WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Petróleo Brasileiro S.A. (PETROBRAS), Petrobras Netherlands B.V. v. Domains By Proxy, LLC / Petrobras Tankfarm
Case No. DNL2017-0036
1. The Parties
Complainant is Petróleo Brasileiro S.A. (PETROBRAS), Petrobras Netherlands B.V. of Rotterdam, the Netherlands, represented by Houthoff Buruma, Netherlands.
Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Petrobras Tankfarm of Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <petrobrasbv.nl> (the “Domain Name”) is registered with SIDN through GoDaddy.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2017. On June 30, 2017, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On July 3, 2017, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On July 5, 2017, the Center transmitted by email to GoDaddy.com a request for registrar verification in connection with the Domain Name. On July 5, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 6, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to amend the Complaint. Complainant filed an amended Complaint on July 10, 2017. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 11, 2017. In accordance with the Regulations, article 7.1, the due date for Response was July 31, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 1, 2017.
The Center appointed Dinant T. L. Oosterbaan as the panelist in this matter on August 7, 2017. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.
4. Factual Background
Complainant is a Brazilian multinational company in the petroleum industry that is active on a global scale in the area of (among other things) exploitation and production, refining, marketing, transport and distribution of oil products, natural gas, electricity and biofuel.
According to the evidence submitted by Complainant, Complainant holds multiple trademark registrations for PETROBRAS, including a Benelux trademark with registration number 0688072 and a registration date of June 20, 2000 and a European Union trademark with number 003068211 and a registration date of May 12, 2004. In addition, in the Netherlands Complainant uses the trade name PETROBRAS NETHERLANDS B.V.
The Domain Name, <petrobrasbv.nl>, was registered by Respondent on April 25, 2017.
The Domain Name resolves to a webpage that fraudulently attempts to impersonate Complainant for financial gain, as further described below.
5. Parties’ Contentions
Complainant submits that the Domain Name is confusingly similar to its PETROBRAS trademarks and to the PETROBRAS trade name as the Domain Name incorporates the well-known trademarks and trade name in its entirety. The addition of “bv”, the abbreviation for a type of legal entity in the Netherlands, does not negate such confusing similarity. On the contrary, the addition adds to the confusion as it is associated with Complainant’s trade name as a legal entity.
According to Complainant Respondent has no rights to or legitimate interests in the Domain Name. Firstly, Respondent has no trademark rights of its own in the Domain Name. As holder of the PETROBRAS trademarks, Complainant has exclusive rights to the use of the trademarks and Respondent has neither requested nor received permission to use the trademarks. Complainant asserts that Respondent uses the website to present itself as Complainant, including the address and trade register number of Complainant’s subsidiary in Rotterdam, the Netherlands.
Complainant submits that Respondent uses the website for fraudulent activities. Complainant has received several emails from clients, from which it is apparent that clients are invited to place orders with Respondent on the supposition that Respondent is Complainant’s Dutch subsidiary. Complainant has contacted its clients that have been in contact with Respondent. According to the information provided by the clients, certain named individuals contacted them on behalf of Complainant offering the clients a tank for which a deposit of USD 25,000 is due. Such a deposit is not common in the business of Complainant. Therefore, the clients did not pay the amount of USD 25,000 but contacted Complainant for further information, after which the clients discovered that the certain named individuals are not employed by Complainant.
Complainant also submitted as evidence an invoice for a “DIP Test Authorization Letter” which was sent by Respondent to clients of Complainant. According to Complainant the invoice is false and was not sent by Complainant.
Complainant submits that it is apparent from the emails, the fake invoice and the information provided by clients of Complainant that the Domain Name is being used by Respondent for illegal activities to offer services on behalf of Complainant that, in reality, are not offered by Complainant. Complainant concludes that Respondent is a fraudster offering services in the name of Complainant in return for payment.
Complainant submits that the Domain Name has been registered and is being used by Respondent in bad faith. Both the Domain Name and the information on the website held under the Domain Name are intended to generate the idea that Respondent is affiliated with Complainant. Respondent is representing itself on the website as if it were Complainant. By causing confusion between Complainant, known worldwide, and Respondent, Respondent is attempting to realize commercial gain. The email submitted by Complainant as evidence shows that Respondent is requesting payment for services offered. It is clear that Respondent is attempting to feed off and abuse the Complainant’s identity and reputation of Complainant. On June 22, 2017, a cease and desist letter has been sent to Respondent demanding to cease the trademark infringement and to transfer the Domain Name to Complainant. Respondent has not replied to the cease and desist letter, which affirms that the Domain Name has been registered and is being used in bad faith. Complainant concludes that the Domain Name has been registered and is being used by Respondent in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Based on article 2.1 of the Regulations, a claim to transfer a domain name must meet three cumulative conditions:
a. the domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the complainant has rights, or other name mentioned in article 2.1(a) under II of the Regulations; and
b. the respondent has no rights to or legitimate interests in the domain name; and
c. the domain name has been registered or is being used in bad faith.
As Respondent has not filed a Response, the Panel shall rule on the basis of the Complaint. In accordance with article 10.3 of the Regulations, the Complaint shall in that event be granted, unless the Panel considers it to be without basis in law or in fact.
A. Identical or Confusingly Similar
Pursuant to article 2.1(a) of the Regulations, Complainant must establish that the Domain Name is identical or confusingly similar to a trademark or trade name in which Complainant has rights.
Complainant has established that it has rights in Benelux and European Union trademark registrations for PETROBRAS. In addition, Complainant has rights in the trade name PETROBRAS NETHERLANDS B.V. The Domain Name incorporates the entirety of the PETROBRAS trademark and the dominant part of the trade name. The descriptive abbreviated corporate term “bv” and the Top-Level Domain “.nl” may be disregarded for purposes of article 2.1(a) of the Regulations.
The Panel finds that the Domain Name is confusingly similar to the PETROBRAS trademarks and trade name of Complainant.
B. Rights or Legitimate Interests
In the Panel’s opinion, Complainant has made a prima facie case that Respondent lacks rights to or legitimate interests in the Domain Name, as Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain and misleadingly diverts consumers to tarnish the trademarks and trade name of Complainant.
Based on the evidence provided by Complainant, the Domain Name resolves to a website which imitates the look and feel of the website of Complainant. The Panel accepts the undisputed submission of Complainant that it is apparent from the emails, the fake invoice and the information provided by clients of Complainant that the Domain Name is being used by Respondent for illegal activities to offer services on behalf of Complainant that, in reality, are not offered by Complainant, an illegitimate activity that is undoubtedly commercial and not bona fide in nature. Indications of the presumed fact that Respondent is using the Domain Name to defraud clients of Complainant can be found in the complaints, emails and fake invoice submitted as evidence by Complainant.
Respondent’s fraudulent use of the Domain Name obviously cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. Under these circumstances, the Panel finds that Respondent has no rights to or legitimate interests in the Domain Name.
C. Registered or Used in Bad Faith
The Panel refers to its considerations under Section 6.B. Complainant has submitted evidence that Respondent, who knew or should have known that the Domain Name included the trademarks and trade name of Complainant, registered and uses the Domain Name for fraudulent purposes. On this basis, the Panel finds that Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product on its website or location, which constitutes registration and use in bad faith pursuant to article 3.2(d) of the Regulations.
The Panel finds that the Domain Name has been registered and is being used in bad faith.
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name, <petrobrasbv.nl>, be transferred to Complainant.
Dinant T. L. Oosterbaan
Date: August 10, 2017