WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA v. Domain Administrator, Fundacion Private Whois
Case No. D2014-1682
1. The Parties
Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
Respondent is Domain Administrator, Fundacion Private Whois of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <statoilgroups.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 September 26, 2014. On September 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 13, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 3, 2014.
The Center appointed Sandra J. Franklin as the sole panelist in this matter on November 10, 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
Complainant Statoil ASA is an international energy company with 21,000 employees and extensive operations worldwide. Complainant holds hundreds of trademark registrations for its STATOIL mark, the first of which was approved in 1974 (Norwegian Trademark Reg. No 90221). Complainant provides evidence of its STATOIL trademark registrations, including its International Registration (Reg. No 730092) and Community Trademark (Reg. No 003657871.)
The disputed domain name <statoilgroups.com> was registered on April 26, 2014, and is not in active use.
5. Parties' Contentions
Respondent's disputed domain name <statoilgroups.com is confusingly similar to Complainant's STATOIL mark.
Respondent does not have any rights or legitimate interests in the disputed domain name <statoilgroups.com>.
Respondent registered and uses the disputed domain name <statoilgroups.com> in bad faith.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(1) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., NAF Claim No. 0095095 (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009 ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.").
A. Identical or Confusingly Similar
The Panel finds that Complainant's registration of its STATOIL mark satisfies the requirements of Policy paragraph 4(a)(i) to show rights in a mark. See Thermo Electron Corp. v. Xu, NAF Claim No. 0713851 (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Respondent's disputed domain name <statoilgroups.com> simply adds the generic word "groups" and the generic top-level domain ("gTLD") ".com" to Complainant's STATOIL mark. Complainant argues that the descriptive word "groups" only increases the risk of confusion, as many multinational corporations often use the term "group(s)" in connection with the company name when referring to the joint activities of an organization. The Panel agrees and finds that the <statoilgroups.com> domain name is confusingly similar to Complainant's STATOIL mark under Policy paragraph 4(a)(i), as the additions of a gTLD and the term "groups" fail to distinguish the domain name from the incorporated mark. See Morgan Stanley v. Discover Financial Services LLC, where the panel found, "[r]espondent's <morganstanleycorp.com> domain name is confusingly similar to Complainant's mark, as the domain name fully incorporates Complainant's MORGAN STANLEY mark in its entirety and adds the generic term 'corp,' a widely recognized abbreviation for 'corporation.' Such a change is not enough to overcome a finding of confusing similarity pursuant to Policy 4(a)(i)"; see also Trip Network Inc. v. Alviera, NAF Claim No. 0914943 (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy 4(a)(i) analysis).
The Panel finds that Complainant satisfies Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name <statoilgroups.com>, and states that Respondent is not licensed or otherwise authorized by Complainant to use the STATOIL mark. Complainant further asserts that Respondent 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 Panel notes that the WHOIS record lists "Domain Administrator, Fundacion Private Whois" as the registrant of the disputed domain name. Given the lack of evidence to infer otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name <statoilgroups.com> under Policy paragraph 4(c)(ii). See Instron Corp. v. Kaner, NAF Claim No. 0768859 (finding that the respondent was not commonly known by the disputed domain names because the WhoIs information listed "Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't" as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). See also Statoil ASA v. David Campbell, WIPO Case No. D2013-1130, where the circumstances and evidence were very similar to this case and the panel concluded that "since Respondent has no permission from Complainant, the Panel finds that based on the available evidence, Respondent's use of the disputed domain name is without rights or legitimate interests."
Complainant also argues that Respondent is not using the disputed domain name <statoilgroups.com> in connection with any bona fide offering of goods or services, as the disputed domain name does not resolve to any active content. Respondent's passive holding of the disputed domain name is a further indication that Respondent lacks rights and legitimate interests in the domain name. See Ziegenfelder Co. v. VMH Enter., Inc., WIPO Case No. D2000-0039 (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in the domain name); see also Bloomberg L.P. v. Sandhu, NAF Claim No. 0096261 (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way).
The Panel finds that Complainant satisfies Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Complainant argues that Respondent has a pattern of abusive domain name registrations, which demonstrates bad faith. Complainant provides a long list of UDRP cases against Respondent, including a prior case involving Complainant's STATOIL mark. See Statoil ASA v. Domain Administrator, Fundacion Private Whois, WIPO Case No. D2014-1046. The Panel finds that this adverse decision against Respondent, along with others provided by Complainant, demonstrate Respondent's pattern of bad faith registration under Policy paragraph 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, NAF Claim No. 1036129 (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
In the prior Statoil case against Respondent, the panel noted that "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." The same is true here, and the Panel finds bad faith under both Policy paragraph 4(b)(ii) and Policy paragraph 4(a)(iii). The latter Policy paragraph provides that the totality of the circumstances can demonstrate bad faith and includes passive holding, which we also have here, as an additional indication of bad faith. See Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, where the panel found that "[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith."
The Panel finds that Complainant satisfies 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 <statoilgroups.com> be transferred to the Complainant.
Sandra J. Franklin
Date: November 24, 2014