WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Staatsolie Maatschappij Suriname N.V. v. WhoisGuard, Inc. / Statee Loil
Case No. D2017-1117
1. The Parties
The Complainant is Staatsolie Maatschappij Suriname N.V. of Paramaribo, Suriname, represented by Whitebridge Advocatuur B.V., the Netherlands.
The Respondent is WhoisGuard, Inc. of Panama, Panama / Statee Loil of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
2. The Domain Name and Registrar
The disputed domain name <staatsolie-uk.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2017. On June 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 June 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 amended Complaint on June 20, 2017.
The Center verified that the Complaint together with the amended 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 June 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on July 13, 2017.
The Center appointed Dennis A. Foster as the sole panelist in this matter on July 18, 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 the national petroleum corporation of Suriname. Since 1980 it has operated under the name and trademark, STAATSOLIE, which mark it has registered with the Bureau Intellectuele Eigendom(“BIE”)of the Ministry of Justice and Police of Suriname (e.g., Registration No. 16916; renewed on December 9, 2009).
The Respondent registered the disputed domain name, <staatsolie-uk.com>, on March 22, 2017. The Complainant alleges that the Respondent used the disputed domain name to host a website that displayed textual material copied from the Complainant’s main website. The disputed domain name now hosts no website. However, the disputed domain name is used currently to send out emails that suggest a connection with the Complainant, which does not actually exist.
5. Parties’ Contentions
The Complainant was founded in 1980 and is the national petroleum corporation of Suriname. The Complainant has a strong presence in South and Central America and is involved in several associations that relate to oil production and distribution within that region.
The Complainant has registered its STAATSOLIE trademark with the proper authorities within Suriname. The Complainant uses that trademark and its company name to promote its goods and services within the oil exploration and refinement industry. The Complainant owns the domain name, <staatsolie.com>, and actively recruits personnel through online methods.
The disputed domain name, <staatsolie-uk.com>, is confusingly similar to the Complainant’s STAATSOLIE mark. The name incorporates the mark in its entirety, adding only “-uk”, which creates confusion rather than distinction. Several online users have contacted the Complainant to inquire whether emails sent in connection with the disputed domain name were from the Complainant.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant, who has not authorized any party to use the STAATSOLIE mark or register it as part of a domain name.
The Respondent attached the disputed domain name initially to a website that copied wholesale many of the texts used by the Complainant on its website and otherwise professed to be connected with the Complainant. Subsequently, the disputed domain name was deactivated, but is still used to issue fraudulent emails. Such deception and email use fail to constitute a bona fide offering of goods or services. Moreover, the Respondent has never been commonly known as the disputed domain name.
The disputed domain name was registered and is being used in bad faith. The emails sent out with respect to the disputed domain name are used to make offers to professionals for non-existent jobs that are nominally connected with the Complainant. Some third party Internet sites have identified the disputed domain name as hosting a fraudulent or fake website. Moreover, the name has been blacklisted for dispensing spam. Such action and notice is consistent only with a domain name having been registered and used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), the Panel shall find for the Complainant and order a transfer of the disputed domain name, <staatsolie-uk.com>, provided that the Complainant demonstrates that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Since the Complainant has furnished the Panel with clear evidence (Annex 4) that the Complainant has a valid registration with the BIE of Suriname for the STAATSOLIE trademark, the Panel is satisfied that the Complainant possesses the required rights in that mark to go forward under Policy, paragraph 4(a)(i). See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1, as follows:
“Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.”
See also, VKR Holding A/S v. Li Pinglong, WIPO Case No. D2016-2269 (“A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner”); and Horten Advokatpartnerselskab v. Domain ID Shield Service CO., Limited / Krutikov Valeriy Nikolaevich, WIPO Case No. D2016-0205.
While the disputed domain name, <staatsolie-uk.com>, is not identical to the Complainant’s trademark, the Panel believes that the name is confusingly similar to the mark. The Complainant’s STAATSOLIE trademark is clearly recognizable in the disputed domain name. The addition of the element “-uk” does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8)
In accordance with the above, the Panel finds that the Complainant has proved that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant owns rights.
B. Rights or Legitimate Interests
In the opinion of the Panel, the Complainant has put forth a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. As ruled above, the name is confusingly similar to the Complainant’s STAATSOLIE mark. Moreover, the Complainant has asserted clearly that it has no relationship with the Respondent and has granted the Respondent no authority to use that mark. The Complainant having met this threshold, it is then incumbent upon the Respondent to come forward with specific evidence to rebut said prima facie case. See, OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, WIPO Case No. D2015-1149; and Accor v. Eren Atesmen, WIPO Case No. D2009-0701 (“A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent.”).
The Respondent has not submitted a filing in this case, and thus the Panel is left to examine the record to determine whether there is a plausible rebuttal to the Complainant’s prima facie case. In doing so, the Panel will regard as true all reasonable contentions made by the Complainant. See, OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, supra (“The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true”); and Banco Bradesco S/A v. Bradescoatualizacao.info Private Registrant, A Happy DreamHost Customer, WIPO Case No. D2010-2108 (“[...] if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint”).
The Panel notes first that there is no evidence whatsoever that the Respondent is commonly known as the disputed domain name. Secondly, the Panel accepts the Complainant’s contention that the website attached initially to the disputed domain name misappropriated extensive wording from the Complainant’s authorized website (found at “www.staatsolie.com”) in an attempt to mislead Internet users as to a legitimate connection between the name and the Complainant. The addition of “-uk” to the fully included trademark would simply suggest to Internet users that the disputed domain name is related to a United Kingdom component of the Complainant’s operations, thereby creating user confusion as to ownership of the name. See, Alfa Laval Corporate AB v. Chris Bull, WIPO Case No. D2017-0826 (<alfalaval-uk.com>); and Sanofi v. Kenneth Crowder, Sanofi-uk, WIPO Case No. D2017-0524 (<sanofi-uk.com>). Finally, the Panel also accepts the Complainant’s contention that the disputed domain name has been used most recently not to host a website but to issue emails concerning bogus employment opportunities with the Complainant, again with the intent to mislead Internet users into believing that there is a legitimate connection between the disputed domain name and the Complainant.
In analyzing these uses of the disputed domain name, the Panel detects neither an offering of goods or services, bona fide or not, nor a legitimate noncommercial or fair use of the disputed domain name. In conclusion, the Panel determines that paragraph 4(c) of the Policy cannot be cited in support of the Respondent’s actions, and that the Complainant’s prima facie case must stand. See Penske Truck Leasing Co., L.P. v. “Steven DelCorso” / “Tonya Wilson, DartsMail, LLC”, WIPO Case No. D2016-0521; Morgans Group LLC v. Sanderson Morrison / Domain Admin, PrivacyProtect.org, WIPO Case No. D2013-1323 (“The use of the Domain Name being made by Respondent, sending fraudulent emails to members of the public [...] is clearly not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name that would confer upon Respondent rights or legitimate interests in the Domain Name”); BHP Billiton Innovation Pty Ltd v. Walter Surhand, WIPO Case No. D2010-0252; and Business For Social Responsibility v. Dr. R.L. Bhatia, Center for Change Management, WIPO Case No. D2007-1008 (“the Respondent’s use of the disputed domain name in relation to its website containing material taken from the Complainant’s site was illegitimate”).
As a result, the Panel rules that the Complainant has succeeded in demonstrating that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Policy, paragraph 4(b) sets forth various circumstances that, if any are found to be true, would compel a panel to reach the conclusion that a disputed domain name was registered and is being used in bad faith. However, the consensus of prior UDRP decisions has determined that findings of bad faith are not limited to the circumstances found in paragraph 4(b), but that there are additional circumstances that could lead a panel to reach the same conclusion. For example, the WIPO Overview 3.0, section 3.1, states:
“Given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant’s trademark would also satisfy the complainant’s burden.”
As noted above, the Panel has accepted the Complainant’s assertions with respect to the uses made by the Respondent of the disputed domain name. Those uses encompass the obvious attempt by the Respondent to mimic the Complainant’s offering and/or misappropriate the Complainant’s trademark in schemes designed to mislead Internet users into believing that the disputed domain name is connected directly to the Complainant. The final use – emails sent to mislead Internet users regarding nonexistent job offerings from the Complainant – is particularly abusive and fraudulent. Taking these circumstances into account, the Panel has no difficulty in finding that the disputed domain name was registered and is being used in bad faith. See Siemens AG v. Charles Mack, WIPO Case No. D2015-2026 (“That the Respondent is using the disputed domain name to send fraudulent emails establishes use in bad faith”); Cantor Fitzgerald Securities, Cantor Index Limited v. Cantor Index, WIPO Case No. D2010-0807 (“Respondent copied text, logos and other elements from Complainant’s website [...] in an effort to defraud Internet users into believing that Respondent was affiliated with, or part of, Complainant’s business entities. [...] This is evidence of Respondent’s bad faith registration and use of the [disputed] Domain Name...”); and Business For Social Responsibility v. Dr. R.L. Bhatia, Center for Change Management, supra, (“...among other things the incorporation of extensive parts of the Complainant’s website without any authority from the Complainant and the nature of those parts [...] is compelling evidence of [bad faith]”).
Accordingly, the Panel finds that the Complainant has shown 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, <staatsolie-uk.com>, be transferred to the Complainant.
Dennis A. Foster
Date: August 1, 2017