The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Whois Privacy Protection Service, Inc. of Bellevue, Washington, United States of America; Paul W. Christy of Lansdale, Pennsylvania, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2013. On September 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 4, 2013, 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 September 9, 2013 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 September 10, 2013.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 1, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 2, 2013.
The Center received a series of email communications from the Respondent starting on September 18, 2013. In response, the Center acknowledged receipt of these communications and advised the Respondent of the due date for any Response.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on October 16, 2013. 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 a Norwegian company with operations worldwide, and is the owner of the trademark STATOIL, which is protected in several countries around the world in connection with the energy business (Annex 3 to the Complaint).
In particular the Complainant is the owner of the European Community trademark Reg. No. 003657871 for STATOIL, dated May 18, 2005, covering goods and services in classes 01, 04, 17, 35, 39, 40 and 42 (Annex 4 to the Complaint).
The disputed domain name was registered by the Respondent on July 1, 2013 and currently does not resolve to an active webpage. 5. Parties’ Contentions A. Complainant
The Complainant claims to be a leader in the international energy business, currently employing more than 21,000 people around the world.
The disputed domain name is, according to the Complainant, confusingly similar to the Complainant’s highly well-known and reputable trademark STATOIL, reproducing it in its entirety with the addition of the generic term “group”, which is not sufficient to avoid any likelihood of confusion and, quite to the contrary, only increases the risk of confusion.
Furthermore the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name given that:
a) the Respondent is not affiliated with the Complainant in any way nor has it been licensed or authorized by the Complainant to register and use the STATOIL trademark in the disputed domain name;
b) the Respondent is not commonly known by the name “Statoil”, nor has it acquired any trademark or service mark rights in that name or mark;
c) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services;
d) it can be assumed that the Respondent’s intention in registering the disputed domain name was either to sell it to the Complainant or to use it for financial gain by either unduly attracting Internet users to websites that might appear to be related to the Complainant or even by phishing attempts or other scams.
As to the registration of the disputed domain name in bad faith the Complainant asserts that the combination of the STATOIL trademark with the word “group” shows that the Respondent must have been aware of the Complainant at the time of registration of the disputed domain name given the Complainant’s business and trademark.
Lastly, also according to the Complainant, the use of a parked page by the Respondent further indicates that the Respondent has registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. In the first email sent by the Respondent, he claimed that he did not have any domain name but solely an email address he has had since 1997. In a second email the Respondent insists in that he has nothing to send and questions whether the Center’s communication was spam.
In a third email, dated September 20, 2013 the Respondent, in a rather angry manner and poor English, insists in that the Center’s communication would be a “rip off” and that he would go “talk to the police about you skam” (sic). In a fourth email, also dated September 20, 2013, the Respondent states that he did not want to hear any more from this matter but that he could use money for hospital bills and doctors since he has a heart condition and is disabled. No further communication was received by the Respondent. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(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 Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainant has established rights in the STATOIL trademark duly registered in the European Community as well as in several countries around the world (Annexes 3 and 4 to the Complaint).
Past UDRP Panels have already found that “[t]he STATOIL trademark is registered worldwide and is well known” (Statoil ASA v. Weiwei Qiu / PrivacyP, WIPO Case No. D2011-1752,; Statoil ASA v. Domain Admin/ Management SO Hkg,WIPO Case No. D2012-2392; and Statoil ASA and Statoil Fuel & Retail Aviation AS v. NA - Claudio Russo,WIPO Case No. D2013-0963).
The addition of the generic term “group” indeed creates a likelihood of confusion given that many large companies and multinationals, such as the Complainant, use the term “group” when referring to joint activities of their organizations.
Therefore the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The first element of the Policy has been established. B. Rights or Legitimate Interests
The Respondent’s communications with the Center indicate quite clearly that he makes no claim whatsoever to rights or legitimate interests in the domain name.
As decided in past similar UDRP cases where “an exchange of e-mails between the Center and the Respondent subsequent to the initiation of the dispute and at a time when the Respondent had been served with the Complaint” in which “exchange of e-mails the Respondent makes no claim whatsoever to rights or legitimate interests in the domain name”, the Panel can establish “on the balance of probabilities that the domain name in issue can only refer to the Complainant’s…trademark and that the Respondent has no rights or legitimate interests in the domain name in issue”. (Produits Berger v. Matthew ShewchukWIPO Case No. D2004-1083).
Therefore the Panel finds that the Respondent lacks rights or legitimate interest in the disputed domain name. The second element of the Policy has also been met. C. Registered and Used in Bad Faith
This case presents the following circumstances which indicate bad faith use and registration of the disputed domain name given that:
a) the Complainant’s trademark is registered worldwide and well known;
b) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name;
c) the Respondent has taken active steps to conceal his true identity, by choosing to operate under a privacy shield/privacy protection service;
In this case, there is no active use of the disputed domain name (i.e., the disputed domain named does not currently resolve to an active webpage). Several past UDRP Panels have found bad faith registration and use when such or similar circumstances are cumulatively present (see for all Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Moreover, although this is not entirely clear to the Panel, the Respondent’s communications could suggest that the Respondent has nothing to do with the disputed domain name. If this were to be the case, the Panel would still be prepared to find in favor of the Complainant in this case, as this would constitute evidence that whoever is behind the registration of the disputed domain name registered and used it in bad faith.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy. 7. Decision
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 be transferred to the Complainant.
Wilson Pinheiro Jabur
Sole Panelist
Date: October 30, 2013
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