WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Equinor ASA v. Joe Bright Nyarko, Apt Support Ventures
Case No. D2021-4131
1. The Parties
Complainant is Equinor ASA, Norway, represented by Valea AB, Sweden.
Respondent is Joe Bright Nyarko, Apt Support Ventures, Ghana.
2. The Domain Name and Registrar
The disputed domain name <statoiloffshore.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 December 9, 2021. On December 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 11, 2021, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on January 11, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2022. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on February 1, 2022.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on February 16, 2022. 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
Complainant is a Norwegian oil, gas, and renewable energy company that was, until 2018, known as Statoil ASA. Complainant is the proprietor of a voluminous portfolio of registrations for the STATOIL trademark in jurisdictions around the world, including International Registration No. 1220682 for STATOIL (word mark), registered on December 5, 2013, for goods and services in classes 1, 4, 6, 7, 9, 35, 36, 37, 39, 40, 41, and 42.
The disputed domain name was registered on November 22, 2021. It resolves to a landing page displaying Complainant’s STATOIL mark and a copyright notice attributing ownership to “Statoil”. The site has no further content.
5. Parties’ Contentions
Complainant’s contentions may be summarized as follows:
Under the first element, Complainant states that it was founded as the Norwegian State Oil Company (hence, Statoil) in 1972, and is majority-owned by the Norwegian state. The STATOIL mark was first registered in 1974. In 2018, when Complainant changed its name to Equinor, reflecting its shift in focus to renewable energy. The STATOIL trademark is still well known and connected to the Equinor brand. The disputed domain name incorporates Complainant’s mark in its entirety.
Under the second element, Complainant states that Respondent is not affiliated or related to Complainant in any way, or licensed or otherwise authorized to use the STATOIL mark in any way. The disputed domain name resolves to a website containing a misleading presentation of Complainant. Respondent uses this website to attempt to justify the registration of the disputed domain name and to take unfair advantage of Complainant’s reputation for financial gain.
Under the third element, Complainant states that the composition of the disputed domain name demonstrates that Respondent was fully aware of Complainant and its marks. The disputed domain name resolves to a website that appears to mimic an official website of Complainant, and which attempts to confuse consumers by displaying Complainant’s mark. Furthermore, the page offers a login option which can be used for phishing. There is a high risk that fraudulent emails are being distributed from this domain as the MX records are active. When Internet users receive an email from the disputed domain name and they check the content of the relevant website they will find Complainant’s official website which could convince them that any communication is indeed sent by Complainant.
Complainant requests transfer of the disputed domain name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) Respondent has registered and is using the disputed domain name in bad faith.
Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A. Identical or Confusingly Similar
Complainant has provided evidence establishing that it has trademark rights in the STATOIL mark through registrations in numerous jurisdictions. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2. The Panel notes that the registration of the mark confers standing to file a UDRP case without regard to whether or not that mark is currently used by Complainant, and that Respondent has not challenged Complainant’s trademark rights. See WIPO Overview, section 1.2.1.
In comparing Complainant’s STATOIL trademark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to it. The disputed domain name comprises Complainant’s STATOIL mark in its entirety, followed by the term “offshore”. It is the consensus view of UDRP panels that, where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark. Moreover, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See WIPO Overview 3.0, sections 1.7 and 1.8.
It is the well-established view of UDRP panels that the addition of the generic Top-Level Domain (“gTLD”), in this case, “.com”, to a domain name is viewed as a standard registration requirement and as such is typically disregarded under the first element (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The circumstances stated in the Complaint and evidence set forth in the annexes thereto indicate that Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not authorized by Complainant and is not commonly known by the disputed domain name. Furthermore, the disputed domain name comprises Complainant’s mark, with the addition of a term descriptive of Complainant’s operations in the oil industry (namely, “offshore”), thereby creating a likely risk of connection with Complainant. Such holding of the disputed domain name cannot confer rights or legitimate interests.
Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where, as here, Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.
Respondent, in failing to file a Response, has not provided evidence of any rights or legitimate interests. The circumstances of the case, in particular, the website displaying Complainant’s mark and what appears to be a photograph of an oil platform, which is directly related to Complainant’s business, prevent the inference of rights nor legitimate interests on the part of Respondent.
Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Complainant has demonstrated Respondent’s bad faith registration and use of the disputed domain name. Complainant provides uncontroverted evidence that its rights in the STATOIL trademark significantly predate the registration of the disputed domain name, and that the mark has been used continuously and widely for approximately 50 years. The disputed domain name contains Complainant’s STATOIL mark together with the term “offshore”. The Panel concurs with previous UDRP Panels that the STATOIL mark is well known. See, for instance, Statoil ASA v. Weiwei Qiu / PrivacyProtect.org, WIPO Case No. D2011-1752 and Statoil ASA v. Weiwei Qiu, WIPO Case No. D2015‑0411.
UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith on the part of a respondent. See WIPO Overview 3.0, section 3.1.4. Respondent has not provided any information that would rebut this presumption.
The evidence provided by Complainant indicates that the disputed domain name resolves to a website displaying Complainant’s mark and a photograph related to Complainant’s business. The Panel finds this is evidence of bad faith use of the disputed domain name as Respondent seeks to cause confusion for its commercial benefit. See WIPO Overview 3.1.4.
The configuration of MX records for email is additionally indicative of probable use of the disputed domain name for the purpose of impersonating Complainant and misleading Internet users. See Drägerwerk AG & KGaA v. Domain Admin, Privacy Protect LLC (PrivacyProtect.org) / BLACK ROSES, WIPO Case No. D2020‑3167.
Respondent has not presented any rational basis for registering and using the disputed domain name, nor does the Panel find that any such a basis is plausible. Such circumstances indicate bad faith in registration and use of the disputed domain name.
The Panel therefore finds that Complainant has established the third element under 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 <statoiloffshore.com> be transferred to Complainant.
Date: March 3, 2022