The Complainant is Petroleo Brasileiro S.A. – Petrobras of Rio de Janeiro, Brazil, represented by Siqueira Castro Advogados, Brazil.
The Respondents are Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia and Quantec, LLC/Novo Point, LLC of Dallas, Texas, United States of America.
The disputed domain name <petrobrasusa.com> (the “Disputed Domain Name”) is registered with Fabulous.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2013. On December 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 2, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name that differed from the named Respondent and contact information in the Complaint. On the same date, the Registrar also sent an email communication and annexes to the Center, giving notice that the Disputed Domain Name is “under the control of a Court Appointed Receiver”. On December 4, 2013, the Center acknowledged receipt of the Registrar’s email communication and invited the Complainant to provide any comments it might wish to make or if it wished to request the discontinuation of the UDRP proceedings in light of the Registrar’s email communication and documents therein. The Complainant has not submitted any comments in this respect. The Center also sent an email communication to the Complainant on December 4, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 10, 2013.
On December 5, 2013, an individual named Mr. Cox, submitted further documents in relation to the receivership action. On the same date, the Center acknowledged receipt of Mr. Cox’s email communication and informed the parties that any consideration of the effect of the mentioned legal receivership on these proceedings would be a matter for the Panel to consider on its appointment.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint and the amended Complaint, and the proceedings commenced on December 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2014. The Respondents did not submit any response. Accordingly, on January 3, 2014, the Center notified the parties that the Center would proceed to Panel Appointment.
The Center appointed John Swinson as the sole panelist in this matter on January 10, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant is Petroleo Brasileiro S.A. – Petrobras, a Brazilian multinational energy company headquartered in Rio de Janeiro.
The Complainant owns a number of Brazilian trade mark registrations for PETROBRAS, dating from as early as July 25, 1974. The Complainant also owns trade mark registrations for PETROBRAS in a number of countries, including Australia and the United States of America where the Respondents are located. For the purposes of this Decision, all of these trade marks will be collectively referred to as the “Trade Mark”.
The Complainant is also the owner of numerous domain names that incorporate the Trade Mark.
The first Respondent is Whois Privacy Services Pty Ltd of Australia and the second Respondent is Quantec, LLC/Novo Point LLC of the United States of America.
The Disputed Domain Name was created on February 11, 2006. Currently, there is no website operating at the Disputed Domain Name. The Registrar has advised that the Disputed Domain Name is “under the control of a Court Appointed Receiver”, and an individual named Mr. Cox has submitted further documents in relation to a receivership action.
The Complainant makes the following submissions.
The Disputed Domain Name is confusingly similar to the Trade Mark. It incorporates the Trade Mark in its entirety, followed by the country abbreviation “USA”.
The Respondents do not have rights or legitimate interests in the Disputed Domain Name for the following reasons:
- the Respondents do not run any business under the Trade Mark and have never used the Trade Mark to identify their products or services;
- the Respondents do not own any trade mark application or registration for the Trade Mark;
- the Complainant has never authorized the Respondents to use the Trade Mark;
- the Respondents have not been commonly known by the Disputed Domain Name;
- the Respondents are not using the Disputed Domain Name to offer bona fide goods or services, and the website at the Disputed Domain Name is empty; and
- the Respondents are not making a legitimate noncommercial or fair use of the Disputed Domain Name.
The following is evidence that the Respondents registered and are using the Disputed Domain Name in bad faith:
- the website at the Disputed Domain Name has been empty since registration (amounting to passive holding);
- given the Complainant’s reputation, the Respondents must have known of the Complainant and the Trade Mark at the time they registered the Disputed Domain Name;
- the Respondents have provided no evidence of any contemplated good faith use of the Disputed Domain Name; and
- the second Respondent has taken active steps to conceal its identity, through the use of a privacy service (i.e. the first Respondent).
The Respondents did not reply to the Complainant’s contentions. However, as noted in “Procedural History”, on December 5, 2013, an individual named Mr. Cox submitted documents in relation to a receivership action. He advised that the Disputed Domain Name was a “Receivership Asset”, and that the Complainant had been advised of this on January 28, 2011 and again on May 13, 2013.
Mr. Cox further advised that the Fifth Circuit Court of Appeals in the United States had ruled that the appointment of the Receiver was in error. In his email he stated: “The Fifth Circuit’s mandate to the District Court was to vacate the Receivership and discharge the Receiver and his counsel pursuant to an orderly wind down plan. To date, the District Court has not entered any such order, so the Stay mandated by the Receivership Order remains in full force and effect pending further order of the District Court.”
To obtain the transfer of the Disputed Domain Name, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondents have not filed a formal Response.
On December 5, 2013, Mr. Cox forwarded a number of documents to the Center, including an email that he had sent to the Complainant on May 13, 2013 (copies of this email were also forwarded to the Registrar and to Whois Privacy Services Pty Ltd as well as various “Counsel for Receiver” and “Receivership Professional[s]”).
The Notice of Receivership and Stay states:
“My name is Joshua Cox. I am writing to you with regard to the above-referenced domain name (the “Domain”). The Domain is subject to the jurisdiction of Peter S. Vogel, the Receiver appointed by a U.S. District Judge in a case styled as Netsphere v. Baron et al., Case No. 3: 09cv988, U.S. District Court for the Northern District of Texas. I am counsel for Quantec, LLC (“Quantec”), the registrant of the Domain, and am a duly appointed Receivership Professional as defined in the Receiver Order. Mr. Vogel has authorized me to contact you regarding the Domain.
The Court’s Order Appointing Receiver, dated November 24, 2010 (the “Receiver Order”), grants the Receiver authority over all Receivership Assets (as defined therein), including the Domain, and mandates a stay (the “Stay”) with regard to any and all actions against Receivership Assets during the pendency of the receivership. Further, the Court’s Order Granting the Receiver’s Motion to Clarify the Receiver Order with Respect to Novo Point, LLC and Quantec, LLC, dated December 17, 2010, provides specifically that Quantec (the Domain’s registrant) is a Receivership Party subject to the Receiver Order. I have enclosed copies of the relevant orders for your consideration.
The Domain, which is registered by a Receivership Party, is a Receivership Asset clearly subject to the Receiver Order and all its provisions. As a result of the entry of the Receiver Order and its Stay, you are hereby prohibited from continuing to prosecute any action with respect to the Domain during the pendency of the receivership. Because of the Order and the Stay the Receiver is not taking a position as to the merits of your claims relating to the Domain. However, the Receiver is required to preserve the value of all Receivership Assets. For these reasons, the Receiver must maintain the status quo with regard to the Domain during the pendency of the receivership.
Thank you in advance for your cooperation.” (Emphasis added in the Notice of Receivership and Stay)
Mr. Cox also forwarded the following documents to the Center in his email of December 5, 2013:
- Notice of Appearance, filed by Mr. Cox, as Attorney for Quantec, LLC and Novo Point, LLC, filed December 10, 2010;
- Order Appointing Receiver and Stay of Actions, dated November 24, 2010;
- Order Granting the Receiver’s Motion to Clarify the Receiver’s Order with Respect to Nova Point, LLC and Quantec, LLC, dated December 17, 2010;
- Receiver’s Notice of Employment of Mr. Cox as Consultant to the Receiver, dated December 29, 2010;
- Notice of Receivership (similar to the May 13, 2013 email outlined above), dated January 28, 2011; and
- Ruling of the U.S. District Court for the Northern District of Texas, dated July 26, 2013.
Paragraph 18 of the Rules gives the Panel discretion to determine whether to suspend, terminate or continue with a UDRP proceeding where court proceedings are on foot involving the same domain name.
In this case, the Disputed Domain Name is not explicitly referred to as a “Receivership Asset”; the November 24, 2010 Order merely makes reference to a “portfolio of internet domain names”, which belong to a number of companies, including the second Respondent. No schedule particularising the relevant domain names is provided. Notwithstanding this, the Panel is of the view that the second Respondent’s rights to the Disputed Domain Name may be a “Receivership Asset”.
Even if the Disputed Domain Name is a Receivership Asset, the Panel has decided for following reasons to proceed to issue its Decision in accordance with paragraphs 10 and 18 of the Rules:
- although the receivership was put in place in November 2010, the Disputed Domain Name is still registered in the name of the Respondents (that is, control has not been transferred to the Receiver even though the receivership has been in place for over three years);
- if the Disputed Domain Name is in fact a Receivership Asset, then Mr.
- Vogel (the Receiver) would be the appropriate person to respond on behalf of the Respondents. In his email of May 13, 2013, Mr. Cox states that he has authorization from Mr. Vogel. Further, he states that he is retained by Quantec, LLC, and not the Receiver; and
- the Receiver has not responded to the Complaint. Accordingly, it appears to the Panel that the Receiver has been put on notice of the dispute and has chosen not to intervene.
For the reasons above, the Panel finds no proof on the available record that the Disputed Domain Name is subject to the Receiver Order. If it were in fact subject to the Receiver Order, the Panel would have expected that Mr. Vogel, as Receiver, would have asserted his rights in relation to the Disputed Domain Name by way of formal response.
There are a number of domain name disputes decided by WIPO UDRP panels, in which Mr. Cox has made submissions similar to those made in the present proceedings, including the submission of the documents outlined above (in whole or in part) and arguments to the effect that the relevant domain name constitutes a “Receivership Asset” and consequently cannot be transferred (see e.g. Amica Mutual Insurance Company v. Texas International Property Associates, URDMC LLC, WIPO Case No. D2010-2144; Judah Smith v. Whois Privacy Services Pty. Ltd. / URDMC LLC, WIPO Case No. D2011-0397; Barclays Bank PLC v. Quantec, LLC / Novo Point, LLC, WIPO Case No. D2012-2083; and J Barbour & Sons LTD v. Whois Privacy Services Pty Ltd./ Quantec, LLC. Novo Point, LLC, WIPO Case No. D2013-0283). In each of the above instance, the named respondent submitted no formal response, and the panel rendered a decision to transfer in favor of the relevant complainant. See also I-TO-I International Projects Limited v. Quantec, LLC / Novo Point, LLC, WIPO Case No. D2011-1492.
As this panelist stated in NYSE Group, Inc., Euronext N.V., LIFFE Administration and Management v. Steven Stanwyck, Eduardo Garcia Gil, WIPO Case No. D2008-0104:
“The Panel notes the decision of Jerome A. Rich v. Jim Rich, WIPO Case No. D2007-1346, where the panelist in that case wrote:
“Under a provision of United States bankruptcy law, 11 U.S.C. §362, no person may commence legal proceedings against the debtor (Respondent) without the permission of the bankruptcy court presiding over the estate. Whether commencement of this proceeding under the Policy or implementation of the Panel’s order violates that provision is a matter for the bankruptcy court, not the Panel, to determine; the Panel expresses no opinion on these questions. To the extent that it has discretion under paragraph 18(a) of the Rules “to suspend or terminate the administrative proceeding, or to proceed to a decision,” the Panel elects to proceed to decision. Either party may raise any applicable Bankruptcy Act issues with the bankruptcy court or United States Trustee.”
The Panel in this case is satisfied that the approach adopted by the US panelist in Jerome A. Rich (supra) is apposite to the circumstances of the present case.
Accordingly, as these UDRP proceedings have been commenced, the Panel believes it is appropriate in the context of this expedited process to proceed to render this decision. It is for the parties and the U.S. bankruptcy court to decide whether this decision can be implemented, and it is clearly upon to a relevant court to make a contrary finding if it believes that it is appropriate.”
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
Where a domain name wholly incorporates a trade mark, the addition of a geographic indicator (i.e. “USA”) will generally not distinguish the domain name from the trade mark (see e.g. Google Inc. v. Google Adwords Service at HCMC, Vietnam, WIPO Case No. D2013-0298 and Nike, Inc. v. No Owner / Ashkan Mohammadi, WIPO Case No. D2013-1297). Here, the Panel finds that the distinctive element of the Disputed Domain Name is the Trade Mark. The addition of the geographic indicator “USA” and the generic Top-Level Domain (gTLD) suffix, “.com” does nothing to prevent the confusing similarity of the Disputed Domain Name with the Trade Mark.
In light of the above, the Complainant succeeds on the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondents lack rights or legitimate interests.
In the Panel’s opinion, the following establish a prima facie case:
- the Complainant has not licensed or otherwise authorized the Respondents to use the Trade Mark;
- there is nothing to suggest on the available record that the Respondents might be commonly known by the Disputed Domain Name; and
- the Disputed Domain Name is not in use (it is a simply a holding page). This is not a legitimate noncommercial or fair use of the Trade Mark, nor does it constitute a bona fide offering of goods or services.
The Respondents had the opportunity to demonstrate that they have rights or legitimate interests in respect of the Disputed Domain Name, but did not do so. In the absence of a Response from the Respondents, the prima facie case established by the Complainant has not been rebutted, and the Complainant succeeds on the second element of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondents registered and are using the Disputed Domain Name in bad faith.
The Disputed Domain Name is not being actively used; it resolves to a blank page. Passive holding does not prevent a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, affirmed in subsequent cases such as Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273 and Atlas Copco Aktiebolag v. MKC Supply Inc, WIPO Case No. D2011-1844). The question is whether the Respondents’ passive holding of the Disputed Domain Name can be considered registration and use in bad faith, taking into account all the circumstances of the present case.
In light of the Complainant’s strong reputation, the Panel finds that it is more likely that the second Respondent had knowledge of the Petrobras brand when it registered the Disputed Domain Name. Where the reputation of a complainant in a given mark is significant and the mark has strong similarities to the domain name, the likelihood of confusion is such that bad faith on the part of the respondent may be inferred (see e.g. Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909 and cases cited therein). Here, the Panel can reasonably infer that the second Respondent registered the Disputed Domain Name in bad faith to make use of the reputation of the Complainant (at some stage).
Also, as demonstrated by the decisions cited in Section A. above, the Panel takes into consideration that the second Respondent has shown pattern of conduct of bad faith registration and use.
In light of the above, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <petrobrasusa.com> be transferred to the Complainant.
John Swinson
Sole Panelist
Date: January 24, 2014