WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA v. Garba
Case No. D2018-0809
1. The Parties
The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Garba of Al Kuwayt, Kuwait.
2. The Domain Name and Registrar
The disputed domain name <statoilus.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 11, 2018. On April 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 14, 2018, 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 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 9, 2018.
The Center appointed Eduardo Machado as the sole panelist in this matter on May 17, 2018. 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 internationally known energy company, known as Statoil ASA, with its headquarters in Norway. The Complainant has been in the energy products and services business for over 40 years.
The Complainant is the owner of several trademark registrations for the STATOIL mark in various jurisdictions, including but not limited to the United States of America, the European Union, South Africa, Canada, Brazil and Japan (see, e.g., international trademark No. 730092 for STATOIL, registered on March 7, 2000). The oldest trademark registration dates back to 1974.
The Complainant also owns and operates a number of different domain names, such as <statoil.com> and <statoil.com.br>, the first one mentioned having been registered since 1995.
The disputed domain name <statoilus.com> was registered on February 20, 2018, and resolves to an inactive website.
5. Parties' Contentions
The Complainant states that:
1. The disputed domain name is confusingly similar to the Complainant's registered mark and the domain names under its control, in light of the fact that the disputed domain name is comprised of the Complainant's mark added by the letters "us", which might make a reference to the United States of America;
2. The Complainant's mark is globally known and the Complainant owns several trademark registrations for it around the globe, as well as several domain name registrations;
3. The Complainant's STATOIL mark's fame has been confirmed in previous UDRP cases;
4. The addition of a descriptive element to the Complainant's registered trademark in a domain name is not sufficient to prevent a finding of confusing similarity for the purposes of the UDRP, as such descriptive component might actually add to the confusion, as people might think that it refers to the Complainant's activities in the United States of America;
5. The Respondent has no rights or legitimate interests in respect of the disputed domain name as the Complainant has made a continuous and long prior use of its trade name and trademark STATOIL;
6. The disputed domain name is currently redirecting Internet users to an inactive website, showcasing no content at all. The Complainant suggests that this might indicate a potential risk of fraudulent use of the disputed domain name, as MX-records are set up in relation to the disputed domain name;
7. The Respondent has intentionally registered and is using the disputed domain name in bad faith, as registration, followed by a passive holding of the disputed domain name can amount to use in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(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.
The burden of proving these elements is on the Complainant.
A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Panel finds that the Complainant has proven to be the holder of numerous trademark registrations around the world consisting of the STATOIL mark.
It is well established in previous UDRP decisions that, where the disputed domain name incorporates a complainant's registered trademark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
Furthermore, the Panel finds that the disputed domain name is indeed confusingly similar to the Complainant's marks. In that sense, the mere addition of "us" to the end of the Complainant's STATOIL mark is not enough to distinguish the disputed domain name from the mark. The addition of "us", being a reference to the acronym for the United States of America, might lead Internet users to think that the domain name is one such as to identify Complainant's activities in the United States of America (in which the Complainant does business and holds trademark registrations).
Therefore, the addition of a descriptive term, in this case consisting of letters that might reference a country, is not sufficient to dispel confusing similarity with the Complainant's marks, as seen in UDRP cases (see, Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; and Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755).
In view of the above, this Panel concludes that the Complainant has fulfilled the first requirement under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel notes that prior UDRP panels have consistently taken the view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent's burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
On the record, the Panel verifies that the Complainant is the owner of several STATOIL trademark registrations and that it has no business or other relationships with the Respondent.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain name. Besides, no active use of the domain name has been made.
Furthermore, with respect to paragraph 4(c)(iii) of the Policy, the Respondent has not made or is not making a legitimate noncommercial or fair use of the disputed domain name.
Accordingly, considering the absence of a response, meaning that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name, the Panel accepts that the Complainant has made such a prima facie case and finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
Thus, the Panel considers paragraph 4(a)(ii) of the Policy fulfilled.
C. Registered and Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith, according to the Policy, paragraph 4(a)(iii).
In the present case, the Panel finds that the Respondent has intentionally registered the disputed domain name, which is confusingly similar to the Complainant's marks and domain names and could mislead consumers. Based on all the above facts, it is highly unlikely that the Respondent was not aware of the Complainant's trademark rights when the disputed domain name was registered. In fact, the Complainant's mark enjoys a wide reputation, which has been confirmed by previous UDRP panels (see Statoil ASA v. Weiwei Qiu / PrivacyProtect.org, WIPO Case No. D2011-1752, and Statoil ASA v. Domain Admin, Privacy Protection Service Inc D/B/A PrivacyProtect.org / Nicolas Kerry, WIPO Case No. D2017-0046).
The Panel also notes that the allegations of bad faith made by the Complainant were not contested, as the Respondent did not reply to the Complaint. Examining the evidence provided by the Complainant, it is confirmed that its trademarks have been in use long before the disputed domain name was registered.
Also, the disputed domain name would be a perfect reproduction of the Complainant's mark, were it not for the addition of the "us" letters, which, as already exposed, is not sufficient to dispel confusion and could, in fact, further mislead Internet users.
Additionally, the Panel verifies that the disputed domain name resolves to an inactive website and notes that the passive holding of the disputed domain name does not prevent a finding of bad faith. See section 3.3 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). In the absence of any supporting assertions or evidence from the Respondent, the Panel also agrees there to be no plausible bona fide use that the Respondent could make of the disputed domain name that would not interfere with the Complainant's prior rights. As such, the Panel finds the Respondent's passive holding of the disputed domain name to amount to bad faith use.
Last but not least, the Panel notes that there are no facts set out in the available record which could possibly justify the registration or passive holding of the disputed domain name by the Respondent.
In view of the above, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.
Therefore, the Panel finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
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 <statoilus.com> be transferred to the Complainant.
Date: May 30, 2018