the Center formally notified the Respondent of the Complaint in English and Dutch, and the proceedings commenced on May 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 27, 2016.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on June 10, 2016. 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 the registered owner of a large number of trademarks in a number of countries as well as in Brazil where it is based. Inter alia it owns the registered Community Trademark PETROBRAS No. 00894105637 registered on March 10, 2010 and the Brazilian trademark PETROBRAS registered on July 27, 1974.
The disputed domain name was registered on February 10, 2016.
5. Parties' Contentions
The Complainant is a Brazilian petrol company with a presence in 28 countries. It is the owner of a considerable number of registered trademarks for the term PETROBRAS and also owns domain names incorporating that term such as <petrobras.com>. The Complainant has invested widely in a number of sectors by reference to its PETROBRAS trademark and also invested heavily in publicity and promotion around the mark concerned. According to the Complainant it has acquired an extensive reputation among the general public in Brazil and worldwide due to its wide use of the trademark PETROBRAS.
According to the Complainant the disputed domain name incorporates the mark PETROBRAS in its entirety. The Complainant cites authority for the proposition that it is sufficient for a domain name to incorporate a trade mark in its entirety to justify a finding of confusing similarity.
Further, the Complainant contends that due to the extent of its reputation, regardless of the nature of the goods or services referred to, consumers will perceive an association with the Complainant. The Complainant also asserts that the Respondent has never used the expression "Petrobras" in association with any goods or services, and to the knowledge of the Complainant owns no trade mark rights or registrations in relation to that term. The Complainant asserts that it has never authorised the Respondent to use the mark PETROBRAS in any form.
Further, according to the Complainant no legitimate or fair use is being made of the disputed domain name, the owner of the disputed domain name has not been known by the disputed domain name, and no bona fide offering of goods or services occurs at the website under the disputed domain name, which in fact is blank.
In respect of bad faith registration and use, the Complainant asserts that the web page to which the disputed domain name resolves has been blank since registration. This amounts to a case of passive holding of a domain name, which previous UDRP Panel decisions have recognised as an instance of bad faith. According to the Complainant it is well established that although the principle of first come, first serve applies to domain name registrations, the first registrant must come in good faith. In this case as the Respondent has no connection with the Complainant and the latter has a wide reputation in its PETROBRAS trademark, the absence of a legitimate interest amounts to an opportunistic bad faith registration.
Finally, the Complainant received no reply to two cease and desist notices sent to the Respondent.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Language of Proceedings
The language of the registration agreement in this matter is Dutch. The Complainant has requested that English be the language of proceedings, which the Respondent has not opposed. The Respondent has not submitted a response and has not answered the cease and desist letters from the Complainant. In the circumstances the Panel determines that the language of these proceedings is English and the Panel decision is therefore rendered in this language.
B. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant's registered trademark PETROBRAS. However, it incorporates that term in its entirety and as the first and most prominent feature of the disputed domain name. The additional term "compensation" is an ordinary term of the English language and the combination of the two terms does nothing to dispel the confusing similarity between the disputed domain name and the Complainant. The Complainant is active in many fields besides oil and gas and in any case the term "compensation" is not one such as to dispel any possibility of confusion with the Complainant's trademark.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant's trademark PETROBRAS.
C. Rights or Legitimate Interests
The Respondent has not made any use of the disputed domain name, and there is no evidence before the Panel that the Respondent is in any way engaged with business or activities the disputed domain name could suggest or refer to. The Respondent has not filed any Response to the Complaint. Passive holding of a domain name that incorporates a trademark to which the registrant has no connection does not vest any rights or legitimate interests.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
The Complainant is a very large multinational oil and gas company with activities in many countries. The trademark PETROBRAS is distinctive and has no ordinary or generic meaning. The combination of terms that the Respondent sought and selected and then registered indicates that the Respondent was fully aware of the Complainant's goodwill vested in the trademark PETROBRAS before the date of registration of the disputed domain name.
The Respondent has undertaken no activities at any website associated with the disputed domain name. The website to which the disputed domain name resolves has remained blank, and thus there is no indication of any good faith reasons for the registration of the disputed domain name. Mere holding of a disputed domain name incorporating a trademark that has a widespread reputation and is distinctive tends to indicate bad faith on the part of the registrant.
Therefore the Panel holds that the disputed domain name was registered and 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 <petrobrascompensation.com> be transferred to the Complainant.
William A. Van Caenegem
June 23, 2016