WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Statoil ASA v. Bright, AK

Case No. D2014-1871

1. The Parties

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

The Respondent is Bright, AK of Port Harcourt, Nigeria.

2. The Domain Names and Registrar

The disputed domain names <statoileurope.com>, <statoil-uk.org> and <stattoil-ukmail.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 24, 2014. On October 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 25, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on October 31, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 21, 2014.

The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on December 8, 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 Statoil ASA is a Norwegian corporation established under Norwegian law.

The Complainant is an international energy company with 21,000 employees and extensive operations worldwide. The Complainant has been in business for over 40 years and is one of the leading providers globally of energy products and services.

The trademark STATOIL is widely known, as confirmed by the previous decisions under the UDRP, such as Statoil ASA v. Weiwei Qiu / PrivacyProtect.org, WIPO Case No. D2011-1752; Statoil ASA v. Domain Admin/ Management SO Hkg, WIPO Case No. D2012-2392; Statoil ASA and Statoil Fuel & Retail Aviation AS v. NA - Claudio Russo, WIPO Case No. D2013-0963; and Statoil ASA v, Bright, AK, WIPO Case No. D2014-1463.

The Complainant owns numerous trademark registrations for STATOIL all over the world ever since 1974, namely International registration no. 730092 and European Community trademark registration no. 003657871.

The Complainant's main website operates at "www.statoil.com".

The disputed domain names were registered on August 16, 2014 for the domain name <statoil-uk.org>, on September 10, 2014 for the domain name <statoileurope.com> and on June 19, 2014 for the domain name <stattoil-ukmail.com>.

5. Parties' Contentions

A. Complainant

The additional elements "uk", "europe", "ukmail" and a hypen in the disputed domain names, do not take away the confusing similarity of the disputed domain names with the Complainant's trademark. The word "uk" is commonly acknowledged as referring to the United Kingdom of Great Britain and Northern Ireland, a country in which the Complainant conduct business, and the word "europe" is also merely a geographical designation.

The word "mail" is a generic term commonly used in domain names, not least in abusive domain names used for spam or phishing purposes. The addition of descriptive elements to a registered trademark in a domain name will not prevent a finding of confusing similarity for the purposes of the UDRP.

Regarding the disputed domain name <stattoil-ukmail.com>, there is a misspelling of the Complainant's trademark.

The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the STATOIL mark in connection with a website or for any other purpose. The Respondent is 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 has not acquired any trademark or service mark rights in that name or mark.

The disputed domain names currently hold no Internet content of the Respondent. The Complainant claims that the Respondent's intention for registering the disputed domain names has been to use it for financial gain. The Complainant avers that it has strong reasons for concern that the disputed domain names are or will be used for illegal activities. The Complainant has previously reported for suspension and/or filed UDRP complaints for numerous domain names of similar character used for phishing purposes in the form of fake employment offer letters.

The Complainant contends that email records have been configured for all the disputed domain names subject to this Complaint. This indicates that the disputed domain names will also be used for sending out unsolicited email offers.

The mark STATOIL is well known worldwide and was so also at the time of registration of the disputed domain name. The Complainant conducts extensive business activities in Nigeria, the home country of the Respondent. The disputed domain names bear no relationship to the Respondent's name or its business. The registration, followed by a passive holding of a domain name when there is no way in which it could be used legitimately, can amount to use in bad faith. Here, the disputed domain names have no other meaning except for the reference to the name and trademark of the Complainant, and there is no way in which they could be used legitimately.

The Respondent has previously been subject to UDRP complaints, Petróleo Brasileiro S.A. - Petrobras v. AK Bright, WIPO Case No. D2013-2063 and Statoil ASA v, Bright, AK, supra, which is a further indication of bad faith. Although one previous case may not by itself be sufficient to prove bad faith resulting from the Respondent being engaged in a pattern of abusive registrations, the case referred to is a strong indication thereof.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules requires the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain names incorporate the Complainant's trademark and company name STATOIL in its entirety in association with the words "europe", "uk" and "mail". In this type of combination, it is clear that the trademark STATOIL stands out and leads the public to think that the disputed domain names are somehow connected to the owner of the registered trademark.

The addition of a "t" in the trademark part of the disputed domain name <stattoil-ukmail.com> is an obvious misspelling.

Previous UDRP panels have held that when a domain name wholly incorporates a complainant's registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g.,Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S.r.l., WIPO Case No. D2001-1206; Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282.

Therefore, the Panel finds that the disputed domain names are confusingly similar to the trademark STATOIL and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests. The Complainant submitted, inter alia, that the Respondent has neither a license nor any other permission to use the disputed domain names. The Respondent has failed to demonstrate such rights or legitimate interests. The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right or legitimate interest in the disputed domain names. It is clear that the Respondent has not demonstrated any bona fide offering of goods or services by its use of the disputed domain names and has not rebutted the Complainant's prima facie case. Nor has the Respondent shown that it has been commonly known by the disputed domain names.

The Panel further finds that given the use made of the disputed domain names, when the Respondent registered the disputed domain names it must have known the STATOIL trademark of the Complainant.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

The Panel is of the opinion that the Respondent must have been aware of the Complainant and its trademark rights when it registered the disputed domain names. The Panel is prepared to infer that the Respondent is taking advantage of the goodwill and reputation of the Complainant's trademark for commercial gain and it is well established that such use is evidence of bad faith. Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Universal Spheres Inc., WIPO Case No. D2010-0822. Further, such use clearly threatens to divert actual clients away from the Complainant and disrupt the Complainant's business.

As in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Ladbroke Group Plc v. Sonnoma International LDC, WIPO Case No. D2002-0131, after examining all circumstances surrounding the registration and use of the disputed domain names, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith. Accordingly the Panel finds in favor of the Complainant 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 <statoileurope.com>, <statoil-uk.org> and <stattoil-ukmail.com> be transferred to the Complainant.

Dilek Ustun Ekdial
Sole Panelist
Date: December 23, 2014