national arbitration forum

 

DECISION

 

Petroleo Brasileiro S.A. - Petrobras v. Mauricio Munoz

Claim Number: FA0808001222428

 

PARTIES

Complainant is Petroleo Brasileiro S.A. - Petrobras (“Complainant”), represented by Cristina A. Carvalho, of Arent Fox LLP, Washington D.C., USA.  Respondent is Mauricio Munoz (“Respondent”), Germany.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <petrogras.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.

Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically August 27, 2008; the National Arbitration Forum received a hard copy of the Complaint August 28, 2008.

 

On September 1, 2008, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <petrogras.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name.  Melbourne It, Ltd. d/b/a Internet Names Worldwide verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On September 4, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 24, 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@petrogras.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 2, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      The domain name that Respondent registered, <petrogras.com>, is confusingly similar to Complainant’s PETROBRAS mark.

 

2.      Respondent has no rights to or legitimate interests in the <petrogras.com> domain name.

 

3.      Respondent registered and used the <petrogras.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Petroleo Brasileiro S.A. – Petrobras, is one of the largest oil and energy companies in the world.  Complainant operates in twenty-seven different companies, and produced more than 1,900 barrels of oil per day in 2007, resulting in some $72 million in revenues that year.  Complainant conducts its business using the PETROBAS mark, which it registered with numerous authorities around the world including the Office of Harmonization for the Internal Market (“OHIM”) (Reg. No. 3,068,211 issued May 12, 2004).

 

Respondent’s <petrogras.com> domain name, which was registered December 16, 2005, resolves to a pay-per-click website that advertises competing oil and energy companies.

 

DISCUSSION

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."

 

Given 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 will draw such inferences as the Panel 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 Complainant to 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.

 

Identical to and/or Confusingly Similar

 

Complainant referenced its OHIM as well as other trademark registrations for the PETROBRAS mark.  The Panel finds these registrations sufficient to confer rights in the mark to Complainant pursuant to Policy ¶ 4(a)(i).  See Orange Glo Int’l v. Roswell Int’l Ltd, FA 440119 (Nat. Arb. Forum Apr. 21, 2005) (finding the complainant had established rights in the OXICLEAN mark by virtue of trademark registrations with entities including the OHIM); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).

 

Respondent’s <petrogras.com> domain name contains Complainant’s PETROBRAS mark, but replaces the “b” with a “g.”  However, this one-letter change does not distinguish the disputed domain name, and the overall impression of the <petrogras.com> domain name is likely to confuse Internet users and leave them believing that it is associated with Complainant.  Furthermore, the addition of “.com” does not distinguish the disputed domain name since top-level domains are required of all domain names.  As a result, the Panel concludes that Respondent’s <petrogras.com> domain name is confusingly similar to Complainant’s PETROBRAS mark pursuant to Policy ¶ 4(a)(i).  See Microsoft Corp. v. Domain Registration Philipines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding the respondent’s <microssoft.com> domain name to be confusingly similar to the complainant’s MICROSOFT mark because they differ by only one letter, and “such a small alteration is insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i).”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant alleged that Respondent lacks rights and legitimate interests in the <petrogras.com> domain name.  Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent.  Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).  See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).

 

Complainant contended that Respondent is not commonly known by the <petrogras.com> domain name, and “does not utilize a personal name, company name or title that incorporates the PETROBRAS Marks.”  The WHOIS information identifies Respondent as “Mauricio Munoz,” and the Panel finds no evidence in the record contradicting Complainant’s contention.  Therefore, the Panel concludes that Respondent is not commonly known by the <petrogras.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

The <petrogras.com> domain name resolves to a website that displays a list of hyperlinks, many of which advertise Complainant’s competitors.  Respondent presumably profits when Internet users click on one of these links, which can be classified as “pay-per-click” links.  The Panel therefore finds that Respondent’s use of the <petrogras.com> domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a confusingly similar disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).

 

As discussed above, the <petrogras.com> domain name is a one-letter misspelling of Complainant’s PETROBRAS mark.  The Panel notes that the letters “b” and “g” are neighboring keys on the keyboard, and therefore a high probability exists that Internet users may mistype one letter for the other.  Complainant alleged that Respondent is attempting to profit from a common typographical error made by Internet users, namely by replacing the “b” in Complainant’s mark with the “g” in the <petrogras.com> domain name.  The Panel finds that this constitutes typosquatting on Respondent’s part, and is further evidence of a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).  See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also Encyclopaedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of the complainant's mark).

 

The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

The links on the website resolving from the <petrogras.com> domain name advertise the businesses of Complainant’s competitors.  This is likely to disrupt Complainant’s business by diverting customers to the competitors’ websites.  Therefore, Respondent’s registration and use of the <petrogras.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iii).  See Wynn Resorts Holdings, LLC v. Turk Global, LLC, FA 1190419 (Nat. Arb. Forum June 25, 2008) (“While Respondent contends it is not Complainant’s direct competitor, the Panel determines that Respondent’s registration and use of the disputed domain name is likely to disrupt Complainant’s business by diverting potential customers to the websites of Complainant’s competitors.  Such circumstances are sufficient to demonstrate a violation of Policy ¶ 4(b)(iii).”); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name resolved to a website that displayed commercial links to the websites of the complainant’s competitors in the financial services industry).

 

As discussed above, Respondent’s registration and use of the <petrogras.com> domain name is also likely to confuse Internet users into believing that Complainant is affiliated with or endorses the content advertised on Respondent’s resolving website.  Respondent is profiting from this likelihood of confusion, and the Panel finds that Respondent registered and is using the <petrogras.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website that resolved from the disputed domain name); see also Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

Finally, the Panel found that Respondent engaged in typosquatting.  This fact in and of itself constitutes further evidence of Respondent’s bad faith registration and use of the <petrogras.com> domain name pursuant to Policy ¶ 4(a)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <petrogras.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: October 16, 2008.

 

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