WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA v. Domain Admin, Privacy Protection Service Inc D/B/A PrivacyProtect.org / Nicolas Kerry
Case No. D2017-0046
1. The Parties
The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Domain Admin, Privacy Protection Service Inc D/B/A PrivacyProtect.org of Nobby Beach, Queensland, Australia / Nicolas Kerry of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
2. The Domain Name and Registrar
The disputed domain name <statoil-eu.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 January 11, 2017. On January 11, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 12, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 13, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 16, 2017.
The Center verified that the Complaint together with the amendment to 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 January 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2017.
The Center appointed Angelica Lodigiani as the sole panelist in this matter on February 13, 2017. 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 with approximately 22,000 employees and extensive operations worldwide. The Complainant operates since at least 40 years and is one of the leading providers of energy products and services. The Complainant currently operates in 37 countries and its headquarters are located in Stavanger, Norway.
The Complainant is the owner of the trademark STATOIL, which is protected through hundreds of registrations around the world, the first one being granted in 1974 (Norwegian trademark registration No. 90221, now ceased). Among the many trademark registrations in the Complainant’s name, the Complainant cites in particular STATOIL, international registration No. 730092 of March 7, 2000 for goods and services in classes 1, 4, 17, 39 and 42, and STATOIL, European Union Trade Mark registration No. 3657871 filed on February 10, 2004 and registered on May 18, 2005, for goods and services in classes 1, 4, 17, 35, 37, 39, 40 and 42.
The Complainant also owns numerous domain names containing the trademark STATOIL. The Complainant’s official website is “www.statoil.com”.
The disputed domain name <statoil-eu.com> was registered on November 24, 2016 using a privacy protection service (Privacy Protection Service, Inc. D/B/A/ Privacyprotect.org). In its verification response, the Registrar informed the Center that the Respondent is an individual named Nicolas Kerry, with address in London, United Kingdom. The disputed domain name resolves to a website displaying only an inaccessible “cgi-bin” folder.
5. Parties’ Contentions
According to the Complainant, the disputed domain name is confusingly similar to the Complainant’s trademark, as it fully reproduces the Complainant’s trademark followed by the additional element “-eu” and the generic Top-Level Domain (“gTLD”) “.com”. The Complainant contends that the additional element “-eu” clearly refers to the European Union and is therefore descriptive. The combination of the Complainant’s trademark with the “-eu” element will lead Internet users to believe that the disputed domain name refers to a particular location of the Complainant, i.e., the European Union. Moreover, the addition of the “.com” gTLD does not have any bearing in the comparison of the disputed domain name with the Complainant’s trademark.
The Complainant maintains that the Respondent lacks rights or legitimate interests in the disputed domain name for a number of reasons.
First, the Respondent is not affiliated or related to the Complainant. Secondly, the Complainant never licensed, nor otherwise authorized the Respondent to use the trademark STATOIL in connection with a website, or for any other purpose.
Furthermore, according to the Complainant, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services; the Respondent is not generally known by the disputed domain name and has not acquired trademark rights on the term “statoil”.
The Complainant points out that the disputed domain name currently only holds an inaccessible “cgi-bin” folder. The Complainant therefore infers that the Respondent registered the disputed domain name for financial gain and/or for illegal activities. In the Complainant’s view, the fact that “MX-records” are set up for the disputed domain name indicates a potential risk of use of the disputed domain name in the distribution of fraudulent emails.
The Complainant maintains that the disputed domain name was registered in bad faith because the STATOIL trademark was already well known at the time of the registration of disputed domain name and the Respondent has no connection whatsoever with the disputed domain name.
As far as use in bad faith is concerned, the Complainant cites previous UDRP decisions that stated that bad faith exists where a domain name is so obviously connected with the Complainant that its very use by someone with no connection with the Complainant suggests opportunistic bad faith. Furthermore, the Complainant points out that the registration, followed by passive holding, when there is no way in which the domain name could legitimately be used, amounts to use in bad faith. In the instant case, the disputed domain name is so univocally and directly connected to the Complainant’s trademark that it is impossible to conceive any plausible or active use of the disputed domain name by the Respondent that would not be in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark as it fully incorporates the Complainant’s trademark followed by the “-eu” suffix. The mere addition of the “-eu” portion is certainly insufficient to avoid confusing similarity. The “EU” acronym is well known to designate the “European Union”, and is used worldwide. The Respondent appears to be located in the United Kingdom and can be assumed to be aware of the meaning of this acronym. The Panel believes that the Respondent deliberately chose to add the “-eu” suffix to the Complainant’s STATOIL trademark, to induce Internet users to believe that the disputed domain name referred to some EU activities of the Complainant, or to a EU location of the Complainant, or was in any case connected to the Complainant.
Therefore, the Panel concludes that the Complainant has made out the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel believes that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
In particular, the Complainant did not authorize the Respondent to reflect its trademark in the disputed domain name. The Respondent is not an authorized dealer or licensee of the Complainant, nor is related to the Complainant in any way. Furthermore, there is no evidence in the case file that the Respondent is known by the disputed domain name or holds rights in the distinctive sign and trademark STATOIL by virtue of any kind of registration or otherwise.
The disputed domain name is currently not used, as it simply leads to a webpage containing an inaccessible “cgi-bin” folder. Therefore, there is no evidence of any use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, nor of any legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent had the opportunity to provide its arguments in support of its rights or legitimate interests in the disputed domain name. However, by not filing a Response, the Respondent missed this opportunity and the Panel is authorized to draw from the Respondent’s default all such inferences it considers appropriate, in compliance with paragraph 14 of the Rules.
In consideration of the foregoing, the Panel concludes that the Complainant has satisfied its burden under the second element to show that the Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent registered and used the disputed domain name in bad faith.
As far as registration in bad faith is concerned, the fact the disputed domain name fully incorporates the Complainant’s trademark is clear evidence that the Respondent was well aware of the Complainant’s trademark at the time it proceeded with the registration of the disputed domain name. The addition of the suffix “-eu” to the Complainant’s trademark is an evident attempt to mislead Internet users as to the origin of the disputed domain name.
As far as use in bad faith is concerned, previous UDRP Panels have already ascertained the well-known character of the Complainant’s STATOIL trademark due to its extensive use and global promotion (Statoil ASA v. Weiwei Qiu / PrivacyProtect.org, WIPO Case No. D2011-1752; Statoil ASA v. Domain Admin / Management SO Hkg, WIPO Case No. D2012-2392; Statoil ASA and Statoil Fuel & Retail Aviation AS v. NA - Claudio Russo, WIPO Case No. D2013-0963; Statoil ASA v. Daniel MacIntyre, Ethical Island, WIPO Case No. D2014-0369).
The fact that the Respondent effectively passively holds the disputed domain name cannot prevent a finding of use in bad faith. The disputed domain name only resolves to a very basic site with a “cgi-bin” inaccessible folder. “Customers searching for information on the Complainant and the Complainant’s service may come to the conclusion that there are problems at the Complainant’s site, that the Complainant’s web information and services are no longer in active use. Such ʻnon-use’ by the Respondent can […] have the same negative result on the Complainant as active use of a disputed domain name, and amounts to bad faith use” (FIL Limited v. George Dyle, WIPO Case No. D2014-1418).
Finally, the Complainant has provided evidence that the Respondent has set up “MX-records” for the disputed domain name. This entails that the Respondent can send emails through the email address “@statoil-eu.com”. The Respondent can therefore use (or may already have used) the disputed domain name to send fraudulent emails such as messages containing spam, phishing attempts, etc. (see also Conféderation Nationale du Crédit Mutuel, Crédit Industriel et Commercial v. Khodor Dimassi, WIPO Case No. D2016-1980).
For all reasons mentioned above, the Panel concludes that the Respondent registered and is using the disputed domain name 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 <statoil-eu.com> be transferred to the Complainant.
Date: February 24, 2017