national arbitration forum

 

DECISION

 

Petróleo Brasileiro S.A. - Petrobras v. Latin American Trade

Claim Number: FA0812001239918

 

PARTIES

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”), Costa Rica.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <petrobras.net>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.

 

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 December 23, 2008; the National Arbitration Forum received a hard copy of the Complaint December 26, 2008.

 

On December 26, 2008, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <petrobras.net> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name.  Intercosmos Media Group, Inc. d/b/a Directnic.com verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 December 31, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 20, 2009, 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@petrobras.net by e-mail.

 

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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

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.

 

FINDINGS

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 May 12, 2004).  Complainant, listed by its PETROBRAS mark, was ranked number 63 in Fortune’s Global 500 for 2008.  Complainant, while based in Brazil, controls significant oil and energy assets in 18 nations in Africa, North America, South America, Europe, and Asia.

 

Respondent registered the <petrobras.net> domain name January 16, 2000.  The disputed domain name redirects Internet users to Complainant’s official website.

 

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

 

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 Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).

 

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. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)).

 

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 Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to the complainant’s MYSTIC LAKE trademark and service mark); see also Kabushiki Kaisha Toshiba v. Shan Computers, D2000-0325 (WIPO June 27, 2000) (finding that the domain name <toshiba.net> is identical to the complainant’s trademark TOSHIBA).

 

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

 

Rights to or Legitimate Interests

 

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 May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).  The Panel finds that Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights or legitimate interests in the <petrobras.net> domain name pursuant to Policy ¶ 4(a)(ii). 

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 Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

 

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 Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that the respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).

 

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

 

Registration and Use in Bad Faith

 

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 Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).

 

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 Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); see also Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).

 

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 <petrobras.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: February 11, 2009.

 

 

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