WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA v. Bright, AK
Case No. D2014-1463
1. The Parties
The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Bright, AK of PH, Imc, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <statoilemail.com> 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 August 26, 2014. On August 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 27, 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 for the disputed domain name.
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 August 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 18, 2014
The Center appointed Adam Samuel as the sole panelist in this matter on September 30, 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 an international energy company. It conducts its business through its domain name <statoil.com>, registered on April 21, 1995. It is the owner of a number of trademark registrations worldwide for the name STATOIL, including in the United States of America, number 77762071, registered on May 3, 2011.
The disputed domain name was registered on June 24, 2014.
5. Parties' Contentions
These are the parties' contentions (with which the Panel does not necessarily agree).
The additional element "email" in the domain name, does not take away the confusing similarity of the disputed domain name with Complainant's trademark. The word "email" is a generic term commonly used in domain names, not least in abusive domain names used for spam or phishing purposes. The addition of descriptive elements to a registered trademark in a domain name will not prevent a finding of confusing similarity for the purposes of the UDRP. Such descriptive components added to a complainant's trademark may even add to the confusion. The additional element "email" in the disputed domain name is no mere than a descriptive component, which can falsely mislead email recipients or Internet users into believing that emails or information provided online originates from the Complainant.
The Respondent has no rights or legitimate interests in respect of the disputed 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 disputed domain name in connection with any bona fide offering of goods or services, is not generally known by the disputed domain name and has not acquired any trademark or service mark rights in that name or mark.
The disputed domain name currently holds no Internet content of the Respondent. The Complainant claims that the Respondent's intention for registering the disputed domain name has been to use it for financial gain. The Complainant has strong reasons for concern that the disputed domain name is or will be used for illegal activities. The Complainant has previously reported for suspension and/or filed UDRP complaints for numerous domain names of similar character used for phishing purposes in the form of fake employment offer letters.
The Complainant contends that e-mail records have been configured for all the domain names subject to this Complaint. This indicates that the disputed domain name will also be used for sending out unsolicited email offers.
The mark STATOIL is well known worldwide and was so also at the time of registration. The Complainant conducts extensive business activities in Nigeria, the home country of the Respondent. The disputed domain name bears no relationship to the Respondent's name or its business. The registration, followed by a 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. Here, the disputed domain name has no other meaning except for the reference to the name and trademark of the Complainant, and there is no way in which it could be used legitimately.
The Respondent has previously been subject to UDRP complaints, which is a further indication of bad faith. Although one previous case may not by itself be sufficient to prove bad faith resulting from Respondent being engaged in a pattern of abusive registrations, the case referred to is a strong indication thereof.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it 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.
A. Identical or Confusingly Similar
The disputed domain name consists of the Complainant's well-known trademark, the generic term "email" and the generic Top-Level-Domain (gTLD) ".com". While the word "email" has no particular connection with the Complainant's business, it does not detract from the confusing similarity between the Complainant's prominent trademark and the disputed domain name. In any event, there is an obvious connection between email and the websites generally. The Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark.
B. Rights or Legitimate Interests
The Respondent is not called "Statoilemail" or anything similar and does not appear to engage in a legitimate trade under that or any related name. The Respondent does not appear to have used the disputed domain name to reflect any offering of goods or services or anything else. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. For these reasons, and in the absence of any response on this point, notably one contradicting the Complainant's claim that the Respondent has never been connected to it in any way, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant's trademark is wellknown worldwide. It is highly likely that the Respondent registered the disputed domain name knowing of the Complainant's mark since it consists of the Complainant's mark and a form of activity often associated with websites. It is impossible, at least without a Response to the Complaint, to identify the reason why the Respondent registered the disputed domain name other than to attract business or Internet users to his site who were looking for a site connected to the Complainant's trademark or business.
The Respondent's motive in registering and using the disputed domain name seems to have been either to disrupt the Complainant's relationship with its customers or potential customers, attempt to attract Internet users for potential gain or persuade the Complainant to buy the disputed domain name from it for an amount in excess of the Respondent's out-of-pocket expenses. These all constitute evidence of registration and use in bad faith. The Respondent's motivation may have been more than one of these and perhaps all three. It is unnecessary in the circumstances to reach a conclusion about the other points made in the Complaint.
For the above reasons, the Panel concludes that the disputed 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 disputed domain name <statoilemail.com> be transferred to the Complainant.
Date: October 14, 2014