WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA v. Dozorek
Case No. D2016-0647
1. The Parties
The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Dozorek of Tokyo, Japan.
2. The Domain name and Registrar
The disputed domain name <statoilunitedkingdom.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 April 4, 2016. On April 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 11, 2016.
The Center appointed Andrea Dawson as the sole panelist in this matter on May 19, 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, Statoil ASA, is an international energy company located in Norway.
The Complainant has been in business for over 40 years and is one of the leading providers of energy products and services worldwide.
The Complainant is the owner of trademark registrations for STATOIL in various countries and jurisdictions around the globe, including International Registration No. 730092, registered on March 7, 2000, and European Union Trademark Registration No. 3657871, registered on May 18, 2005.
The Complainant is also the owner of several domain names containing the trademark STATOIL, and is the owner of the domain name <statoil.com>.
The disputed domain name <statoilunitedkingdom.com> was registered on November 18, 2015
5. Parties' Contentions
The Complainant states that the disputed domain name is identical or highly similar to the Complainant's trademark. The addition of the term "unitedkingdom" to the Complainant's trademark does not eliminate the identity or similarity between the Complainant's trademark and the disputed domain name. The addition of descriptive elements is insufficient to avoid confusing similarity; instead, it can serve to reinforce the relationship.
The Complainant contends that 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 Complainant states that the disputed domain name held no content when the Complaint was filed.
The Complainant states that the Respondent has registered and used the domain name in bad faith. The mark STATOIL is well-known worldwide. The disputed domain name has no other meaning except being the name and trademark of the Complainant.
The Complainant also adds that it is clear from UDRP case-law that bad faith exists where a domain name is so obviously connected with the Complainant that its very use by a third party with no connection with the Complainant suggests opportunistic bad faith.
Finally, the Complainant contends that 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.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it is the owner of the trademark STATOIL.
The disputed domain name consists of the trademark STATOIL together with the addition of the geographical term "unitedkingdom". The Panel accepts the Complainant's assertion that the addition of this geographical term does not serve to distinguish the disputed domain name from the Complainant's trademark
Previous UDRP Panels have found that the mere addition of a geographical term to a trademark is not sufficient to eliminate the confusing similarity with the mentioned trademark, since the Internet user seeks the trademark and not an indication of a country. Furthermore, the Internet user will probably consider the geographical factor as simply a place locator.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name.
However, many prior UDRP Panels have established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name. The Panel agrees that the Complainant needs only to make out a prima facie case and finds that it has met that standard.
The Panel accepts the arguments of the Complainant that the Respondent has no rights or legitimate interests in respect of the disputed domain name. That it is not affiliated or related to the Complainant in any way, or licensed to use the STATOIL mark for any purpose.
The Panel also accepts the Complainant's contention that 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.
The Respondent was duly notified of the current proceeding and was given the opportunity to provide a response to the Complainant's contentions, however, no response was submitted providing evidence of any rights or legitimate interests in the disputed domain name, nor has any evidence been made available to the Panel that the Respondent has any such rights or legitimate interests in the disputed domain name.
Consequently, the Panel finds that the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which in particular but without limitation, if found by the Panel to be present, shall be evidence of both registration and use of the disputed domain name in bad faith.
The Panel finds that the Complainant has submitted evidence, unchallenged by the Respondent, that the Respondent has registered the disputed domain name with the knowledge of the Complainant's rights in the
Complainant's trademarks and that the Respondent's bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant's trademarks at the time of the registration of the disputed domain name.
The Complainant further asserts that the disputed domain name does not resolve to an active website, except for the configuration of email records.
The consensus view in UDRP panel decisions has been that passive holding of domain names can be considered bad faith use of the domain name under certain circumstances. In this instant case the Panel is of the opinion that these circumstances have been met: the Complainant owns a well-known trademark, the information provided in the WhoIs appears to be incorrect, there has been an absence of explanation from the Respondent of its rights and legitimate interests in the disputed domain name and the Respondent has made no active use of the disputed domain name.
Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith, and finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
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 <statoilunitedkingdom.com> be transferred to the Complainant.
Date: June 2, 2016