Petroleo
Brasileiro S.A. v.
Claim Number: FA0910001289877
Complainant is Petroleo
Brasileiro S.A. (“Complainant”), represented by Ross Q. Panko, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <petrobrasusa.com>, registered with Compana, Llc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 16, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 19, 2009.
On October 19, 2009, Compana, Llc confirmed by e-mail to the National Arbitration Forum that the <petrobrasusa.com> domain name is registered with Compana, Llc and that Respondent is the current registrant of the name. Compana, Llc has verified that Respondent is bound by the Compana, Llc 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 October 21, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 10, 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@petrobrasusa.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 12, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 disputed domain name be transferred forthwith from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is an energy company which markets goods and services relating to oil, oil byproducts, natural gas and ethanol exploration, production, refining and transportation.
Complainant has sells its products under the PETROBRAS trademark since 1953.
Complainant owns registrations for its PETROBRAS with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,676,471, issued September 1, 2009), with the Brazilian trademark authority (Reg. No. 826,272,690, issued June 11, 2007), and with the European Union Office of Harmonization for the Internal Market (“OHIM”) (Reg. No. 3,068,211, issued December 5, 2004).
Respondent is not authorized to use the PETROBRAS mark.
Respondent, Texas International Property Associates – NA NA, registered the <petrobrasusa.com> domain name on February 11, 2006.
The disputed domain name resolves to a website featuring a commercial search engine and hyperlinks relating to Complainant’s competitors in the energy and oil industry.
Respondent profits from this search engine and related hyperlinks through the receipt of click-through fees triggered by visits to the indicated links by Internet users.
Respondent’s contested <petrobrasusa.com> domain name is confusingly similar to Complainant’s PETROBRAS mark.
Respondent does not have any rights to or legitimate interests in the domain name <petrobrasusa.com>.
Respondent’s use of the <petrobrasusa.com> domain name is a part of a pattern of bad faith registration and use of Internet domains.
Respondent registered and uses the <petrobrasusa.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the subject domain name; and
iii. the domain name has been registered and is being used in bad faith.
Previous panels have found that a complainant establishes rights in a mark through registration of the mark with a governmental trademark authority. Complainant has therefore established rights in the PETROBRAS mark under Policy ¶ 4(a)(i) through its uncontested mark registrations. 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 Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006): “Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”
Complainant contends that Respondent’s <petrobrasusa.com>
domain name is confusingly similar to Complainant’s PETROBRAS mark. The disputed domain name contains
Complainant’s entire mark and merely adds the geographic identifier “
The
addition of the geographic term [“Brasil”] does not avoid confusing similarity
pursuant to Policy ¶ 4(a)(i).
See also Jerry Damson,
Inc. v.
The
mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to
adequately distinguish the Domain Name from the mark.
Therefore, the Panel finds that Respondent’s <petrobrasusa.com> domain name is confusingly similar to Complainant’s PETROBRAS mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have rights to or legitimate interests in the <petrobrasusa.com> domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a “complainant must first make a prima facie case that [a] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [that] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond to a complaint filed under the Policy allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant has made out a sufficient prima facie case. And, because Respondent has failed to respond to the Complaint, we may assume that Respondent does not have rights to or legitimate interests in the disputed domain name. We will nonetheless examine the record in light of the considerations set out in Policy ¶ 4(c) to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name sufficient for purposes of the Policy.
We begin by observing that the pertinent WHOIS information lists
Respondent only as “Texas International Property Associates - NA NA.” Moreover, Complainant asserts that Respondent is not authorized to use the
PETROBRAS mark. Therefore we conclude
that Respondent is not commonly known by the <petrobrasusa.com> domain
name pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a
respondent had no rights to or legitimate interests in a disputed domain name
where there was no evidence in the record indicating that that respondent was
commonly known by the disputed domain name); see also Educ. Broad. Corp. v. DomainWorks Inc., FA
882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that a
respondent was not commonly known by the <thirteen.com> domain name based
on all evidence in the record, and where that respondent did not attempt to counter
this argument in its response).
We also note that there is no dispute as to Complainant’s allegations that Respondent’s <petrobrasusa.com> domain name resolves to a website featuring a commercial search engine and hyperlinks to Complainant’s competitors in the oil and energy and oil industry and that Respondent profits from the operation of the described search engine and hyperlinks through the receipt of click-through fees. Respondent’s use of the confusingly similar disputed domain name is thus not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that a respondent was not using a 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 a complainant’s customers, presumably receiving “click-through fees” in the process); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
The Panel thus finds
that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s use of the <petrobrasusa.com>
domain name is a part of a pattern
of bad faith use and registration of Internet domains. The record contains evidence indicating that Respondent
has been a respondent in numerous UDRP proceedings in which disputed
domain names were transferred from Respondent to the complainants in those
cases. See, for example, AllianceBernstein L.P. v.
Previous panels have found that a respondent’s use of a
confusingly similar domain name to resolve to a website featuring a search
engine and hyperlinks to websites of a mark-holder’s business competitors constitutes
a disruption of a complainant’s business. See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding
bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a
respondent used a disputed domain name to operate a commercial search engine
with links to a complainant’s business competitors); see also Red Hat, Inc.
v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a
respondent engaged in bad faith registration and use pursuant to Policy ¶
4(b)(iii) by employing disputed domain names to operate a commercial search
engine with links to the products of a complainant’s competitors). On the
parallel facts of the instant Complaint, we agree with these prior conclusions.
Respondent’s <petrobrasusa.com> domain name features a search engine and hyperlinks to Complainant’s
competitors in the energy and oil industry.
Respondent’s use of the disputed domain name thus disrupts Complainant’s
energy and oil business and therefore constitutes bad faith registration and
use of the disputed domain name under Policy ¶ 4(b)(iii).
Finally under this head, Complainant alleges, and Respondent does not deny, that Respondent profits from the receipt of click-through fees from its commercial search engine and competing hyperlinks. Respondent is thus attempting to profit by creating a likelihood of confusion as to the possibility of Complainant’s affiliation with the disputed domain name and resolving website. Therefore, the use of the disputed domain name as alleged constitutes bad faith registration and use of the domain under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that a respondent’s use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith where that respondent presumably benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to a complainant’s mark to offer links to third-party websites featuring services similar to those offered by a complainant).
For all of these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is hereby Ordered that the <petrobrasusa.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 25, 2009
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