Petróleo Brasileiro S.A. - Petrobras v. Latin American Trade
Claim Number: FA0812001239918
Complainant is Petróleo
Brasileiro S.A. - Petrobras (“Complainant”), represented by Cristina A. Carvalho of Arent Fox LLP, Washington, D.C., USA. Respondent is Latin American Trade (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <petrobras.net>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically December 23, 2008; the National Arbitration Forum received a hard copy of the Complaint December 26, 2008.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 28, 2009, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <petrobras.net> domain name is identical to Complainant’s PETROBRAS mark.
2. Respondent has no rights to or legitimate interests in the <petrobras.net> domain name.
3. Respondent registered and used the <petrobras.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Petróleo Brasileiro S.A. – Petrobras, has used
the PETROBRAS mark in connection with its gas and petroleum business since as
early as 1953. In 1996, Complainant
registered the <petrobras.com> domain name and has used this domain name
and the <petrobras.com.br> domain name to resolve to its official
website. Complainant holds a registration
in the PETROBRAS mark with the European Union Office for Harmonization in the
International Market (“OHIM”) (Reg. No. 3,068,211 issued
Respondent registered the <petrobras.net> domain name January 16, 2000. The disputed domain name redirects Internet users to Complainant’s official website.
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.
Under Policy ¶ 4(a)(i), Complainant
must first establish that it has rights in the PETROBRAS mark. Under Policy ¶ 4(a)(i)
registration of a trademark is not necessary to establish that Complainant has
rights in the mark, provided Complainant can show common law rights in the mark
through evidence of sufficient secondary meaning. See McCarthy on Trademarks and Unfair
Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution
policy is “broad in scope” in that “the reference to a trademark or service
mark ‘in which the complainant has rights’ means that ownership of a registered
mark is not required–unregistered or common law trademark or service mark
rights will suffice” to support a domain name complaint under the Policy); see also
Complainant has used the PETROBRAS mark continuously since
1953. As evidenced by its ranking in
Fortune’s Global 500, Complainant has become internationally known as
PETROBRAS. The Panel finds that
Complainant has established rights in the PETROBRAS mark pursuant to Policy ¶
4(a)(i). See Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005)
(finding that the complainant established common law rights in the STELLAR CALL
CENTRES mark because the complainant demonstrated that its mark had acquired
secondary meaning); see also Quality
Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat.
The <petrobras.net> domain name consists of
Complainant’s PETROBRAS mark and the generic top-level domain (gTLD)
“.net.” As it is well established that
the addition of a gTLD is irrelevant to an analysis under Policy ¶ 4(a)(i), the
Panel finds that the <petrobras.net> domain name is identical to
Complainant’s PETROBRAS mark. See Little
Six, Inc. v. Domain For
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Pursuant to Policy
¶ 4(a)(ii), Complainant must first make a prima
facie case that Respondent has no rights or legitimate interests in the
disputed domain name. If the Panel finds
that Complainant’s allegations establish such a prima facie case, the
burden shifts to Respondent to show that it does indeed have rights or
legitimate interests in the disputed domain name pursuant to the guidelines in
Policy ¶ 4(c). Since no response was
submitted in this case, the Panel may presume that Respondent has no rights or
legitimate interests in the disputed domain name. See Compagnie Generale des Matieres
Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO
However, the Panel will still examine the record in consideration of the factors listed in Policy ¶ 4(c).
Under Policy ¶ 4(c)(ii), if
Respondent demonstrates it is commonly known by the disputed domain name, then
it will have demonstrated rights or legitimate interests in said name. The Panel finds no evidence in the record
suggesting that Respondent is commonly known by the <petrobras.net>
domain name. Complainant asserts that
Respondent has no license or agreement with Complainant authorizing Respondent
to use the PETROBRAS mark, and the WHOIS information identifies Respondent as “Latin
American Trade.” Thus, Respondent has
not established rights or legitimate interests in the disputed domain name
under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum
Respondent has not made any use of the disputed domain name
other than to redirect Internet users to Complainant’s official website. Since Respondent has failed to put the
disputed domain name to any independent use in the almost nine years it has
held the registration, the Panel finds Respondent is not using the disputed
domain name in connection with a bona
fide offering of goods or services or a legitimate noncommercial or fair
use. Therefore, Respondent does not have
any rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i)
and (iii). Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
The Panel chooses to consider the totality of the
circumstances when conducting its Policy ¶ 4(a)(iii)
analysis. See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO
Respondent has failed to use the <petrobras.net>
domain name. The Panel finds that
Respondent’s failure to use the disputed domain name constitutes bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See
Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <petrobras.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 11, 2009.
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