WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Statoil ASA v. Perfect Privacy, LLC / Names Redacted

Case No. D2014-1417

1. The Parties

The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.

The Respondents are Perfect Privacy, LLC of Jacksonville, Florida, United States of America ("US") and five individuals (Names Redacted).

2. The Domain Names and Registrar

The disputed domain names <statoilemailuk.com>, <statoilmail-eu.com>, <statoilmail-nig.com>, <statoil-ukmail.com>, <statoiluk-mail.com> (the "Disputed Domain Names") are registered with Register.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 18, 2014. On August 18, 2014 and September 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On August 18, 2014 and September 5, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on August 27, 2014 and September 8, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to amend the Complaint. The Complainant filed the first amended Complaint on September 1, 2014 and the second amended Complaint on September 12, 2014.

The Center verified that the second 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 proceeding commenced on September 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for a Response was October 7, 2014. The Respondents did not submit any formal response.

On September 24, 2014, one of the Respondents (whose names have been redacted for privacy reasons) emailed the Center advising that it did not know why it had been sent materials and disclaiming any knowledge of or interest in the relevant Disputed Domain Name.

The Center appointed John Swinson as the sole panelist in this matter on October 17, 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.

4. Factual Background

The Complainant is Statoil ASA of Stavanger of Norway, an international energy company.

The Complainant owns a large number of registered trade marks in different countries for STATOIL, or which incorporate the term "Statoil", the earliest of which was registered in Norway on December 28, 1989. For the purpose of this decision, these will be collectively referred to as the "Trade Mark".

The Respondents are the privacy service, Perfect Privacy, LLC and a number of individuals whose names have been redacted for the reasons set out in Procedural Issues below.

The Respondents did not file a Response, and consequently little additional information is known about the Respondents.

The Disputed Domain Names were registered as follows:

- <statoiluk-mail.com> and <statoilmail-nig.com> on April 29, 2014;

- <statoil-ukmail.com> on May 1, 2014;

- <statoilemailuk.com> on May 19, 2014; and

- <statoilmail-eu.com> on May 26, 2014.

There is no active website associated with any of the Disputed Domain Names.

5. Parties' Contentions

A. Complainant

The Complainant's contentions are as follows.

Respondents

Although the WhoIs records show that the Disputed Domain Names are registered to various individual Respondents, the Complainant submits that the Disputed Domain Names have actually been registered by a single entity, and the stated registration details are false.

The Complaint should be allowed to proceed against multiple respondents as there is an element of connection and common control. The same privacy service has been used in relation to each of the Disputed Domain Names.

Identical or Confusingly Similar

The Disputed Domain Names are identical or confusingly similar to the Trade Mark.

The additional terms included in the Disputed Domain Names (i.e. "uk", "eu", "mail" and "email") are descriptive terms which add to the confusing similarity to the Trade Mark. The terms "mail" and "email" are commonly used in abusive domain names, and "uk" and "eu" are geographical identifiers which refer to the United Kingdom of Great Britain and Northern Ireland and Europe, the areas in which the Complainant operates.

Rights or Legitimate Interests

The Respondents have no rights or legitimate interests in respect of the Disputed Domain Names.

The Respondents are not authorized to use the Trade Mark for any purpose. The Respondents are not using the Disputed Domain Names in connection with any bona fide offering of goods or services, is not generally known by the Disputed Domain Names, and have not acquired any trade mark rights in respect of the Trade Mark.

Registered and Used in Bad Faith

The Respondent has registered and used the Disputed Domain Names in bad faith.

The Complainant has received a number of reports from individuals claiming that the Disputed Domain Names have been used in phishing scams. Emails have been sent using some of the Disputed Domain Names claiming to be from HR officers working for the Complainant and providing fake employment offers; the Complainant has identified a number of links between the Disputed Domain Names, and assumes that the remaining Disputed Domain Names are intended to be used for the same purpose.

The Complainant also believes that the Disputed Domain Names are all held by the same unidentified third party who has falsely used the names and personal information of the individuals listed as registrants under the veil of a privacy service.

B. Respondent

The Respondents did not formally reply to the Complainant's contentions.

6. Discussion and Findings

To succeed, 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 Names are 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 Names; and

(iii) the Disputed Domain Names have been registered and are being used in bad faith.

The onus of proving these elements remains on the Complainant even though the Respondents have not filed a Response.

A. Procedural Issues

From the case file and the circumstances of the case, the Panel finds it reasonable to infer that the Disputed Domain Names have been registered by a third party without the knowledge of the individuals who have been identified by the privacy service as the registrants of the various Disputed Domain Names. As such, the Panel has redacted the names of these individuals from its decision (see, e.g., Elkjøp Nordic A/S v. Name Redacted, WIPO Case No. D2013-1285 and cases cited therein).

The Complaint has been filed against multiple Respondents. The panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 comprehensively addresses this issue. To summarize, consolidation of respondents is appropriate where there is common control of various domain names. In this case it appears that a single person or entity has registered all of the Disputed Domain Names using either stolen or false details. Commonality is evidenced by the similarity of the Disputed Domain Names, the inactivity of all of the Disputed Domain Names and the use of the same Registrar and privacy service. The Disputed Domain Names were also all registered within a month of each other. The Panel also notes that this consolidation of Respondents will be procedurally efficient. The Panel is of the view that this consolidation will not prejudice the rights of any party.

The Respondents' failure to file a response does not automatically result in a decision in favour of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondents' default.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to the Trade Mark.

For the purposes of testing confusing similarity, it is well established that the generic Top-Level Domain, ".com", can be ignored (see, e.g., Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698).

The Disputed Domain Names are confusingly similar to the Trade Mark. In all of the Disputed Domain Names, the Trade Mark has been wholly incorporated. In each case, the Trade Mark has been combined with descriptive terms (i.e. "mail" or "email") and geographical abbreviations (i.e. "UK" (being the United Kingdom) or "EU" (being Europe)). While "NIG" is not a recognized geographical abbreviation, the Complainant is known to operate in Nigeria, so an association between the Complainant and this country can be readily made.

It is more likely than not that a person would interpret the geographical abbreviations and the descriptive words "mail" or "email" as subordinate to the Trade Mark, which is the dominant and distinctive part of each of the Disputed Domain Names (see, e.g., Statoil ASA v. N/A Alex, WIPO Case No. D2013-0713).

In light of the above, the Complainant succeeds on the first element of the Policy.

C. Rights or Legitimate Interests

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 Names. The Complainant is required to make out a prima facie case showing that the Respondents lack rights or legitimate interests.

The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:

- No Respondent has used, or made demonstrable preparations to use, any Disputed Domain Name in connection with a bona fide offering of goods or services. There is currently no active website at any of the Disputed Domain Names.

- The Respondents have not been commonly known by the Disputed Domain Names.

- The Complainant has not authorized or licensed any Respondent to use the Trade Mark.

- The Respondents have not been making a legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain. The Disputed Domain Names are being passively held.

There is some evidence that the Disputed Domain Names <statoiluk-mail.com> and <statoil-ukmail.com> have been used to send emails, which look to be from the Complainant. This use does not give rise to rights or legitimate interests.

The Respondents had the opportunity to demonstrate its rights or legitimate interests, 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.

In light of the above, the Complainant succeeds on the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondents registered and subsequently used the Disputed Domain Names in bad faith.

The true registrant of the Disputed Domain Names has used a privacy service to hide its identity. It appears likely that the true registrant has also used either stolen or false details to register the Disputed Domain Names. It is the conduct of this unknown party that is relevant to the Panel's assessment of bad faith.

In light of the significant reputation of the Complainant and the Trade Mark (which has been acknowledged by previous UDRP panels), it is likely that the true registrant had knowledge of both the Complainant and the Trade Mark at the time the Disputed Domain Names were registered. Where the reputation of a complainant in a given mark is significant and the mark has strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith 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 true registrant sought to make use of the reputation of the Complainant (at some stage) and registered the Disputed Domain Names in bad faith.

Further, while the Disputed Domain Names appear not to resolve to a website, there is evidence that at least two of them (<statoiluk-mail.com> and <statoil-ukmail.com>) have been used in relation to a phishing scheme and have been used as email addresses. This constitutes bad faith use.

Under these circumstances, the use of a privacy service also supports a finding of bad faith (see, e.g., The Uder Company Pty Ltd and Stay In Bed Milk & Bread Pty Ltd (trading as Aussie Farmers Direct) v. PrivacyProtect.org, Domain Admin, ID # 10760, WIPO Case No. D2012-0924 and cases cited therein).

In the absence of a Response and any evidence rebutting bad faith registration and use, the Panel finds that the Complainant has succeeded on the third element 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 Names, <statoilemailuk.com>, <statoilmail-eu.com>, <statoilmail-nig.com>, <statoil-ukmail.com>, <statoiluk-mail.com>, be transferred to the Complainant.

John Swinson
Sole Panelist
Date: October 30, 2014