WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA v. Ken Frank
Case No. D2016-0658
1. The Parties
The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB of Stockholm, Sweden.
The Respondent is Ken Frank of Port Harcourt, Nigeria.
2. The domain name and registrar
The disputed domain name <statoilgasuk.com> ("Domain Name") is registered with Namesilo, LLC (the "Registrar").
3. Procedural history
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 5, 2016. On April 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. The same day, the Registrar transmitted its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name to the Center.
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 and 4, the Center formally notified the Respondent of the Complaint and the proceeding commenced on April 19, 2016. In accordance with the Rules, paragraph 5, the due date for the Respondent to file a Response was May 9, 2016. The Respondent did not submit a response. Accordingly, the Center notified the parties of the Respondent's default on May 11, 2016.
The Center appointed Marylee Jenkins as the sole panelist in this matter on May 24, 2016. 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
Based on the review of the uncontested evidence, the Panel determines that the Complainant is the owner of more than one hundred trademark registrations for STATOIL and STATOIL formative marks in over a dozen countries throughout the world, including in Norway, the European Union, the United States of America and Nigeria (individually and collectively the "Complainant's Marks"). For instance, International Trademark No. 730092 for the mark STATOIL registered on March 7, 2000 for goods and services in classes 1, 4, 17, 39 and 42. The Complainant also owns numerous domain name registrations that incorporate the Complainant's Marks, including <statoil.com> (registered on April 21, 1995) along with corresponding websites, that are used by the Complainant to market, among other things, petroleum and gas products and services under the STATOIL brand.
The Respondent registered the Domain Name <statoilgasuk.com> on December 10, 2015. There is currently no website accessible at the Domain Name.
5. Parties' contentions
The Complainant states that it is an global energy company with 21,000 employees and extensive operations worldwide. The Complainant states that it has been in business for over 40 years and is one of the leading global providers of energy products and services.
The Complainant states that it is the owner of all rights in and to the Complainant's Marks. Moreover, the Complainant states that it owns several hundred trademark registrations directed to the STATOIL mark in more than a dozen countries and territories, the first one being registered in 1974 (Norwegian Trademark Reg. No 90221, which is no longer in force). The Complainant has further asserted that the mark STATOIL is a highly well-known and reputable, citing for support 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; and Statoil ASA v. Michael Bradford, WIPO Case No.D2014-1953.
The Complainant asserts that it has prior rights in the Complainant's Marks since its trademark was first registered decades prior to the registration of the Domain Name and that Complainant has not authorized, licensed, or permitted the Respondent to use the Complainant's Marks.
The Complainant further asserts that it also owns multiple domain name registrations that incorporate the Complainant's Marks, including <statoil.com> (registered on April 21, 1995), which is used by the Complainant to market petroleum and other gas-related products and services under the STATOIL brand. The aforementioned domain name was registered more than 20 years prior to the Respondent's registration of the Domain Name <statoilgasuk.com>.
The Complainant asserts that the Domain Name is identical or highly similar to the Complainant's Marks, and that appending the word combination "gasuk" (i.e., "gas" and "uk") in a domain name that otherwise consists of the Complainant's Marks in their entirety does not add distinctiveness to the combination. The Complainant further states that the addition of descriptive elements is insufficient to avoid confusing similarity, and instead is likely to reinforce the relationship, because the additional term "gas" refers to one of the Complainant's main products, and the geographical term "uk" refers to a territory in which the Complainant conducts business.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that 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. Moreover, the Complainant asserts that the Respondent is not using the Domain Name in connection with any bona fide offering of goods or services, is not generally known by the disputed Domain Name, and has not acquired any trademark or service mark rights in that name or mark. The Complainant alleges that the disputed Domain Name does not host an accessible website, and that email (MX) records have been configured for the Domain Name, suggesting that the Domain Name may be configured for sending out unsolicited email offers.
The Complainant states that the Respondent has registered and used the Domain Name in bad faith, citing to the worldwide notoriety of the Complainant's Marks at the time of registration and the fact that the Domain Name appears to bear no relationship to the Respondent's name or its business. Moreover, the Complainant asserts that the disputed Domain Name has no other meaning except for being the name and trademark of the Complainant.
The Respondent did not file a response with respect to this proceeding.
6. Discussion and findings
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent's default as the Panel considers appropriate. Nevertheless, the Panel may rule in the Complainant's favor only after the Complainant has proven that the above elements are present.
A. Identical or confusingly similar
Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel finds that the Complainant has provided sufficient evidence to establish that it is the owner of and has rights in and to the Complainant's Marks.
The second-level domain of the Domain Name incorporates the Complainant's trademark STATOIL together with the descriptive term "gas" and the geographically descriptive term "uk" (i.e., an abbreviation for the United Kingdom of Great Britain and Northern Ireland). As noted above, the Complainant has offered extensive evidence that the Complainant's Marks have been used worldwide, including in the United Kingdom, in connection with the sale of petroleum, gasoline or gas-related products. The addition of such descriptive terms in combination with the Complainant's Marks in the second-level domain does not differentiate the Domain Name from the Complainant's Marks. Rather it suggests that the Respondent had knowledge of the Complainant's Marks as well as its businesses, its domain name registrations and its corresponding web sites when the Respondent registered the Domain Name in this proceeding. The Panel therefore concludes that the Domain Name is confusingly similar to the Complainant's Marks in which the Complainant has rights and that paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the panel to be proven based on the evaluation of all of the evidence presented, can demonstrate the domain name holder's rights to or legitimate interests in a domain name. These circumstances include:
(i) before any notice to the holder of the dispute, the holder's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or
(iii) the domain name holder is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
No evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent was using or was making demonstrable preparations to use the Domain Name in connection with any type of bona fide offering of goods or services or that the Respondent has been commonly known, as an individual, business or otherwise, by the Domain Name. In addition, no evidence has been presented to suggest that the Complainant has ever allowed or permitted the Respondent to register or use any domain name incorporating the Complainant's Marks in any fashion. Rather it is apparent that the Complainant had well‑established rights in the Complainant's Marks at the time of the Respondent's registration of the Domain Name and that the Respondent nevertheless registered the Domain Name. The Panel therefore finds that the Respondent does not have any rights or legitimate interests in the Domain Name and that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the domain name holder includes, but is not limited to:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the holder's documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the holder's website or location.
No evidence has been presented that the Respondent is commonly known by the Domain Name or that the Complainant has, at any time, assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the Complainant's Marks. Further, no evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent had been using or was making demonstrable preparations to use the Domain Name in connection with any type of bona fide offering of goods or services. Rather, the Panel finds that the Respondent clearly had knowledge of the Complainant's Marks when registering the Domain Name. This finding is supported by the evidence showing that the Domain Name were registered by the Respondent well after the Complainant's significantly earlier dates of first use and first use in commerce of the Complainant's Marks. Moreover, the Complainant has provided evidence that its STATOIL mark is well-known and used extensively around the world, including in Nigeria, the country which is listed by the Respondent in the registration details for the Domain Name.
The Complainant has also asserted and submitted uncontested evidence to show that the Respondent currently offers neither goods nor services at the Domain Name and that the Domain Name does not resolve to a website or other online presence. The Complainant accordingly asserts, without challenge from the Respondent, that such constitutes passive use or holding of the Domain Name. It is additionally noted that no evidence has been provided by the Respondent of any actual or contemplated legitimate noncommercial, good faith or fair use of the Domain Name since it was registered. Further, the Respondent has provided fictitious contact information in its registration details for the Domain Name based upon the failed attempt of the Center to deliver the Notification and the Complaint by courier to the Respondent's listed address.
Viewing the Complainant's assertions and the uncontested evidence in their entirety, the Panel determines that the Respondent's inactions and actions together result in the finding that the Domain Name was registered and is being used in bad faith. The Panel therefore concludes that paragraph 4(a)(iii) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name<statoilgasuk.com> be transferred to the Complainant.
Date: June 8, 2016