Petroleo Brasileiro S.A. v. PETROLEO BRASILEIRO S/A c/o Domain Admin
Claim Number: FA0807001217142
Complainant is Petroleo Brasileiro S.A. (“Complainant”), represented by Cristina
A. Carvalho, of Arent Fox LLP,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <petrobra.com>, registered with Nameview, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 23, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 24, 2008.
On July 31, 2008, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <petrobra.com> domain name is registered with Nameview, Inc. and that Respondent is the current registrant of the name. Nameview, Inc. has verified that Respondent is bound by the Nameview, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August
12, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 2, 2008
by which Respondent could file a response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent's registration as technical, administrative and billing contacts,
and to postmaster@petrobra.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 8, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <petrobra.com> domain name is confusingly similar to Complainant’s PETROBRAS mark.
2. Respondent does not have any rights or legitimate interests in the <petrobra.com> domain name.
3. Respondent registered and used the <petrobra.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is an oil and energy company that sells its
products under the PETROBRAS mark, which Complainant registered with the
Instituto Nacional de Propriedade Industrial of
Respondent registered the <petrobra.com> domain name on May 5, 2005. The disputed domain name resolves to a website that contains links to third-party pay-per-click websites.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant has established rights in
the PETROBRAS mark for purposes of Policy ¶ 4(a)(i)
through its trademark registration with the INPI. See
Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive."); see also KCTS Television Inc. v. Get-on-the-Web Ltd.,
D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the
purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is
registered in a country other than that of the respondent’s place of business).
Complainant contends that
Respondent’s <petrobra.com> domain name is confusingly similar to its PETROBRAS mark. The <petrobra.com> domain name differs from Complainant’s mark in two ways:
(1) the letter “s” has been removed from the mark; and (2) the generic
top-level domain (“gTLD”) “.com” has been added. The deliberate introduction of a generic
typo, such as removal of just one letter, does not sufficiently distinguish a
domain name from an incorporated mark for the purposes of Policy ¶ 4(a)(i), nor does the addition of a gTLD, because every domain
name must contain a top-level domain.
Therefore, the Panel finds that these changes do not minimize or
eliminate the resulting likelihood of confusion, and so Respondent’s disputed
domain name is not sufficiently distinguished from Complainant’s mark pursuant
to Policy ¶ 4(a)(i).
See State Farm Mut. Auto. Ins.
Co. v. Try Harder &
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <petrobra.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Complainant contends that Respondent is not commonly known
by the <petrobra.com>
domain name nor has it ever been the owner or licensee of the PETROBRAS
mark. The WHOIS record for the disputed
domain name lists Respondent as “PETROLEO
BRASILEIRO S/A c/o Domain Admin,” but Respondent has not presented any
affirmative evidence that Respondent has ever done business under this name.
The lack of this affirmative evidence of Respondent operating as “PETROLEO BRASILEIRO S/A c/o Domain Admin,” or
any variant thereof, compels the Panel to find that Respondent is not commonly
known by <petrobra.com>
pursuant to Policy ¶ 4(c)(ii). See G.D.
Searle & Co. v. Cimock, FA 126829
(Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of
Complainant’s mark there must be strong evidence that Respondent is commonly
known by the disputed domain name in order to find that Respondent has rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). However, there is no evidence
on record, and Respondent has not come forward with any proof to establish that
it is commonly known as CELEBREXRX or <celebrexrx.com>.”); see also Bank of Am. Corp. v. McCall, FA 135012
(Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only
results in its failure to meet its burden, but also will be viewed as evidence
itself that Respondent lacks rights and legitimate interests in the disputed
domain name.”).
Respondent maintains a
website at the <petrobra.com> domain name that features links to
third-party commercial websites. Using a mark, and taking commercial advantage
of the goodwill surrounding that mark, to attract Internet users to an
unrelated business or businesses is not a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Trans Global
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant also contends that Respondent is gaining
commercially through this diversion, mainly through click-through fees Respondent
would receive every time an Internet user clicks on a link and is directed to a
third-party website. The Panel finds
that this is an intentional use of the disputed domain name for commercial gain
through a likelihood of confusion with Complainant’s mark, and so, pursuant to
Policy ¶ 4(b)(iv), this use is also evidence of
registration and use in bad faith. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”); see also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb.
Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain
entire versions of Complainant’s marks and are used for something completely
unrelated to their descriptive quality, a consumer searching for Complainant
would become confused as to Complainant’s affiliation with the resulting search
engine website” in holding that the domain names were registered and used in
bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <petrobra.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: September 17, 2008
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