WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA v. Andrew May
Case No. D2013-2092
1. The Parties
The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Andrew May of Anderson, Neslpruit, South Africa.
2. The Domain Name and Registrar
The disputed domain name <uk-statoil.com> (the “Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2013. On December 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 4, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 5, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 5, 2013, replacing the named Respondent by the newly identified registrant.
The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on December 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2013.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on January 13, 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.
The Panel notes one of the two written notices sent to the Respondent was undelivered because the address provided by the Respondent is false.
4. Factual Background
The Complainant, Statoil ASA, is an international energy company headquartered in Norway.
The Complainant is the owner of trademark registrations for STATOIL in many jurisdictions. It is inter alia the owner of Community Trademark Registration STATOIL No. 003657871 designating products and services in classes 1, 4, 17, 35, 37, 39, 40 and 42 filed on February 10, 2004 and registered on May 18, 2005. It also owns International Registration STATOIL No. 730092 designating goods and services in classes 1, 4, 17, 39 and 42 registered on March 7, 2000.
The Domain Name was registered on September 1, 2013. According to the Complainant, the Domain Name “currentlyholds no Internet content of Respondent”.
At the date of the Center’s formal compliance check, no website can be accessed at “www.uk-statoil.com”, the domain name pointed to a “Google page of error”.
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 Domain Name <uk-statoil.com> is identical to the Complainant’s trademark and business name STATOIL.
The trademark STATOIL enjoys protection through several hundred registrations worldwide including Community Trademark Registration STATOIL No. 003657871 and International Registration STATOIL No. 730092.
As confirmed by previous UDRP decisions, the trademark STATOIL is a highly well-known trademark.
The addition of the element “uk-”, which is a descriptive element commonly acknowledged as referring to the United Kingdom of Great Britain and Northern Ireland, does not take away the confusing similarity of the Domain Name with the trademark STATOIL. It may even add confusion.
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name.
The Respondent has no affiliation or connection with the Complainant and did not receive any license or other authorization to use the trademark STATOIL in connection with a website or for any other purpose. The Respondent is not using the Domain Name in connection with any bona fide offering of goods or services, it is not generally known by the Domain Name, and has not acquired any trademark or service mark rights in that name or mark.
As the Domain Name holds no Internet content, it can be assumed that its intention is to sell the Domain Name or use it for financial gain by attracting Internet users to the website.
The Complainant is concerned that the Domain Name might be used for illegal activities and in particular for phishing attempts and spam as it has already occurred with domain names including its trademark STATOIL and “uk”.
(iii) The disputed domain name was registered and is being used in bad faith.
The trademark STATOIL is well-known worldwide and was so at the time of the registration of the Domain Name.
The 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 fact that the Respondent was hiding its identity behind a privacy protection service is also a further indication of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it is the owner of numerous registrations throughout the world for the trademark STATOIL.
Ignoring the generic Top Level Domain (gTLD) “.com”, the Domain Name consists of the term “statoil” together with the addition of “uk”. The Panel accepts the Complainant’s submission that the addition of this descriptive geographical term does not serve to distinguish the Domain Name from the Complainant’s trademark and that it may add to the likelihood of confusion since the Complainant conducts business in the United Kingdom.
Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has submitted that the Respondent has no rights or legitimate interests in respect of the Domain Name and that, in particular, the Respondent is unable to establish any of the criteria set out under paragraph 4(c) of the Policy that may demonstrate such rights or legitimate interests.
The Complainant has also invoked a risk of illegal activities under the Domain Name but does not provide supportive documents, evidencing a materialization of this risk. Nevertheless, the Complainant has contended it has experienced spam and phishing attempts in the past from domain names reproducing its trademark STATOIL combined with “uk”.
While it was open to the Respondent to reply to the Complainant’s contentions, it has chosen not to do so and has not, therefore, put forward any evidence of rights or legitimate interests in the Domain Name. Nor is there any other evidence available to the Panel that the Respondent has any such rights or legitimate interests.
The Panel finds that the Complainant has made a prima facie case that the Respondent’s lack of rights or legitimate interests.
The Panel considers that in the present case the Respondent does not have any rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Panel accepts the Complainant’s submission that the Complainant’s trademark is well-known and concludes that the Respondent knew or should have known the Complainant’s trademark at the time it registered the Domain Name.
The Domain Name is inactive. However, as previously held, the passive holding of a domain name does not prevent a finding of bad faith in certain circumstances. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The notoriety of the Complainant is one factor. Besides, the Panel considers the use of a proxy service in combination with a false postal address as a sign of the Respondent’s bad faith his. The Respondent has failed to provide accurate contact details and tried to evade its responsibilities.
Further, the Respondent has chosen not to submit any arguments or evidence to the contrary, or to contest the Complainant’s claims and the Panel is unable to conceive any legitimate basis for the Respondent’s registration and use of the Domain Name.
In view of the above, the Panel also finds, based on the available evidence, that the Respondent has registered and is using the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <uk-statoil.com> be transferred to the Complainant.
Date: January 27, 2014