WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA v. Domain Administrator, Fundacion Private Whois
Case No. D2014-1046
1. The Parties
The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is the Domain Administrator, Fundacion Private Whois of Panama.
2. The Domain Name and Registrar
The disputed domain name <statoilnigeria.com> is registered with Internet.bs Corp. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 18, 2014. On June 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 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 July 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 28, 2014.
The Center appointed Nuno Cruz as the sole panelist in this matter on August 8, 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 a Norwegian corporation established under Norwegian law.
The Complainant is an international energy company with 21,000 employees and extensive operations worldwide. The Complainant has been in business for over 40 years and is one of the leading providers globally of energy products and services.
The trademark STATOIL is well known, as confirmed by the previous decisions under the UDRP, such as Statoil ASA v. Weiwei Qiu / PrivacyProtect.org, WIPO Case No. D2011-1752; Statoil ASA v. Domain Admin/ Management So Hkg, WIPO Case No. D2012-2392; and Statoil ASA, Statoil Fuel & Retail Aviation AS v. NA - Claudio Russo, WIPO Case No. D2013-0963.
The Complainant owns numerous trademark registrations for STATOIL all over the world ever since 1974, namely international registration STATOIL, International registration no. 730092, and European Community trademark registration no. 003657871.
The Complainant's main website operates at "www.statoil.com".
The disputed domain name <statoilnigeria.com> was registered on May 15, 2014.
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 disputed domain name <statoilnigeria.com> is identical to its trademark STATOIL.
First of all, the Complainant alleges that the disputed domain name is identical to the Complainant's trademark STATOIL and business name.
Furthermore, the Complainant sustains that as confirmed by previous UDRP decisions, the mark STATOIL enjoys the status of a well-known trademark.
According to the Complainant, the additional element "Nigeria" in the domain name does not rule out the confusing similarity of the domain name with its trademark. Rather to the contrary, considering that the Complainant operates in the said country, the inclusion of the said designation strengthens the association with the Complainant.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
According to the Complainant, 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.
Therefore, according to the Complainant, the Respondent does not fall under the circumstances listed in paragraph 4(c) of the Policy.
At the time of the drafting of the Complaint, the disputed domain name was inactive. Accordingly, the Complainant assumed that the Respondent's intention for registering the disputed domain name was either to sell the disputed domain name to the Complainant, or to otherwise use for its illegal financial gain. As well, the Complainant is concerned that the disputed domain name may be used in relation to illegitimate activities such as phishing attacks and spam emails sent from email addresses using the trademark STATOIL.
The Complainant is also concerned that the disputed domain name may be used for illegal activities, since it has regularly been informed of phishing attempts and spam being sent out from email addresses using the trademark STATOIL, for example in the form of false recruitment letters.
(iii) The disputed domain name was registered and is being used in bad faith.
STATOIL represents the Complainant's business name and trademark. The trademark STATOIL was well known worldwide well before the Respondent registered the disputed domain name.
The disputed domain name bears no relationship with 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.
Furthermore, the choice of the Respondent to hide its identity when registering the disputed domain name is also, at least in combination with other circumstances, a further indication of bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a Respondent may establish rights or legitimate interests in the domain name. Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the domain name, once the Complainant has made a prima facie showing. See e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
Consequently, the Panel shall further analyze the eventual concurrence of the above-mentioned circumstances in the present case.
A. Identical or Confusingly Similar
There are two requirements that a complainant must establish under this element, namely: that it has rights in a trademark and, if so, that the disputed domain name is identical or confusingly similar to its mark.
The Complainant has rights in the trademark STATOIL, holding registrations all over the world.
The disputed domain name <statoilnigeria.com> includes the Complainant's well-known trademark STATOIL and corresponding business name.
In addition to this, the disputed domain name contains the word Nigeria. This fact does not rule out the confusing similarity of the domain name with the Complainant's trademark. Rather to the contrary, it can be seen that the disputed domain name is a mere juxtaposition of the name and trademark STATOIL of the Complainant with the country name Nigeria. As a rule, names or expressions of a geographic nature are considered as being devoid of distinctive character when they are, or may be, interpreted as indications as to the origin of the products or the place of business. This last situation is reinforced in the present case by the fact that the Complainant operates in Nigeria, thus the inclusion of the said designation strengthens the association with the Complainant.
It is well established in decisions under the UDRP that indicators for generic Top Level Domains (e.g., ".pro", ".info", ".com", ".org") are typically irrelevant to the consideration of identity or confusing similarity between a trademark and a domain name.
Accordingly, the Panel finds that the first element of the Policy is established, and the Complainant has proven that the disputed domain name <statoilnigeria.com> is identical to its trademark STATOIL pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant has provided a prima facie case under this element of the Policy showing that it has had no relationship with the Respondent and has not granted the Respondent any right to register and use its trademark STATOIL. Therefore, in line with prior UDRP decisions, the burden of production on this element shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name.
Although properly notified by the Center, the Respondent failed to submit any response in the present procedure. Considering other relevant circumstances of a matter, the silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the disputed domain name. See also Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S, WIPO Case No. D2000-0011.
Further, there is no evidence before the Panel to suggest that the Respondent has made a bona fide use of the disputed domain name, or has been known by this disputed domain name, or is making any legitimate noncommercial or fair use of the disputed domain name.
According to the records in this case, the website at the disputed domain name is inactive. Passive holding of a disputed domain name incorporating a third party well-known mark does not normally amount to a bona fide use. It was established even since the beginning of the UDRP that "inaction" / "passive holding" can, in certain circumstances, constitute bad faith use (see CBS Broadcasting Inc. v. Edward Enterprises, WIPO Case No. D2000-0242).
For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires proof of bad faith in both the registration and use of the disputed domain name.
When assessing the bad faith under the registration requirement, the following should be considered (1) whether the Respondent knew of the Complainant and its trademark, and (2) whether the Respondent targeted the Complainant to benefit from confusion generated by the similarity between the disputed domain name and the trademark (see Avon Products, Inc. v. Mary Ultes, WIPO Case No. D2009-0471).
The Complainant's trademark STATOIL and corresponding business name have been used and registered all over the world since 1974.
The trademark STATOIL has no meaning in the energy industry other than to designate the Complainant's trademark and company name. According to the previous UDRP decisions cited in Section 4 above, the STATOIL trademark has become well-known in the markets it penetrated and for the goods and services it is protected for.
The disputed domain name <statoilnigeria.com> was registered in May 2014 and reproduces the Complainant's well-known trademark and commercial name.
From the above, the Panel concludes that the Respondent had indeed knowledge of the Complainant's trademark and business and incorporated the trademark STATOIL in the disputed domain name in order to create confusion and somehow obtain commercial gain from such confusion, and/or to disrupt the Complainant's business.
Further, the Respondent chose not to participate in these proceedings and has not contested any of the allegations made by the Complainant, and did not provide any evidence whatsoever of any legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant's trademark. Such passive attitude of the Respondent can be considered further evidence of bad faith. See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Kabushiki Kaisha Toshiba v. Shan Computers, WIPO Case No. D2000-0325; Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
Moreover, the choice of the Respondent to hide its identity when registering the disputed domain name is also, at least in combination with other circumstances, a further indication of bad faith.
At the time of drafting the decision, the website at the disputed domain name was still inactive. As previously mentioned, the passive holding can, in certain circumstances, constitute bad faith use. In the present case, the Respondent registered a domain name reproducing exactly a third party's well-known trademark; hid its identity; chose not to participate in the UDRP procedure and thus failed to provide any arguments in its defense.
For all these reasons, the Panel finds that the third element of the Policy is established on the record in these proceedings, and accordingly that the disputed domain name was registered and is being used in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 <statoilnigeria.com> be transferred to the Complainant.
Date: August 21, 2014