Petróleo Brasileiro S.A. v. seong-chea park
Claim Number: FA0812001239919
Complainant is Petróleo
Brasileiro S.A. (“Complainant”), represented by Cristina A. Carvalho, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <petrobras.org>, registered with YesNIC Co., Ltd.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On January 1, 2009, YesNIC Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <petrobras.org> domain name is registered with YesNIC Co., Ltd. and that Respondent is the current registrant of the name. YesNIC Co., Ltd. has verified that Respondent is bound by the YesNIC Co., Ltd. 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
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 4, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <petrobras.org> domain name is identical to Complainant’s PETROBRAS mark.
2. Respondent does not have any rights or legitimate interests in the <petrobras.org> domain name.
3. Respondent registered and used the <petrobras.org> 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 for the PETROBRAS mark with the European Union Office for Harmonization in the International Market (“OHIM”) (Reg. No. 3,068,211 issued May 12, 2004, filed March 27, 2005). Complainant, listed by its PETROBRAS mark, was ranked sixty-third in Fortune’s Global 500 for 2008. Complainant, while based in Brazil, controls significant oil and energy assets in eighteen nations in Africa, North America, South America, Europe, and Asia.
Respondent registered the <petrobras.org>
domain name on
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
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.
Under Policy ¶ 4(a)(i), Complainant must first establish
that it has rights in the PETROBRAS mark.
Complainant has established rights in the PETROBRAS mark through its
registration with the OHIM pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007)
(finding that a trademark registration adequately demonstrates a complainant’s
rights in a mark under Policy ¶ 4(a)(i)); see also Thermo Electron Corp. v.
Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the
complainants had established rights in marks where the marks were registered
with a trademark authority).
Additionally, Complainant alleges common law rights in the
PETROBRAS mark under Policy ¶ 4(a)(i) dating back to 1953. As evidenced by its ranking in Fortune’s
Global 500, Complainant has become internationally known by the PETROBRAS mark. The Panel finds that Complainant has
established common law rights in the PETROBRAS mark through a showing of
sufficient secondary meaning pursuant to Policy ¶ 4(a)(i). See Stellar Call Ctrs.
Pty Ltd. v. Bahr, FA 595972
(Nat. Arb. Forum
The <petrobras.org> domain name consists of
Complainant’s PETROBRAS mark and the generic top-level domain (gTLD)
“.org.” 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.org> domain name is identical to
Complainant’s PETROBRAS mark. See Sea World, Inc. v. JMXTRADE.com, FA
872052 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Pursuant to Policy
¶ 4(a)(ii), Complainant must first establish 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). 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.org> domain name pursuant to Policy ¶
4(a)(ii). 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 Domtar, Inc. v. Theriault.,
FA 1089426 (Nat. Arb. Forum
The Panel finds no evidence in the record suggesting that
Respondent is commonly known by the <petrobras.org> 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
“seong-chea park.” 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
The disputed domain name, which is identical to
Complainant’s PETROBRAS mark, is being used to list domain names for sale. The Panel finds that redirecting Internet
users to a website unrelated to Complainant for Respondent’s commercial benefit
is not a bona fide offering of goods
or services or a legitimate noncommercial or fair use. Therefore, Respondent has not established
rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) or (iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access,
FA 180704 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using
the disputed domain name to resolve to a website that lists domain names for
sale. Upon arriving at the resolving website,
Internet users are likely to become confused as to Complainant’s involvement or
sponsorship of the disputed domain and corresponding website. The
disputed domain name is identical to Complainant’s PETROBRAS mark and Respondent
is seeking to profit by diverting Internet users in search of Complainant’s
site, to its own commercial site. The
Panel finds this is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See
DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied 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.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist, Panelist
Dated: February 17, 2009
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