WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA v. Emeafu Elvis, Proudlyboys
Case No. D2014-0151
1. The Parties
The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Emeafu Elvis, Proudlyboys of Orlu, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <statoiljobsnig.com> is registered with The Registry at Info Avenue, LLC d/b/a Spirit Telecom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2014. On January 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 3, 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 February 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 5, 2014. The Center received informal email communications from the Respondent on March 5, 7, 12 and 28, 2014.
The Center appointed Alexandre Nappey as the sole panelist in this matter on March 12, 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
Statoil ASA (hereafter the Complainant) is a 40 year old Norwegian energy company operating worldwide and employing over 21,000 employees.
The Complainant holds trademark rights on the word STATOIL in numerous jurisdictions, and notably:
CTM word mark STATOIL no. 003657871 filed on February 10, 2004 and registered for products and services in classes 1, 4, 17, 35, 37, 39, 40 and 42.
The disputed domain name is <statoiljobsnig.com>, and it has been registered in the name of an individual named Elvis Emeafu, Proudlyboys (hereafter the Respondent) on November 26, 2013.
5. Parties’ Contentions
The Complainant claims that the domain name in issue is identical or at least confusingly similar to its highly well-known trademark that predates the disputed domain name for many years.
The Complainants states that the disputed domain name incorporates the trademark STATOIL in its entirety and consists of the clearly separable elements “jobs” and “nig”, the first referring to career opportunities in the Complainant’s staff, the second being related to “NIG”eria, the country where the Respondent appears to be located.
According to the Complainant, the addition of these descriptive terms does not prevent the confusing similarity between the disputed domain name and the trademark STATOIL; on the contrary they only strengthen the association with the Complainant’s trademark.
Secondly, the Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name, no relationship with the Complainant in any way, nor any license or authorization. Moreover the disputed domain name is not used in connection with any bona fide offering of goods or services, and the Respondent is not generally known by the disputed domain name.
Lastly, the Complainant states that the disputed domain name has been registered and is being used in bad faith. The association of a domain name including a well-known trademark with passive holding can amount to use in bad faith when there is no way in which it could be used legitimately.
In a later unsollicited statement the Complainant reported that the Respondent got in touch with the Complainant by email to offer the disputed domain name for sale for an amount exceeding out-of-pocket costs, which is clearly evidence of bad faith.
The Respondent did not formally reply to the Complainant’s contentions.
However, it should be pointed out that the Respondent sent various emails to the Complainant and the Center later where it offered the disputed domain name for sale, first without any offer, then for USD 50,000.
6. Discussion and Findings
Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate.”
Having considered the parties’ contentions, the Policy, the Rules, the Supplemental Rules and applicable substantive law, the Panel’s findings on each of the above cited elements are the following.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns exclusive trademark rights on the name STATOIL, which predate the registration of the disputed domain name, even in Nigeria, where the Respondent is supposed to be established.
The disputed domain name merely adds the combination of descriptive words “jobs” and “nig” to the trademark STATOIL.
The Panel finds that all of the words that are added to the trademark do not sufficiently distinguish the disputed domain name from the trademark STATOIL.
As ruled in Wal-Mart Stores, Inc v. Kuchora, Kal, WIPO Case No. D2006-0033,“if a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words.”
For instance, numerous UDRP panels have ruled that the addition of words like “jobs” or geographical suffixes to a trademark in a domain name is not sufficient to dispel confusing similarity:
Randstad Holding nv v. Pinaki Kar, WIPO Case D2013-1796 it has been ruled that: “Respondent’s use of the descriptive word “jobs” in the Domain Name does not avoid confusion. To the contrary, it increases the likelihood of confusion to consumers because the word “jobs” is descriptive of the services advertised and sold by Complainant and promoted by Respondent using the Domain Name.”
In Statoil ASA v. STOUK, WIPO Case D2013-2122, the panel ruled: “Accordingly, the mere addition of the geographical wording “ng” referring to the country of Nigeria (where Complainant conducts business) is not capable to dispel the confusing similarity arising from the incorporation of Complainant’s STATOIL trademark in the disputed domain name.”
The Panel concludes that the disputed domain name is confusingly similar with the trademark of the Complainant.
Therefore, the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name,. The Respondent is not known by the disputed domain name and has no rights or legitimate interests in the Complainant’s mark, or in the name “STATOIL”. Nor does the Respondent have any granted authorization, whether express, implied, by which to use the disputed domain name.
The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademark in the disputed domain name or in any other capacity.
See Statoil ASA v. David Campbell, WIPO Case No. D2013-1130 where the panel concluded: “Since the Respondent has no permission from the Complainant, the Panel finds that based on the available evidence, the Respondent’s use of the disputed domain name is without rights or legitimate interests.”
In the light of the Complainant’s unrebutted prima facie case, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name <statoiljobsnig.com>.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name has created a risk of confusion with the Complainant’s products and trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name.
The Panel also finds that paragraph 4(b)(i) of the Policy applies since the Complainant presented evidence that the Respondent registered and is using the disputed domain name primarily for the purpose of selling it to the Complainant for an amount in excess of its out-of-pocket expenses. This is evidenced by the late offer made by the Respondent to transfer the disputed domain name to the Complainant for USD 50,000. It is clearly evident from the correspondence between the Complainant and the Respondent that offering the disputed domain name for sale to the Complainant is the Respondent’s primary purpose for the disputed domain name.
The Panel also draws inferences of bad faith from the lack of formal response from the Respondent to the Complaint as well as from the offer to sell the disputed domain name to the Complainant.
The Panel therefore holds that the Respondent has registered and is using the disputed 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 disputed domain name <statoiljobsnig.com> be transferred to the Complainant.
Date: April 4, 2014