Complainant is STATOIL ASA of Stavanger, Norway, represented by Valea AB, Sweden.
Respondent is Valery Anadarkopet of Abidjan, Côte d'Ivoire. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 5, 2014. On March 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2014, 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 13, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 3, 2014.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on April 17, 2014. 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 trademark upon which the Complaint is based is STATOIL.
According to the documentary evidence and contentions submitted, Complainant owns a large number of trademark registrations for the trademark STATOIL around the world, including International Trademark Registration No. 730092 and Community Trademark Registration No. 003657871.
The Panel notes that Complainant is one of the world's largest oil companies and significant supplier of natural gas, and that the trademark STATOIL has been considered as well known by a number of previous UDRP panels, including in Statoil ASA v. Weiwei Qiu / PrivacyP,WIPO Case No. D2011-1752, and Statoil ASA and Statoil Fuel & Retail Aviation AS v. NA - Claudio Russo,WIPO Case No. D2013-0963.
The disputed domain name was registered with the Registrar on June 19, 2013. 5. Parties' Contentions A. Complainant
Complainant argues that the disputed domain name is identical or confusingly similar to the trademark STATOIL because the additional elements "mail" and "-uk" in the disputed domain name do not take away the confusing similarity of the disputed domain name with Complainant's trademark since the word "mail" is a generic term commonly used in domain names and the "-uk" part is commonly acknowledged as referring to the United Kingdom, a country in which Complainant conducts business.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) Respondent is not affiliated or related to Complainant in any way, or licensed or otherwise authorized to use the trademark STATOIL in connection with a website or for any other purpose; (ii) Respondent is not generally known by the disputed domain name, and has not acquired any trademark or service mark rights in that name or mark; (iii) Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services; (iv) it can be assumed that Respondent's intention for registering the disputed domain name has been either to sell the disputed domain name to Complainant, or to use it otherwise for financial gain, as the disputed domain name currently holds no Internet content of Respondent; and (v) Complainant has strong reason for concern that the disputed domain name is or will be used for illegal activities.
Finally, Complainant contends that the disputed domain name has been registered and is being used in bad faith by Respondent because: (i) the trademark STATOIL is well known worldwide, and was so also at the time of registration of the disputed domain name; (ii) the disputed domain name bears no relationship to the Respondent's name or its business; (iii) a passive holding of a domain name when there is no way in which it could be used legitimately, can amount to use in bad faith, and (iv) the disputed domain name has no other meaning except for the reference to the trademark of Complainant, and there is no way in which it could be used legitimately. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Effect of the Default
The consensus view is that the respondent's default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 4.6, "WIPO Overview 2.0"). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994.Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc., supra; RX America, LLC. v. Matthew Smith,WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements. B. Identical or Confusingly Similar
The disputed domain name incorporates the trademark STATOIL in its entirety with the addition of the word "mail" and of the suffix "-uk". In this type of combination it is clear that the trademark STATOIL stands out and leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademark.
Previous UDRP panels have held that when a domain name wholly incorporates a complainant's registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation Limited v. Barry Cheng Kwok Chu,WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd.,WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S. r. l.,WIPO Case No. D2001-1206; Utensilerie Associate S.p.A. v. C & M,WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd.,WIPO Case No. D2007-0282. That is particularly true where the trademark is well known, as in the instant case.
The addition of the generic term "mail" and of the descriptive term "-uk" increases the likelihood of confusion because both of them reinforce an association with the trademark STATOIL. Also, it has been consistently decided that the addition of generic or descriptive terms to an otherwise distinctive trademark name is to be considered confusingly similar to the registered trademark. Sanofi-aventis v. BH Marketing,WIPO Case No. D2006-0440; Sanofi-aventis v. Elizabeth Riegel and Andrew Riegel,WIPO Case No. D2005-1045; Sanofi-Aventis v. Internet Marketing Inc./John Bragansa,WIPO Case No. D2005-0742; F. Hoffmann-La Roche AG v. Bobik Marley,WIPO Case No. D2007-0057).
Finally, the addition of the suffix ".com" is non-distinctive in this case because it can be considered as a simple technical requirement for the registration of the disputed domain name. RX America, LLC. v. Matthew Smith, supra.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the trademark STATOIL and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met. C. Rights or Legitimate Interests
The disputed domain name is not the name of Respondent or the name by which Respondent is commonly known, and the disputed domain name is not Respondent's trade name or trademark. The Panel also accepts Complainant's contention that Respondent is not affiliated or related to Complainant in any way, or licensed or otherwise authorized to use the trademark STATOIL in connection with a website or for any other purpose.
On April 30, 2014, the Panel tried to visit a webpage to which the disputed domain name could resolve, but that attempt was unsuccessful. This confirms that the disputed domain name currently holds no Internet content of Respondent. Therefore, Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services.
The consensus view in the URDP panel decisions has been that a complainant is required to make out an initial prima facie case, respondent then carrying the burden of demonstrating rights or legitimate interests in the disputed domain name. If respondent fails to do so, complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. WIPO Overview 2.0, paragraph 2.1.
The Panel is convinced that Complainant has done enough to establish a prima facie case that Respondent lacks rights to or legitimate interests in the disputed domain name, and by defaulting Respondent has failed to provide the Panel with any evidence of Respondent's rights to or legitimate interests therein. In addition, none of the three nonexclusive examples of what can constitute a right or legitimate interest in the disputed domain name [paragraph 4(c) of the Policy] are applicable in this case.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met. D. Registered and Used in Bad Faith
In view of the particulars of the instant case, the Panel finds that Respondent was undoubtedly aware of the existence of the trademark STATOIL when Respondent registered the disputed domain name. In fact, the combination of the word "statoil", which is recognized as a well known trademark, with the words "mail" and
"-uk" indicates that, when it registered the disputed domain name, Respondent acted with opportunistic bad faith because the disputed domain name was associated with and would be recognized as connected to Complainant's trademark.
In addition, Complainant alleges that the state of passive holding does not prevent the finding of bad faith use, relying on previous UDRP decisions.
The consensus view in URDP panel decisions has been that "the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith", and that a panel must examine such circumstances as "complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity" (WIPO Overview 2.0, paragraph 3.2). See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Parfums Christian Dior v. 1 Netpower, Inc.,WIPO Case No. D2000-0022; J. García Carrión, S.A. v. Mª José Catalán Frías,WIPO Case No. D2000-0239; Bayer Aktiengesellschaft v. H. Monssen, WIPO Case No. D2003-0275; Teachers Insurance and Annuity Association of America v. Wreaks Communications Group,WIPO Case No. D2006-0483; MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412.
The Panel is of the opinion that, under appropriate circumstances, passive holding evidences bad faith use. In the instant case the majority of the facts referred to above are present: Complainant owns a well-known trademark, and there is no indication in the records of a possible good faith use of the disputed domain name because of the state of passive holding.
In short, the manner in which Respondent has registered and is using the disputed domain name demonstrates that the disputed domain name was registered and has been used in bad faith.
Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith, and finds that the requirement of paragraph 4(a)(iii) of the Policy is met. 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 Complainant.
Manoel J. Pereira dos Santos
Sole Panelist
Date: April 30, 2014
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