WIPO Arbitration And Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA v. GRU Group
Case No. D2014-0424
1. The Parties
The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is GRU Group of Gabrovo, Bulgaria.
2. The Domain Name and Registrar
The disputed domain name <statoil-ng.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 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 March 20, 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 March 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 13, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 14, 2014.
The Center appointed Linda Chang as the sole panelist in this matter on April 17, 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 numerous trademark registrations for the STATOIL mark, including International Registration No. 730092 registered on March 7, 2000 and covering goods and services in classes 1, 4, 17, 39 and 42, and 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 Respondent registered the Domain Name on January 3, 2014. The Domain Name is inactive at the time of this proceeding.
5. Parties' Contentions
The Complainant contends that the Domain Name is identical to its STATOIL trademark. The additional element "-ng" in the Domain Name is descriptive and does not take away the confusing similarity of the Domain Name with the Complainant's STATOIL trademark.
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 purpose. The Respondent is not using the Domain Name in connection with any bona fide offering of goods or services, is not generally known by the Domain Name, and has not acquired any trademark or service mark rights in that name or mark.
The Complainant finally contends that the Respondent registered and is using the Domain Name in bad faith. Passive holding of the Domain Name can amount to use in bad faith. The Domain Name has no other meaning except in reference to the name and trademark of the Complainant. No legitimate use can be contemplated when the Domain Name incorporates the Complainant's well-known trademark.
For the above reasons, the Complainant requests the transfer of the Domain Name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has trademark registrations of STATOIL worldwide, inter alia, International Registration No. 730092 and Community Trademark Registration No. 003657871. The Panel is satisfied that the Complainant has established its trademark rights to the STATOIL mark.
The Domain Name consists of "statoil", a hyphen "-", "ng" and ".com". It is well-established that addition of suffixes such as ".com" being the generic Top-Level Domain, as well as "-" being a hyphen, is not a distinguishing factor and does not function in identifying a domain name. Thus, the most prominent part of the Domain Name is "statoil" which is identical to the Complainant's distinctive mark STATOIL, and "ng", which could be the country code for Nigeria or a term with no inherent meaning.
Given the reputation of the STATOIL trademark, the Panel determines that the addition of "ng" to the Complainant's trademark could not escape a conclusion that the Domain Name is confusingly similar to the STATOIL trademark. Incorporation of the Complainant's distinctive trademark in entirety in the Domain Name itself is sufficient to establish confusing similarity for the purpose of the Policy.
The Panel finds that the Domain Name is confusingly similar to the Complainant's trademark.
B. Rights or Legitimate Interests
The Panel is satisfied that the Complainant has established a prima facie case according to the contention of the Complainant, and 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.
The Domain Name is inactive. The Panel agrees that passive holding of the Domain Name by the Respondent is not a bona fide use pursuant to paragraph 4(c) of the Policy, and does not fall within any other circumstances giving rise to a right to or legitimate interest in the Domain Name. See Statoil ASA. V. STOUK, WIPO Case No. D2013-2122.
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
The Panel finds that trademark registration of STATOIL far predates that of the Domain Name and the Complainant's STATOIL trademark is distinctive and has considerable reputation worldwide. The Panel finds it inconceivable that the Respondent would not have had actual notice of the STATOIL trademark at the time of registering the Domain Name.
No plausible explanation exists as to why the Respondent being an entity that has no relationship with the Complainant selected the STATOIL mark as part of the Domain Name other than to exploit the goodwill of the Complainant and its trademark. The Panel determines that using a widely known trademark to register the Domain Name in itself is sufficient 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 the Domain Name 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.
In light of the above facts and reasons, the Panel determines that 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-ng.com> be transferred to the Complainant.
Sole Panelist Date: April 30, 2014