WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA v. Fichambers, Esq Francis
Case No. D2013-2105
1. The Parties
The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Fichambers, Esq Francis of Accra, Ghana.
2. The Domain Name and Registrar
The disputed domain name <ukstatoil.com> (the “Domain Name”) is 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 December 4, 2013. On December 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 5, 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 December 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2014.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on January 14, 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 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 4, 2013.
According to the Complainant, the Domain Name “currently holds no internet content of Respondent”. At the date of the Center’s Notification of Complaint, the Domain Name did not resolve to an active website.
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 <ukstatoil.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 number 3657871 and International Registration STATOIL number 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 (“United Kingdom”), does not take away the confusing similarity of the Domain Name with the trademark STATOIL. It may even add confusion, in view of the fact that the Complainant conducts business in the United Kingdom.
(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 to 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 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 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 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 name 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.
The Panel notes that several countries are involved in this case: Ghana as the Respondent’s country of residence, Spain as the Respondent’s email address country <[…]@yahoo.es>, and the United Kingdom as the country to which the Domain Name refers and a country where the Complainant conducts business.
Further, under paragraph 2 of the Policy, it is established that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. Therefore, it was the Respondent’s duty to verify that the registration of the Domain Name would not infringe the rights of any third party before registering said Domain Name. (See Companies Gravis DANONE v. Georgia Dimitrov / NETART, WIPO Case No. D2009-0901; Carolina Herrera, Ltd v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397.)
The Panel thus 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. (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.)The notoriety of the Complainant is one factor. In the absence of explanations from the Respondent and taking into account all the circumstances of this case, the Panel finds that the Complainant’s concern that the Domain Name may be used for illegal activities including phishing and spam is highly plausible.
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 <ukstatoil.com> be transferred to the Complainant.
Date: January 28, 2014