WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA v. IVAN RASHKOV
Case No. D2013-1583
1. The Parties
The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is IVAN RASHKOV of Plovdiv, Bulgaria.
2. The Domain Name and Registrar
The disputed domain name
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 10, 2013. On September 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 2013, 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 September 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2013.
The Center appointed Marilena Comanescu as the sole panelist in this matter on October 11, 2013. 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.
The language of the proceeding is English.
4. Factual Background
The Complainant Statoil ASA is a Norwegian based corporation, with 21,000 employees and extensive operations worldwide. According to the Complainant, it is developing its activity under the STATOIL mark for over 40 years, the Complainant being one of the worldwide leading providers of energy products and services.
The trademark STATOIL is well-known, as confirmed by the previous decisions under the UDRP, such as Statoil ASA v. Weiwei Qiu / PrivacyProtect.org, WIPO Case No. D2011-1752 for the domain name
The Complainant owns numerous worldwide trademark registrations for STATOIL ever since 1974. The mark STATOIL is also protected in Bulgaria, such as the Community trademark registration No. 003657871 for the word STATOIL filed since February 10, 2004 and registered on May 18, 2005 for goods and services in the International Classes 1, 4, 17, 35, 37, 39, 40, 42.
The Complainant’s main website operates at "www.statoil.com".
The disputed domain name
5. Parties' Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) The disputed domain name
The disputed domain name is identical to the Complainant’s trademark STATOIL and business name. As confirmed by previous UDRP decisions, STATOIL mark enjoys the status of a well-known trademark.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent has no affiliation or connection with the Complainant and did not receive any license or other authorization to use the STATOIL trademark in connection with a website or for any other purpose.
The Respondent does not fall under the circumstances listed by paragraph 4(c) of the Policy.
At the time of drafting the Complaint, the disputed domain name was inactive. Accordingly, the Complainant may assume that the Respondent's intention for registering the disputed domain name was, either to sell the disputed domain name to the Complainant, or to otherwise use for its illegal financial gain. As well, the Complainant is concerned that the disputed domain name may be used in relation to illegitimate activities such as phishing attacks and spam emails sent from email addresses using the trademark STATOIL.
(iii) The disputed domain name was registered and is being used in bad faith.
STATOIL represents the Complainant's business name and trademark. STATOIL trademark is well-known worldwide well before the Respondent registered the disputed domain name.
The disputed domain name bears no relationship to the Respondent’s name or business.
It is clear from previous UDRP decisions that registration in bad faith, followed by 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.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel that the following three circumstances are cumulatively met in order to obtain the transfer or cancellation of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent does not have rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used by the Respondent in bad faith.
The Respondent’s failure to respond does not automatically result in a decision in the favor of the Complainant, the latter must establish each of the three elements provided by paragraph 4(a) of the Policy, above listed.
Consequently, the Panel shall further analyze the eventual concurrence of these circumstances in the present case.
A. Identical or Confusingly Similar
There are two requirements that a complainant must establish under this element, namely: that it has rights in a trademark, and, if so, that the disputed domain name is identical or confusingly similar to its mark.
The Complainant has rights in the STATOIL trademark, holding registrations worldwide, including in Bulgaria where the Respondent appears to be located.
The disputed domain name
It is well established in decisions under the UDRP that indicators for top level domains (e.g., ".pro", ".info", ".com", ".org") are typically irrelevant to the consideration of identity or confusing similarity between a trademark and a domain name.
Accordingly, the Panel finds that the first element of the Policy is established, and the Complainant has proven that the disputed domain name
B. Rights or Legitimate Interests
The Complainant has provided a prima facie case under this element of the Policy showing that it has had no relationship with the Respondent and has not granted the Respondent any right to register and use its STATOIL trademark. Therefore, in line with prior UDRP decisions, the burden of production on this element shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name. Although properly notified by the Center, the Respondent failed to submit any response in the present procedure. Considering other relevant circumstances of a matter, the silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the disputed domain name. See also Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S, WIPO Case No. D2000-0011.
Further, there is no evidence before the Panel to suggest that the Respondent has made a bona fide use of the disputed domain name, or has been known by this disputed domain name, or is making any legitimate noncommercial or fair use of the disputed domain name.
According to the records in this case, the disputed domain name is inactive. Passive holding of a disputed domain name incorporating a third party well-known mark does not normally amount to a bona fide use. It was established even since the beginning of the UDRP that "inaction" / "passive holding" can, in certain circumstances, constitute bad faith use (see CBS Broadcasting Inc. v. Edward Enterprises, WIPO Case No. D2000-0242).
For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires proof of bad faith in both the registration and use of the disputed domain name.
When assessing the bad faith in the registration requirement, the following should be considered (1) whether the Respondent knew of the Complainant and its trademark, and (2) whether the Respondent targeted the Complainant to benefit from confusion generated by the similarity between the disputed domain name and the trademark (see Avon Products, Inc. v. Mary Ultes, WIPO Case No. D2009-0471).
The Complainant’s trademark STATOIL and corresponding business name have been used and registered worldwide since 1974, STATOIL being a protected trademark in Bulgaria since 2007 (when Bulgaria joined the European Union and the Community Trademark No. 003657871 became valid in this country).
The STATOIL trademark has no meaning in the energy industry other than to designate the Complainant’s trademark and company name. According to the previous UDRP decisions cited in Section 4 above, the STATOIL trademark has become well-known in the markets it penetrated and for the goods and services it is protected for.
The disputed domain name
From the above, the Panel concludes that indeed the Respondent had knowledge of the Complainant’s trademark and business and incorporated the STATOIL trademark in the disputed domain name in order to create confusion and somehow obtain commercial gain from such confusion, and/or to disrupt the Complainant’s business.
Further, the Respondent chose not to participate in these proceedings and has not contested any of the allegations made by the Complainant, and did not provide any evidence whatsoever of any legitimate noncommercial, or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant’s trademark. Such passive attitude of the Respondent can be considered further evidence of bad faith. See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Kabushiki Kaisha Toshiba v. Shan Computers, WIPO Case No. D2000-0325; Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
At the same time, the Respondent has failed to provide accurate contact details to the Registrar as the post address and fax number provided in the contact details were inaccurate. Along with other circumstances in a case, the supplying of an incorrect or incomplete address by the respondent to the registrar can be considered a sign of bad faith. See also Ticketmaster Corporation v. Dmitri Prem, WIPO Case No. D2000-1550; Francesco Totti v. Jello Master, WIPO Case No. D2002-0134; BellSouth Intellectual Property Corporation v. Real Yellow Pages, WIPO Case No. D2003-0413.
At the time of drafting the Decision, the disputed domain name was still inactive. As previously mentioned, the passive holding can, in certain circumstances, constitute bad faith use. In the present case, the Respondent registered a domain name reproducing exactly a third party’s well-known trademark and kept the corresponding website inactive for several years; failed to provide accurate contact details to the Registrar; chose not to participate in the UDRP procedure and thus failed to provide any arguments in its defense.
For all these reasons, the Panel finds that the third element of the Policy is established on the record in these proceedings, and accordingly that the disputed domain name was registered and is being used in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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
Date: October 21, 2013