Petróleo Brasileiro S.A. v sadasfas

WIPO Case No. D2024-3875

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Petróleo Brasileiro S.A. v. sadasfas

Case No. D2024-3875

1. The Parties

The Complainant is Petróleo Brasileiro S.A., Brazil, represented by Siqueira Castro Advogados, Brazil.

The Respondent is sadasfas, Afghanistan.

2. The Domain Name and Registrar

The Disputed Domain Name <petrobras.live> is registered with Dominet (HK) Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September information for the Disputed Domain Name which differed from the named Respondent (Alibaba.Com Singapore E-Commerce Private Limited) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 25, 2024, 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 September 26, 2024.
23, 2024. On September 24, 2024, the Center transmitted by email to the Registrar a request for

registrar verification in connection with the Disputed Domain Name. On September 25, 2024, the

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 3, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 23, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2024.

page 2

The Center appointed Colin T. O'Brien as the sole panelist in this matter on November 5, 2024. 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.

4. Factual Background

The Complainant was founded in 1953 and is active in the areas of energy, exploration, production, refining,
marketing and transportation of oil, natural gas, and derivatives. The Complainant owns more than
40 registrations for trademark PETROBRAS and variations before the Brazilian Trademark Office since the
1950s.

The Complainant also owns the following domain names <petrobras.com.br> registered on June 14, 1996, and <petrobras.com> registered on March 6, 1996.

The <petrobras.live> domain name was registered on July 9, 2024 (the “Disputed Domain Name”). At the time of filing the Complaint, the Disputed Domain Name resolved to a website with a WhatsApp and a Telegram group link for promoting investment services. Currently, the Disputed Domain Name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name.

The Complainant is the legitimate owner of numerous trademark and domain names registrations bearing
the word “PETROBRAS” in Brazil and abroad. The Disputed Domain Name reproduces the word
“PETROBRAS” in its entirety, resulting the Disputed Domain Name being thus, undeniable that it confusingly
resembles the Complainant’s trademark.

The Respondent clearly reproduces not only the wordmark PETROBRAS in the Disputed Domain Name, but also the visual identity (trade dress) comprised by the green, yellow and white “PETROBRAS BR” logo to promote its activities.

Due to the severity of the situation in which the Disputed Domian Name was engaged in promoting possibly fraudulent activities, the Complainant proceeded with a cease and desist takedown measure on July 19, 2024, via service provided by Apura Cyber Intelligence S/A, before both the domain’s registrar DOMINET HK in association with ALIBABA CLOUD and also CLOUDFARE services.

The Complainant verified that the Respondent is not commonly known as PETROBRAS, does not own any registered trademarks or trade names corresponding to the Disputed Domain Name. The Complainant has also not found anything that would suggest that the Respondent has been using the trademark PETROBRAS

in any other form that would justify rights or legitimate interest. Consequently, the Respondent may not claim
any rights established by common use.

The Complainant also clarifies that no license or authorization of any kind has been given by the Complainant to the Respondent to use the trademark PETROBRAS in any form, nor to seek registration of any domain name incorporating said mark. The Respondent is not authorized to promote the Complainant’s services and has never had a business relationship with the Complainant.

page 3

The Respondent has no prior rights or legitimate interest in the Disputed Domain Name, given that the Complainant’s registrations for trademark PETROBRAS in Brazil and abroad preceded in decades the registration of the Disputed Domain Name. The Respondent cannot reasonably sustain that it was intending

to develop a legitimate activity through the Disputed Domain Name, given that it registered the Disputed trademark.

The Respondent is currently not using the Disputed Domain Name in connection with a bona fide offering of goods or services, since it has intentionally chosen a domain name based on a registered trademark, exclusively in order to generate traffic to its website.

The Respondent advertised itself as an official Petrobras channel, directing users to a WhatsApp and Telegram group link, both instant messaging services, promoting investment services, as deliberate attempt to associate itself with the Complainant and to lead people to believe that its activities are related to and sponsored or, at the very least, endorsed by the Complainant.

It is obvious that the Respondent is using the Disputed Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated it owns registered trademark rights in the PETROBRAS mark. The TLD
“.live” is viewed as a standard registration requirement and as such is disregarded under the first element
confusing similarity test. Accordingly, the Disputed Domain Name is identical to a mark in which the
Complainant has rights. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third
Edition (“WIPO Overview 3.0”), sections 1.7 and 1.11.1, and F. Hoffmann-La Roche AG v. Domain Admin,

Privacy Protection Service INC d/b/a PrivacyProtect.org / Conan Corrigan, WIPO Case No. D2015-2316.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has presented a prima facie case that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and has not been commonly known by the Disputed Domain Name. The fact that the Respondent obtained the Disputed Domain Name years after the Complainant had begun using its globally known PETROBRAS mark indicates the Respondent sought to piggyback on the mark for illegitimate reasons. Further, the composition of the Disputed Domain Name carries a high risk of implied affiliation with the Complainant (WIPO Overview 3.0, section 2.5.1).

After a complainant has made a prima facie case, the burden of production shifts to a respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Here, the Respondent has provided no evidence of any rights or legitimate interests in the Disputed Domain
Name.

page 4

In the absence of any evidence rebutting the Complainant’s prima facie case indicating the Respondent’s
lack of rights or legitimate interests in respect of the Disputed Domain Name, the Panel finds that the

Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Disputed Domain Name was registered many years after the Complainant first registered and used its global PETROBRAS mark. The evidence on the record provided by the Complainant with respect to the extent of use and fame of its PETROBRAS mark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the Disputed Domain Name was registered, the Respondent undoubtedly knew of the Complainant’s PETROBRAS mark, and knew that it had no rights or legitimate interests in the Disputed Domain Name.

There is no reason for the Respondent to have registered the Disputed Domain Name containing the entirety of the PETROBRAS mark with the TLD “.live” other than to freeride the fame and good will of the Complainant’s trademark by creating a likelihood of confusion with such mark as to the source, sponsorship, affiliation, or endorsement.

Moreover, UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.

The Panel further notes, according to the evidence submitted by the Complainant, that the Respondent used the Disputed Domain Name to create a false website and Telegram page in order to scam unwitting visitors to the website thinking it was affiliated with the Complainant. This is additional evidence of the Respondent’s knowledge of the Complainant’s PETROBRAS mark and business when registering the Disputed Domain Name and its attempt to disrupt the Complainant’s business and to attract for its own commercial gain, Internet users to the Respondent’s website.

In light of the above, the Panel finds that the only plausible basis for registering and passively holding the bad faith, regardless of the current inactive state of the Disputed Domain Name.

Disputed Domain Name is for illegitimate and bad faith purposes. In view of section 3.3 of the

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

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 <petrobras.live> be transferred to the Complainant.

/Colin T. O'Brien/
Colin T. O'Brien
Sole Panelist
Date: November 19, 2024