Petroliam Nasional Berhad (PETRONAS) v. Internet Prolink SA

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Petroliam

Nasional Berhad (PETRONAS) v. Internet Prolink SA

Case No.

D2001-0379

1. The Parties

1.1 The Complainant

in this administrative proceeding is PETRONAS, the acronym for Petroliam

Nasional Berhad, a company limited by shares incorporated in Malaysia,

with its registered address at Tower 1, PETRONAS Twin Towers, Kuala Lumpur

City Centre, 50088 Kuala Lumpur, Malaysia.

1.2 The Respondent

is Internet Prolink SA, ICC – CP 1863, Geneva 1215, Switzerland.

2. The Domain Name

and Registrar

The domain name in

dispute is <petronas.com>, registered with Network Solutions,

Inc., United States of America.

3. Procedural History

3.1 A Complaint

was submitted to the WIPO Arbitration and Mediation Center by e-mail on

December 21, 2000, and in hard copy on January 4, 2001.

3.2 A request

for Registrar verification was transmitted to the Registrar, Network Solutions

Inc., requesting it to: (a) confirm that the domain name in issue is registered

with Network Solutions Inc.; (b) confirm that the Respondent is the current

registrant of the domain name in dispute; (c) provide the full contact

details [i.e., postal address(es), telephone number(s), facsimile number(s),

e-mail address(es)] available in the Registrar’s Whois database for the

registrant of the disputed domain name, the technical contact, the administrative

contact and the billing contact; (d) confirm that the Uniform Domain Name

Dispute Resolution Policy ("the Policy") is in effect; and (e)

indicate the current status of the domain name.

3.3 Network Solutions

Inc., confirmed that the domain name in question was registered with Network

Solutions Inc., and that the Respondent was the current registrant of

the domain name registration. It also confirmed that the domain name is

currently in "Active" status. The Registrar also forwarded the

requested Whois details and confirmed that the Policy is in effect.

3.4 The WIPO Center was

satisfied with the formal requirements of the Policy, the Rules for Uniform

Domain Name Dispute Resolution Policy (the "Uniform Rules") and the

Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental

Rules"). The Panel has independently determined and agrees with the assessment

of the WIPO Center in this regard. The Complainant also paid on time and in

the required amount the fees for a sole Panelist.

3.5 On December

21, 2000, the Respondent via e-mail expressed its intention to transfer

the impugned disputed domain name to the Complainant.

3.6 On January

9, 2001, the Complainant sent an e-mail to the WIPO Center seeking a temporary

suspension of further proceedings, pending the actual transfer of the

domain name from the Respondent to the Complainant.

3.7 Despite several

reminders to the Respondent by the Complainant, the transfer was never

effectuated.

3.8 On March 15,

2001, the Complainant wrote to the Center asking that the Complaint be

activated. No formal deficiencies having been recorded on March 27, 2001,

a Notification of Complaint and Commencement of Administrative Proceedings

(the "Commencement Notification") was transmitted to the Respondent

(with copies to the Complainant,, Network Solutions, Inc and ICANN) setting

a deadline of April 15, 2001, by which time the Respondent could

file a response to the Complaint.

3.9 Having reviewed

the communications records in the case file, the Administrative Panel

finds that the WIPO Center has discharged its responsibility under paragraph

2(a) of the Uniform Rules "to employ reasonably available means calculated

to achieve actual notice to the Respondent".

3.10 On April

17, 2001, not having received any response, the WIPO Center sent the parties

a formal Notification of Respondent Default.

3.11 In view of

the Complainant’s designation of a single member panel, the WIPO Center

appointed the undersigned to serve as the sole Panelist. The Panel was

required to forward its decision to WIPO by May 15, 2001.

4. Factual Background

4.1 The Complainant,

Petroliam Nasional Berhad (PETRONAS), is Malaysia’s national petroleum

corporation. It is wholly owned by the Malaysian government and is the

sole concessionaire with the right and responsibility to develop and

add value to Malaysia’s petroleum resources.

4.2 PETRONAS

is engaged in a broad spectrum of petroleum and related value adding

business activities. The PETRONAS group operates in 22 countries all

around the world. The Complainant has been ranked as one among the world’s

500 largest corporations in the Fortune Global 500 listing. It is one

of the largest petroleum refining corporations, in terms of its profits

and returns.

4.3 In addition

to its core oil and gas activities, the Complainant is involved in several

other fields such as education, arts and sports.

4.4 The Complainant

has been involved over the years in several education and human resource

development activities. These include, setting up of an institute to

provide technical training for employment by Malaysian petroleum industries

called INSTEP; setting up of a technology university called the PETRONAS

Technology University (UTP); the establishing of an interactive science

discovery centre called PETROSAINS which is designed as an interactive

museum.

4.5 PETRONAS

also offers annual scholarship programmes to deserving students in Malaysia.

These include programmes for domestic study and overseas education as

well.

4.6 The Complainant

has also initiated several programmes and facilities for the development

of fine arts and culture. The PETRONAS Gallery was established to stimulate

the development of visual arts. It provides an avenue for artists to

display their artworks. The PETRONAS Performing Arts Group, a 90-member

group was established to promote the performing arts. Additionally,

the PETRONAS Philharmonic Hall, opened in 1998 is Malaysia’s first dedicated

classical concert hall and has been host to several performances since

then.

4.7 PETRONAS

also sponsors several major sporting events to promote its brand and

corporate image. The Complainant is the main sponsor of the Red Bull

– Sauber Petronas Formula Once Grand Prix racing team. Formula One,

being one of the biggest media events in the world, the Complainant

considers its involvement in the same to be an integral part of its

strategy seeking to promote and generate awareness about its brand and

to enhance its own technical capabilities in related fields. The home

pages of the Formula One team are http://www.redbull-sauber.ch and http://www.sauber-petronas.ch.

4.8 Additionally,

the Complainant also sponsors other racing teams such as the PETRONAS

Sprinta Team TVK motorcycle racing team, the PETRONAS EON racing team,

the PETRONAS Primas PX2 touring car team and the Team PETRONAS Syntium

Opel.

4.9 In its trade,

the Complainant uses the trademark and/or service mark PETRONAS. The

same appears on all its advertisements, promotional materials, websites,

properties, packaging, billboards, stationary and other items. The Complainant

has also over the years spent a considerable amount of money in creating

and promoting awareness in its mark PETRONAS, both nationally and internationally.

4.10 Further,

in order to protect and preserve its rights in the said trademark / service

mark, the Complainant has registered the mark on a global basis, primarily

in regions where it carries out its operations.

4.11 The Complainant

also owns and operates the website http://www.petronas.com.my ,

which contains information on the Complainant’s activities. The site

can be accessed worldwide as of March 1, 1996.

4.12 On October

17, 1999, the Respondent (through its administrative contact, Mickey Coggins)

wrote to the Complainant for the first time, asking if the Complainants

were interested in the impugned domain name. The Respondent then wrote

on October 13, 2000, mentioning that since he received some emails from

customers who had mistaken his site for that of the Complainants, he redirected

such mails to the Complainant’s site. The Complainant indicated their

interest in having the domain name transferred to them and even offered

to reimburse the Respondent for the registration and renewals. However

since there wasn’t any response from the Respondent, the Complainant filed

the present proceeding.

4.13 On the date

of filing the complaint, the Respondent volunteered to transfer the domain

name. The Complainant acting on this representation asked the center to

suspend proceedings. However owing to the Respondent’s inaction in effectuating

the transfer, the Complainant was constrained to activate the proceedings.

5. Parties’ Contentions

A. The Complainant

has delineated its contentions under three broad heads as below:

Identical or confusing

similarity

5.1 The domain name <petronas.com>

registered in the name of the Respondent uses the word or name PETRONAS and

is identical or confusingly similar to the Complainant’s trademark and/or service

mark in which the Complainant has rights.

Rights/Legitimate Interests

5.2 The name PETRONAS

refers to and is distinctive of the Complainant and of none other. The

Respondent does not carry out any activity under the said name, either

as a trademark or a service mark. Neither does the Respondent’s name bear

the word PETRONAS. Further, the Respondent provides internet related services

and in this respect the Complainant’s trademark or/and service mark does

not appear.

5.3 It can therefore

be gathered that the only rights/interests in the disputed domain name,

which the Respondent has, are:

(a) to resell,

rent or otherwise transfer the domain name registration to the Complainant

or to any of the Complainant’s competitors for valuable consideration

in excess of the Respondent’s out-of-pocket expenses directly related

to the domain name <petronas.com>.

(b) to prevent

the Complainant from reflecting the trade name or service mark in

a corresponding domain name;

(c) to misappropriate

the Complainant’s goodwill and reputation through the use of the said

domain name;

(d) to hold

the Complainant at ransom under the threat or potential passing off;

(e) to dilute

the distinctiveness of the Complainant’s trade name or service mark;

and/or

(f) to unlawfully

interfere with the Complainant’s trade and business and/or economic

interests.

Bad Faith

5.4 The acts and

conduct of the Respondent are calculated to deceive and mislead or are

likely to deceive and mislead the trade and public into believing that

the domain name <petronas.com> registered by the Respondent is that

of the Complainant or is otherwise howsoever associated, affiliated or

connected with the Complainant.

5.5 The aforementioned

acts and conduct of the Respondent are calculated to deceive and mislead

or are likely to deceive and mislead the trade and public into believing

that the domain name <petronas.com> is owned by an entity

that is named PETRONAS or is in some way connected to the word PETRONAS.

5.6 The acts of

the Respondent have deprived the Complainant of the right and opportunity

of having a domain name comprising its own trade name, which is international

in character. The Complainant has thereby suffered a loss of competitive

advantage and identity on the Internet.

5.7 The acts and

conduct of the Respondent leaves with it an instrument of deception, which

may be used to perpetrate a wrong at law. The use of the domain name in

dispute in any manner, by the Respondent would cause the Complainant’s

trade name to lose its distinctiveness and thereby devalue its goodwill

and reputation associated with the same and will also thereby dilute the

Complainant’s mark.

5.8 The Respondent

has passed off or attempted to pass off or is likely to pass off or enable

the passing off of; the domain name <petronas.com> as and for that

of the Complainant; its business and trade or that of any third party

as being connected howsoever with those of the Complainant through the

use of the domain name <petronas.com>.

5.9 The Respondent’s

acts constitute an infringement of the Complainant’s registered trademarks,

as also an unlawful interference with the commercial interests of the

Complainant.

5.10 Mr. Coggins

(the administrative contact for the impugned domain name) email messages

indicates that he was well aware of the Complainant’s rights in the trademark

PETRONAS. Although he claims to have registered the domain name to prevent

its appropriation by domain name "thieves", his actions indicate

otherwise. To begin with, he registered the domain name in the name of

the present Respondent which is a Swiss Company involved in Internet related

services and not in his own name. Despite the Complainant’s offer to refund

his registration and renewal expenses, he never transferred the domain

name to them.

5.11 The Respondent’s

actions of redirecting the impugned website and the emails to the Complainant’s

website, petronas.com.my, is calculated o mislead or deceive the public

into believing that the impugned website belongs to the Complainant.

5.12 Acting on

the Respondent’s representations that they would transfer the domain name

to the Complainant, the Complainant suspended the proceedings and suffered

delay and detriment, owing to the Respondent not having done so.

5.13 The Complainant

therefore states that the domain name petronas.com was registered

and is being used in bad faith by the Respondent.

B. The Respondent

has not filed any response in these proceedings.

6. Discussions

and Findings

6.1 Paragraph

4(a) of the Policy requires the Complainant to prove the following:

a) that the

domain name registered by the Respondent is identical and confusingly

similar to a trademark or service mark in which the Complainant has

rights; and

b) that the

Respondent has no rights or legitimate interests in respect of the

domain name; and

c) the domain

name has been registered and is being used in bad faith.

6.2 The panel

has decided a similar case, Petroliam Nasional Berhad (PETRONAS)

v. Daniela Naidu, Case No. D2000-1777, where the panel found the Complainant

to have exclusive trade/service mark rights in the name PETRONAS and had

ordered that the domain name be transferred to the Complainant. The facts

of this case are similar. Applying the UDRP to the facts of this case,

the panel finds as follows:

a) The

Complainant has a well known trade and service mark, "Petronas",

registered in numerous countries and used extensively in relation

to diverse products and services. The domain name is identical to

this mark, hence the first element of the Policy is satisfied.

b) The Respondent

has not filed a Response and the averments of the Complainant have,

therefore, not been contradicted or met. In the absence of any response,

the panel is inclined to agree with the contention of the Complainant

that the Respondent has no rights/ legitimate interests in the domain

name. The Respondent, which is a Swiss Company involved in Internet

related services is not known by the name PETRONAS and neither has

it used this name in connection with any goods/services.

c) The

fame and reputation of the name PETRONAS coupled with the fact that

the Respondent has not filed a response show bad faith. The Respondent

had vide its emails admitted knowledge of the Complainant’s trademark.

Even otherwise, the Complainant has substantial presence in Switzerland

(the company has a 40% stakeholding in Sauber Petronas Engineering

AG, which is a company located in Switzerland), and it is therefore

unlikely that the Respondent had no knowledge of the Complainant’s

rights in PETRONAS.

d) The

Respondent had vide his letter dated October 17, 1999, stated, "if

you want this domain, please let me know. I have been paying for it

for years"; Implicit in this letter is the demand for money

in excess of out of pocket costs incurred in relation to registration

of the domain name. The panel therefore infers bad faith from this

as well.

e) Although

Mr. Mickey Coggins, (the administrative contact for the impugned domain

name) had claimed that he registered the domain name to prevent its

appropriation by domain name "thieves", his actions indicate

otherwise. To begin with, he registered the domain name in the name

of the present Respondent, and not in his own name. Despite the Complainant’s

offer to refund his registration and renewal expenses, he never transferred

the domain name to them. The Respondent’s actions of redirecting the

impugned website and the emails to the Complainant’s website, petronas.com.my,

show that he does not intend to use the website in connection with

a bonafide offering of goods/services. Rather the sole aim of the

registration is to misappropriate the reputation associated with the

Complainant’s famous trademark PETRONAS.

f) The Respondent

misled the Complainant and the WIPO Center as to the transfer of the

said disputed domain name for about three months (December 21, 2000

to March 15, 2001). During this period, the Respondent, despite several

reminders, never initiated any steps to transfer the domain name.

Rather it appears that his sole intention was to delay the UDRP process

that had been initiated by the Complainant. This again reflects bad

faith on the part of the Respondent.

7. Decision

For all the foregoing reasons,

the Panel decides that the domain name registered by the Respondent is identical

to the trade and service mark in which the Complainant has rights, that the

Respondent has no rights or legitimate interests in respect of the domain name

at issue, and that the Respondent’s domain name has been registered and is being

used in bad faith.

Accordingly, pursuant to

Paragraph 4(i) of the Policy, the Panel requires that the registration of the

impugned domain name be transferred to the Complainant.

Pravin Anand

Sole Panelist

Dated: May

16, 2001

More cases by this complainant

• Petroliam Nasional Berhad (PETRONAS) v. Petronasgas.com, Inc. — D2002-0709 · petronasgas.com · Transfer · 18 Sept 2002
• Petroliam Nasional Berhad (PETRONAS) v. Daniela Naidu — D2000-1777 · petronas.net · Transfer · 01 Mar 2001