WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA (Statoil) v. Mossad Eladawy
Case No. D2016-0820
1. The Parties
The Complainant is Statoil ASA (Statoil) of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Mossad Eladawy of Riyadh, Saudi Arabia.
2. The Domain Name and Registrar
The disputed domain name <statoilforetag.net> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 26, 2016. On April 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 27, 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 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 25, 2016.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on June 6, 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 has submitted a list of international trademark registrations for the trademark STATOIL and STATOIL with device. The Complainant also owns a number of trademark registrations in Saudi Arabia, which were effectuated in 2004. Previously, the domain name <statoilforetag.net> seems to have been owned by the Complainant.
The disputed domain name was registered on December 6, 2015 by the Respondent. The disputed domain name resolves to a website that promotes the services of a company called "Al Rawda" which offers a variety of home maintenance and other services such as pest-control, cleaning and moving in the Kingdom of Saudi Arabia.
5. Parties' Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant contends that it is a global company of energy products and services with operations in Saudi Arabia and with a trademark that is considered well-known in the industry. This status has been confirmed through prior UDRP decisions. Furthermore, the Complainant has registered its trademark worldwide and in Saudi Arabia. Its first registration dates back to the year 1974. The Complainant further contends that it owns many domain names comprising its trademark STATOIL. The Complainant contends that the disputed domain name includes its trademark STATOIL together with the term "foretag", which means "company". The Complainant contends that the use of the generic Top Level-Domain ("gTLD") ".net" does not have any significance while the use of the generic descriptive term "foretag" does not affect the overall impression created by the use of the trademark STATOIL and which in the Complainant's view represents the dominant part of the disputed domain name. The Complainant contends that the disputed domain name would confuse Internet users and lead them to believe that it is associated with the Complainant and related to its business in Nordic countries.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant contends that the circumstances set out in paragraph 4(c) of the Policy are not met here. The Complainant has not authorized the Respondent to use its trademark and there exists no relationship between the two of them. In addition, there is nothing to indicate that the Respondent is commonly known by the disputed domain name. Further, the Respondent has no trademark or trade name registration corresponding to the disputed domain name and has registered the disputed domain name years after the registration of the Complainant's trademarks when the trademark STATOIL had already become a well-known trademark. The Complainant contends that the Respondent must have registered the disputed domain name with the intent of creating an impression of association as it could not have been ignorant of the Complainant's trademark and its world-wide reputation.
The Complainant contends that the domain name was registered and is being used in bad faith. The Respondent was certainly aware of the Complainant's trademark and intended to benefit of the goodwill associated therewith. Further, by using the term "foretag", the Respondent wanted to create the impression of association with the Complainant. The Complainant contends that the registration of a domain name that is confusingly similar to a famous trademark by a person who has no connection whatsoever with that trademark establishes bad faith on the part of the registrant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established its ownership of trademark STATOIL through the list of trademark registrations submitted to the Panel. The Panel notes that no trademark registration certificates were submitted but a list of the trademark registrations of the trademark STATOIL and STATOIL with device issued on the letterhead of the trademark agent was submitted. The Panel considers this to be sufficient in establishing the ownership of the trademark STATOIL by the Complainant and particularly in the Kingdom of Saudi Arabia.
The disputed domain name incorporates the trademark of the Complainant in its entirety. Adding the generic term "foretag" does not eliminate the confusion with the Complainant's trademark especially that the disputed domain name starts with the trademark of the Complainant. Previous UDRP panels have found that the part with which the disputed domain name begins is the "more influential part" (General Electric Company v. Fei Liu, WIPO Case No. D2010-1212). It is also established that adding a gTLD contributes in no way in eliminating the confusing similarity and certain UDRP panels have stated that the gTLD should not be taken into consideration when determining confusing similarity (General Electric Company v. Fei Liu, WIPO Case No. D2010-1212).
Consequently, the Panel finds that the disputed domain name is confusingly similar to a trademark owned by the Complainant.
B. Rights or Legitimate Interests
The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that it never authorized the Respondent to use its trademark. The Respondent has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain names. In the absence of such response, the Panel believes that the Complainant met the requirement under the Policy showing that the Respondent does not have any rights or legitimate interests.
Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has registered and used its trademark STATOIL for few decades prior to the registration of the disputed domain name. It is therefore unconceivable that the Respondent did not know of the Complainant's trademark. Prior UDRP panels have found in such instances an intention to create an impression of association with the Complainant and have found such conduct to constitute bad faith (Statoil ASA v. VistaPrint Technologies Ltd., WIPO Case No. D2014-0511).
This is further confirmed by the fact that the trademark of the Complainant is "distinctively identifying" of the Complainant and this has been found by previous UDRP panels to constitute bad faith (Eleven v. Howword Flower, WIPO Case No. D2013-1423).
Lastly, the Respondent has not provided a response. In instances where the respondent has not provided any explanation for its choice of a disputed domain name, prior UDRP panels have found themselves unable to conceive "any legitimate basis" for the use of a disputed domain name by a respondent (Statoil ASA v. Domains By Proxy, LLC / John Brendon, WIPO Case No. D2013-1074).
Consequently, the Panel finds 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 <statoilforetag.net> be transferred to the Complainant.
Date: June 10, 2016