WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Petróleo Brasileiro S.A. - Petrobras v. Mohammad Ali Mokhtari

Case No. DIR2013-0004

1. The Parties

The Complainant is Petróleo Brasileiro S.A. - Petrobras of Rio de Janeiro, Brazil, represented by Siqueira Castro Advogados.

The Respondent is Mohammad Ali Mokhtari of Tehran, Islamic Republic of Iran.

2. The Domain Name and Registrar

The disputed domain name <petrobras.ir> is registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2013. On August 5, 2013, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On August 6, 2013, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. A hard copy of the Complaint was received by the Center on August 19, 2013.

The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir 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 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2013.

On September 14, 2013, the Respondent sent an email communication to the Center and requested an extension to the due date for Response. On September 16, 2013, the Center reminded the Parties that the Response due date was September 11, 2013 and, therefore, the Respondent’s communication would be transmitted to the Panel, once appointed, for its consideration and further procedural steps, if any.

The Center appointed Piotr Nowaczyk as the sole panelist in this matter on September 20, 2013. 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 a Brazilian energy company with presence in 28 countries around the world, ranked as the 7th biggest oil company in the world, with shares traded at stock exchanges, by the Petroleum Intelligence Weekly (PIW).

The Complainant is the titleholder of the trademark PETROBRAS in a wide range of international classes before the Brazilian Patent and Trademark Office, e.g.:

- Registration No. 006005098 for PETROBRAS Class No. 37/10 registered on July 25, 1974, valid until July 25, 2014;

- Registration No. 006005101 for PETROBRAS Class No. 38/20.40 registered on July 25, 1974, valid until July 25, 2014;

- Registration No. 825348951 for PETROBRAS Class No. 01 registered on May 8, 2007, valid until May 8, 2017;

- Registration No. 825348960 for PETROBRAS Class No. 04 registered on May 8, 2007, valid until May 8, 2017;

- Registration No. 826272681 for PETROBRAS Class No. 28 registered on November 6, 2007, valid until November 6, 2017;

- Registration No. 825348978 for PETROBRAS Class No. 35 registered on May 8, 2007, valid until May 8, 2017;

- Registration No. 825347807 for PETROBRAS Class No. 37 registered on May 8, 2007, valid until May 8, 2017;

- Registration No. 825348986 for PETROBRAS Class No. 42 registered on May 8, 2007, valid until May 8, 2017;

- Registration No. 825347785 for PETROBRAS Class No. 43 registered on May 8, 2007, valid until May 8, 2017.

In Iran, the Complainant is the holder of following trademark registrations and application for the marks PETROBRAS and BR PETROBRAS:

- Registration No. 111884 in classes 01, 04 and 39 made on June 1, 2004, valid until November 24, 2024;

- Registration No. 190081879 in classes 35, 37, 40 and 42 made on November 14, 2011, trademark application published on September 22, 2012;

- Registration No. 88188 in classes 01, 04, 35 and 39 made on November 11, 1998, valid until November 11, 2018.

The Complainant registered and has been using several domain names containing the trademark PETROBRAS, inter alia:

- <petrobras.com> registered on March 5, 1996;

- <petrobras.org> registered on July 1, 2002;

- <petrobras.net> registered on January 16, 2000;

- <petrobras.com.br> registered on June 14, 1996;

- <petrobrasbiocombustiveis.com.br> registered on March 31, 2008;

- <petrobrasbioenergia.com.br> registered on March 31, 2008;

- <petrobrasdistribuidora.net> registered on October 27, 2009.

The Complainant’s PETROBRAS trademarks are widespread among the general public and are very familiar to consumers in Brazil and in other countries. In view of that, the Complainant has conquered a remarkable reputation and image before the general public in Brazil, worldwide and, in this case, especially in Iran. As a consequence, based on its extensive use of the trademark PETROBRAS, the Complainant has developed a substantial goodwill and brand recognition on its mark.

The disputed domain name was registered on July 26, 2012.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name <petrobras.ir> bears exactly the same word “petrobras”, registered by the Complainant as a trademark. The Complainant states that the disputed domain name illegally reproduces the Complainant’s trademark PETROBRAS and, therefore, is both identical and confusingly similar to the Complainant’s trademark, applying to the paragraph 4(a)(i) of the Policy and to paragraphs 3(b)(vii) and (b)(viii)(1) of the Rules.

Second, the Complainant raised that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It was underlined that the Complainant is nowadays one of the biggest and most important oil companies in the world and has created an identity with the word “petrobras” generating the association of such word to the Complainant regardless of the products and services offered to the consumers. On the other hand, the Respondent does not run any business under the name “petrobras” and has never used such expression to identify its products or services. In addition, as far as the Complainant is aware, the Respondent does not own any trademark application or registration for the word “petrobras”. The Complainant claimed that it has never authorized the use of its trademark PETROBRAS by the Respondent, even to be part of a trademark or domain name. Since the Complainant is the only company entitled to use such trademark in Iran and in more than 20 countries, it is clear that the use of the Complainant’s trademark PETROBRAS by the Respondent in the disputed domain name is abusive and illegitimate. Moreover, the Complainant alleged that the Respondent is not using the disputed domain name for a bona fide offering of goods or services. Indeed, by accessing the website under the disputed domain name, the Complainant did not find any content.

Third, the Complainant raised that the disputed domain name was registered or is being used in bad faith. This is evident in the Complainant’s view by the fact that by accessing the website under the domain name <petrobras.ir>, Internet users cannot find any content related to the disputed domain name, as the webpage has been empty since registration.

Furthermore, the Complainant sent by email, on November 27, 2012, a warning letter to the Respondent informing the violation of the Complainant’s rights over the registration and use of the domain name <petrobras.ir> and requesting the cancellation or transfer to the Complainant of such domain name. However, the Complainant never received a response to its warning letter.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements are as follows:

(a) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(b) the respondent has no rights or legitimate interests in the domain name; and

(c) the domain name has been registered or is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements is present.

A. Identical or Confusingly Similar

First, the Complainant has proven that the disputed domain name <petrobras.ir> is identical to the name and trademarks of the Complainant. Since tens of years the Complainant holds registrations for a number of trademarks in Brazil and worldwide. Its worldwide presence makes its trademark widely known.

The confusing similarity of the disputed domain name <petrobras.ir> to the Complainant’s trademark PETROBRAS is apparent from a simple visual comparison. The disputed domain name is a replica of the Complainant’s mark. This is sufficient to satisfy the requirement that the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights (see also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 wherein the UDRP panel found that “when a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words”).

The Panel therefore finds that the disputed domain name <petrobras.ir> is identical to the Complainant’s trademark and as a consequence, the Complaint brought by the Complainant meets the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

From the evidence submitted before the Panel it is clear that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Respondent is not the Complainant’s licensee in any respect, nor is the Respondent authorized to use the Complainant’s marks. There is no evidence of the Respondent’s use of, or demonstrable preparation 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. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. In fact, there is no evidence that the Respondent runs any business under the name “petrobras” and has never used such expression to identify its products or services.

Nonetheless, the Respondent was also given the opportunity to contest the Complainant’s prima facie case against it. However, the Respondent did not submit any evidence that would demonstrate that it has any rights to or legitimate interests in the disputed domain name <petrobras.ir>.

The Panel therefore infers from the Respondent’s silence and the Complainant’s contentions that the Respondent has no serious arguments to prove its rights to or legitimate interests in the disputed domain name <petrobras.ir>. The Panel considers the requirement of paragraph 4(a)(ii) of the Policy fulfilled.

C. Registered or Used in Bad Faith

The Complainant is the owner of the trademark and worldwide known mark PETROBRAS and the owner of a number of domain names containing the word “petrobras”, under which it runs its official websites worldwide.

This Panel finds that the trademark PETROBRAS belonging to the Complainant has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the world. Finally, according to the provisions of Article 6bis of the Paris Convention for protection of Industrial Property (“PC”), confirmed and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights, the statute of a well-known trademark provides the owner of such a trademark with the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services (i.e. regardless of the list of the products and services for which the trademark is registered).

Bad faith is found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection with the trademark suggests opportunistic bad faith (LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303). Furthermore, the Complainant advised the Respondent by letter that the unauthorized use of the PETROBRAS trademark within the disputed domain name violated the Complainant’s rights in said trademark, requesting the Respondent to voluntarily transfer the disputed domain name. The Respondent, however, did not react to this request.

It is also widely supported that passive holding of a domain name, which the Panel finds to be the case in the particular circumstances here, can amount to the respondent acting in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Itaú Unibanco Holding S.A. v. Valdery Dos Santos Decoragóes ME, WIPO Case No. D2009-1335; and LACER,S.A. v Constanti Gómez Marzo, WIPO Case No. D2001-0177).

As a result, the Panel finds that the disputed domain name <petrobras.ir> was registered and is being used by the Respondent in bad faith and considers the requirements of paragraph 4(a)(iii) of the Policy to be fulfilled.

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 <petrobras.ir> be transferred to the Complainant.

Piotr Nowaczyk
Sole Panelist
Date: September 30, 2013