WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA v. Victor Agwu Abosi / WhoIs Proxy Privacy
Case No. D2015-2070
1. The Parties
The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Whols Proxy Privacy of Paris, France / Victor Agwu Abosi of Cotonou, Benin.
2. The Domain Name and Registrar
The disputed domain name <statoiluae.com> is registered with Online SAS (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2015. On November 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 2015, 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. Further to the Center’s communication on November 19, 2015, the Complainant requested English to be the language of proceeding.
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 and 4, the Center formally notified the Respondent of the Complaint in both French and English, and the proceedings commenced on November 30, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2015.
The Center appointed Martine Dehaut as the sole panelist in this matter on January 4, 2016. 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, a Norwegian energy company, has been in business for 40 years and is one of leading providers of energy products and services operating worldwide.
The Complainant is present and is doing business, among others countries, in the United Arab Emirates (“UAE”) due to the richness in oil of the region. Statoil ASA has a regional office in Abu Dhabi.
The Complainant is the owner of numerous trademark registrations throughout the world. A list of trademark applications and registrations has been submitted by the Complainant displaying several national, international and Community registrations namely the International Trademark registration STATOIL n°730092, the Community trademark n°003657871, as well as registrations in the United Arab Emirates such as registrations n° 52852 through 52857. The oldest Norwegian trademark registration was granted in 1974.
The Complainant is also the owner of a great number of domain names containing the sign “statoil”.
The Respondent registered the disputed domain name <statoiluae.com> through a Proxy Privacy service on July 28, 2015.
The Complainant claims that the Respondent, on its own initiative, has redirected the disputed domain name to the Complainant’s website.
The Respondent did not reply to the Complaint.
The language of the Registration Agreement is French. However, as it will be discussed below, this proceeding will be conducted in English as requested by the Complainant and accepted by the administrative Panel.
5. Parties’ Contentions
The Complainant contends that the disputed domain name <statoiluae.com> is identical or at least highly confusingly similar to its trademark STATOIL. The suffix “uae” that stands for United Arab Emirates, is merely a geographical descriptive element and thus, is not likely to prevent the finding of the confusing similarity between the two signs.
The Complainant alleges that its trademark enjoys a thorough trademark protection worldwide and is highly well known. It indicates that the reputation of its trademark was admitted in previous UDRP decisions.
Besides, the Complainant states that it owns several hundred domain names containing the Trademark STATOIL.
Further, the Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name. Indeed, according to the Complainant, the Respondent is not affiliated or related to Statoil ASA or licensed to use the Complainant’s trademark. In no way, it has been authorized by the Complainant to register or to use the disputed domain name.
Following the searches carried out by the Complainant, the Respondent does not own any trademark rights in that sign and is not known by the disputed domain name.
Finally, the Complainant claims that the disputed domain name was registered and used in bad faith. Among other cited circumstances, the fact that the disputed domain name consists of the combination of its well-known trademark STATOIL with the suffix “uae” that stands for United Arab Emirates, a country where the Complainant is present, is a factor indicating the bad faith registration and use of the disputed domain name. The Complainant indicates that the Respondent, on its own initiative, redirected the disputed domain name to the Complainant’s website “www.statoil.com” that clearly indicates its knowledge of the Complainant’s business activities and trademarks as well as its objective to attract the attention of the Complainant for possibly receiving from it an offer to buy the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Firstly, the Panel has duly noted the request of the Complainant regarding the language of the proceeding and accepts to deliver the present decision in English considering that the Complainant has not to support additional costs of translation. Moreover, the Respondent has been duly invited to object the Complainant’s request but has not used this opportunity in the given deadline nor has it otherwise sought to participate in this proceeding. Moreover, as duly noted by the Complainant, the use of the suffix “uae” for United Arab Emirates suggests that the Respondent has knowledge of the English language.
A. Identical or Confusingly Similarity
As shown in the Complaint, the Complainant is the owner of the numerous trademark registrations and domain names consisting in the sign “statoil”.
The disputed domain name is mainly composed of the sign “statoil” that identically reproduces the Complainant’s trademark. The fact that this sign is combined with the geographical indicator “uae” is insufficient to avoid the finding of confusing similarity between the disputed domain name <statoiluae.com> and the Complainant’s Trademark STATOIL. See: Compagnie Gervais Danone v. Global Conventions (PvT) Ltd, WIPO Case No. D2009-0077.
On the contrary, considering the reputation of the trademark STATOIL in relation to energy products and services, the disputed domain name could cause Internet users to wrongly believe that it is connected to the Complainant’s business, particularly in the light of the presence of the company Statoil ASA in the United Arab Emirates as shown in the documents attached to the Complaint.
Based on the foregoing, the Panel holds that the first requirement of paragraph 4(a) of the Policy is satisfied.
B. Rights or Legitimate Interests
Following the second condition of paragraph 4(a) of the Policy, the Complainant has to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
As stated above, the Complainant has duly confirmed that the Respondent is in no way related to its company and has not been authorized to file or to use the disputed domain name.
The redirection of the disputed domain name to the Complainant’s website is in no way likely to create rights or legitimate interests in favor of the Respondent. See eMusic.com Inc. v. 1-800 Communications, Inc., WIPO Case No. D2010-1181.
Moreover, the searches conducted by the Complainant did not reveal trademark rights in the name of the Respondent. Although no trademark search results have been provided in the Complaint, the lack of any defense of the Respondent on this point and the above assertions of the Complainant lead the Panel to conclude that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, the Panel holds that the second requirement of paragraph 4(a) of the Policy is met.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Respondent has registered and used the disputed domain name in bad faith. Paragraph 4(b) of the Policy gives examples of circumstances that may in particular but without limitation, be indicative of registration and use in bad faith.
In the present case, the Panel has noted and taken into consideration several circumstances, pointed out by the Complainant, likely to show the bad faith attitude of the Respondent when registering and using the disputed domain name as follows:
First, and as accepted in previous UDRP decisions, the Panel admits, in view of the information submitted by the Complainant and those displayed on its website, that the trademark STATOIL enjoys a high reputation and most likely was known to the Respondent. Particularly, the Panel observes that according to the registration agreement binding on the Respondent, the registrant has to take necessary measures to avoid any violation of third parties rights.
In the light of the Complainant’s very extensive trademark protection throughout the world and namely in United Arab Emirates, any online search would have revealed the Complainant’s trademark rights.
Besides, the presence of the Complainant in the United Arab Emirates through a regional office located in Abu Dhabi has probably been known to the Respondent. Indeed, this country is cited among other countries on the home page of the Complainant’s website, as one of its place of business. It is hard to believe that the Respondent was not aware of the Complainant’s website, when selecting and registering its domain name. The addition of the geographical abbreviation “uae” to the Complainant’s trademark to compose the disputed domain name is even more indicative of bad faith.
Second, in absence of any response to the Complaint, the Panel has not been provided with any information evidencing any interests of the Respondent in the business of energy products and services.
Third, the Complainant has established that the Respondent redirected the disputed domain name to the Complainant’s website. As correctly pointed out in the Complaint, such a behavior does not show any bona fide offering of goods and services but is rather indicative of the attempt of the Respondent to let Internet users believe that the disputed domain name is related to the Complainant.
Fourth, in the present case, the Panel confirmed, after having checked the contentions of the Complainant on that point, that emails records have been configured for the disputed domain name, allowing the Respondent to use it in an email address.
Fifth, the Respondent failed to response to the present Complaint and to the communications of the Center and thus has decided to not participate to the proceeding in order to contest the Complainant’s contentions.
Considering all the above mentioned circumstances, the Panel holds that the disputed domain name has been registered and used in bad faith and that the requirement of Policy, paragraph 4(a)(iii) is satisfied.
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 <statoiluae.com> be transferred to the Complainant.
Date: January 18, 2016