WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA v. Bassey Berney, Koucha Inc
Case No. D2014-0423
1. The Parties
The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Bassey Berney, Koucha Inc of Randous, Houpi, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <statoil-mail.com> (the "Domain Name") is registered with Enom Corporate, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 19, 2014. On March 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on March 20, 2014.
The Center verified that the Complaint together with 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 March 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 10, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 11, 2014.
The Center appointed Linda Chang as the sole panelist in this matter on April 16, 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 is a world leading provider of energy products and services with 21,000 employees and extensive operations worldwide.
The Complainant holds trademark registrations for the STATOIL mark, including the International Registration No. 730092 registered on March 7, 2000 and covering goods and services in classes 1, 4, 17, 39 and 42, and the Community Trademark Registration No. 003657871 registered on May 18, 2005 with designated goods and services in classes 1, 4, 17, 35, 37, 39, 40 and 42. Both registrations are valid.
The Domain Name was registered on January 30, 2014 and currently is resolving to a website that holds no Internet content other than a link to a .php file and a message from the hosting provider that "Your website is up and running".
5. Parties' Contentions
The Complainant contends that the Domain Name is identical with or confusingly similar to its business name and trademark STATOIL. The additional element "-mail" in the Domain Name does not distinguish the Domain Name from the Complainant's STATOIL trademark, but instead it can be even more misleading to Internet users that the domain name owner (the Respondent) and the trademark owner (the Complainant) are somehow connected.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. 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 purposes. The Respondent is not using the Domain Name in connection with any bona fide offering of goods or services, or is not generally known by the Domain Name, and has not acquired any trademark or service mark rights in the name.
The Complainant finally contends that the Respondent has registered and used the Domain Name in bad faith. The Domain Name is an invented word, referring only to the name and trademark of the Complainant. The Domain Name was registered with fake registrant and contact details, which constitutes bad faith in registration and use.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
- The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the Domain Name; and
- The Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has registered the STATOIL trademark worldwide, inter alia, the International Trademark Registration No. 730092 and Community Trademark Registration No. 003657871. The Panel is satisfied that the Complainant has established its rights to the STATOIL trademark. The issue then comes to whether the Domain Name is identical or confusing similar to the Complainant's STATOIL trademark.
The Panel notes that the Domain Name, in addition to the generic Top-Level Domain ".com" which is a necessity for a domain name, consists of two parts, "statoil" and "mail" connected by a hyphen "-".
The first part "statoil" is identical with the Complainant's STATOIL trademark while the second part "mail", a generic term, does not serve to prevent the risk of confusion between the Domain Name and the trademark in pursuance with established rules out of previous UDRP decisions. See Chanel, Inc. v. IGGI Networks, Inc., WIPO Case No. D2000-1831.
Neither the hyphen "-" is sufficient to avoid the confusing similarity. See NCRAS Management, LP v. Ameriasa, WIPO Case No. D2002-0920, "Complainant's marks are reproduced entirely in the Domain Name. The presence of hyphens in the Domain Name does not constitute a material difference".
In line with established practice, incorporation of the Complainant's distinctive trademark in its entirety into the Domain Name is sufficient to establish that the Domain Name is identical or confusingly similar to the Complainant's trademark. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 and Oakley, Inc. v. Zhang Bao, WIPO Case No. D2010-2289.
The Panel therefore draws the conclusion that the Domain Name is confusingly similar to the Complainant's STATOIL trademark. The first element of paragraph 4(a)(i) of the Policy is satisfied accordingly.
B. Rights or Legitimate Interests
The Panel is satisfied that the Complainant has established a prima facie case that it has a right in the name of STATOIL and the Respondent does not. The burden of production shifts to the Respondent accordingly, whose failure to respond however enables the Panel to conclude that there is no evidence with respect to the Respondent's rights or legitimate interests in the Domain Name.
In addition, the Panel notes that the Domain Name resolves to a website that holds a message from the hosting provider that "Your website is up and running" and is linked to a .php file. The Panel finds that the Respondent's use of the Domain Name does not fall within the circumstances of the situations as specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the Domain Name.
For the reasons stated above, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the following circumstances which, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The Panel finds that trademark registration of STATOIL predates that of the Domain Name by far and the Complainant's STATOIL trademark is distinctive and has considerable reputation worldwide.
The Panel determines that using a widely known trademark to register the Domain Name, acts of the Respondent, in the name of an individual or entity that has no relationship with the Complainant and the STATOIL trademark, is sufficient here to evidence bad faith registration. See America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Research in Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492.
The Panel further agrees that passive holding of a domain name, or a use compatible to passive holding such as the one in the present case, with knowledge that the Domain Name takes advantage of the goodwill of the Complainant's trademark rights is evidence of bad faith registration and use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Finally, as contended by the Complainant and confirmed by the Center, the Respondent's address as indicated in the WhoIs record does not exist. The Panel views that the Respondent has taken deliberate steps to conceal its true identity. Although mere use of false contact information does not necessarily imply bad faith as such acts could be used to serve legitimate interests of privacy and spam protection, in the light of all the grounds as discussed above, the Panel is convinced that this supports a finding of bad faith. See Home Director, Inc. v. HomeDirector, WIPO Case No. D2000-0111 and Chanel v. 1, WIPO Case No. D2003-0218.
The Panel finds that for the purpose of paragraph 4(a) of the Policy, the Domain Name was registered and is being used 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 <statoil-mail.com> be transferred to the Complainant.
Date: April 30, 2014