Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
Respondent is Martins Ogemdi of Imo, Nigeria. 2. The Domain Name and Registrar
The Domain Name (the “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 January 2, 2015. On January 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 6, 2015, 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 January 14, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 6, 2015.
The Center appointed John C. McElwaine as the sole panelist in this matter on February 19, 2015. 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, Statoil ASA, is a Norwegian company with its principal place of business in Stavanger, Norway. Complainant has been in business for over 40 years and is one of the leading providers of energy products and services on a global basis.
Complainant is the owner of hundreds of trademark registrations for the mark STATOIL in multiple jurisdictions throughout the world, including six registrations for the mark STATOIL in Nigeria that have been registered since June 1, 2009 (Nigerian Registration Numbers 91625, 91622, 91624, 91623 and 91621).
Respondent, Martins Ogemdi, registered the domain name on October 8, 2014.
The Domain Name leads Internet users to a webpage that states at the top, “Your hosting account has been activated successfully. To start, please over write or delete this file. (index.html).” 5. Parties’ Contentions A. Complainant
Complainant contends that the Domain Name should be transferred to Complainant because each of the three elements required in paragraph 4(a) of the Policy has been established.
Complainant alleges by virtue of its long use and the fame of its STATOIL trademark that the STATOIL trademark is exclusively associated with Complainant. Complainant further asserts that prior UDRP decisions have found that the STATOIL trademark is famous. See e.g., Statoil ASA v. Weiwei Qiu / PrivacyP,WIPO Case No. D2011-1752; Statoil ASA v. STNG,WIPO Case No. D2013-2113; and Statoil ASA v. Emeafu Elvis, Proudlyboys,WIPO Case No. D2014-0151. Complainant alleges that it is the owner of a large domain name portfolio of approximately 1,000 domain names containing the STATOIL trademark.
Complainant argues that the Domain Name is confusingly similar to Complainant’s well-known STATOIL trademark, as it consists merely of the word STATOIL, the generic term “mailing” and the generic-top level domain (“gTLD”) “.com”. Complainant points out that the descriptive term “mailing” does not impact the overall impression of the dominant part of the Domain Name, which is “statoil”.
Complainant contends that Respondent has no rights to or legitimate interest in the Domain Name based on its continuous and long prior use of its trademark and trade name STATOIL. Complainant asserts that it has not licensed or otherwise permitted Respondent to use the STATOIL trademark, there is no relationship between the parties, and nothing in the record, including the WHOIS information, suggests that Respondent is commonly known by the Domain Name.
Complainant asserts that Respondent could not have been unaware of the rights held by Complainant and urges this Panel to assume that Respondent’s intention for registering the Domain Name was either to sell the Domain Name to Complainant, or to use it otherwise for financial gain, for example by making fraudulent offers to email recipients or internet users. As to Respondent's use of the Domain Name to display a plain page, Complainant argues that such passive holding of the Domain Name in itself is not capable of creating any rights or legitimate interests in favor of Respondent.
Complainant alleges that Respondent intentionally registered and is using the Domain Name in bad faith. Complainant asserts that Respondent could not have decided to use the word “statoil” in its Domain Name for any reason other than to trade-off the goodwill and reputation of Complainant’s famous trademark or to otherwise create a false association, sponsorship or endorsement with or of Complainant. Since the Domain Name has no other meaning except for the reference to the name and trademark of Complainant, and there is no way in which it could be used legitimately by Respondent, Complainant requests this Panel to find that Respondent has registered and is using the Domain Name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4 of the UDRP requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with actual evidence demonstrating:
(i) The 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 Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Because of Respondent’s default, the Panel may accept as true the factual allegations stated within the Complaint, and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Ltd. v. AnonymousSpeech LLC and Global House Inc.,WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(e) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”) Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. The Panel finds that Complainant owns trademark rights on the name STATOIL, which predate the registration of the Domain Name, even in Nigeria, where Respondent claims to reside.
Complainant has established that STATOIL is a well-known and strong mark. The mark has been in use for more than 40 years. STATOIL is widely registered on an international basis. Such a finding has been confirmed by previous UDRP decisions. See e.g., Statoil ASA v. Weiwei Qiu / PrivacyP,WIPO Case No. D2011-1752; Statoil ASA v. STNG,WIPO Case No. D2013-2113; and Statoil ASA v. Emeafu Elvis, Proudlyboys,WIPO Case No. D2014-0151.
The Domain Name contains Complainant’s well-known trademark STATOIL in its entirety, as a dominant element. It is well-established that the addition of a descriptive or generic word to a trademark in a domain name, particularly when such additional words relate to the goods or services with which the mark is used, does not avoid confusing similarity. See eBay Inc. v. ebayMoving / Izik Apo,WIPO Case No. D2006-1307. Although Complainant’s core business involves energy and not mailing, use of mail systems or email is a fundamental activity of any business. Thus, the public is likely to believe that is related to a website with mailing functionality or that email using the Domain Name originates from Complainant. Here, the Panel finds that the addition of the descriptive word “mailing” does not serve to sufficiently distinguish or differentiate the Domain Name from Complainant’s well-known STATOIL trademark.
Also, the addition of the generic Top-Level Domain (“gTLD”) “.com” to the Domain Name typically does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.com” is generally without legal significance since use of a gTLD is technically required to operate the Domain Name and it does not serve to identify the source of the goods or services provided by the registrant of the Domain Name.
The Panel finds that Complainant has met its burden of showingthat the Domain Name is confusingly similar to the STATOIL trademark in which Complainant has valid trademark rights. B. Rights or Legitimate Interests
Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent holds no rights or legitimate interests in the Domain Name. However, because the nature of the registrant’s rights or interests, if any, in the Domain Name lies most directly within the registrant’s own knowledge, the consensus view is that this burden is a light one for Complainant. See Education Testing Service v. TOEFL,WIPO Case No. D2000-0044; Grove Broadcasting Co. Ltd v. Telesystems Communications Limited,WIPO Case No. D2000-0703. A complainant need only make a prima facie showing on this element, at which point the burden shifts to Respondent to present evidence that it has some rights or legitimate interests in the Domain Name at issue. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141(discussing and citing the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), paragraph 2.1); see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252.
Complainant has made a prima facie showing that Respondent lacks any rights or legitimate interest in the Domain Name. In particular, Complainant has demonstrated that Respondent did not use the Domain Name in connection with either a bona fide offering of goods and services or use in a legitimate noncommercial or fair manner. At most it can be inferred that Respondent intended to use the Domain Name to engage in mailing or email services under the well-known STATOIL trademark. Similarly, Respondent has no rights or legitimate interests in Complainant’s mark, or in the name “statoil”. Complainant denies having granted any authorization, whether express or implied, to Respondent to use the Domain Name. Similarly, there is no evidence in the WHOIS data for the Domain Name that Respondent has been commonly known by the term “statoil”.
Complainant has made a prima facie showing of Respondent’s lack of any right or legitimate interest and Respondent has failed to come forward to rebut that showing. Therefore, the Panel is entitled to accept that Complainant has established the second element in paragraph 4(a)(ii) of the Policy. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Complainant must show that Respondent registered and is using the Domain Name in bad faith. Paragraph 4(a)(iii) of the Policy.
A non-exhaustive list of what factors constitutes bad faith registration and use is set out in paragraph 4(b) of the Policy, including paragraph 4(b)(iv), which indicates that bad faith exists where Respondent, by using the Domain Name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107.
Based on Complainant’s submissions, which were not rebutted by Respondent, Respondent must have known of Complainant’s well-known STATOIL trademark when it registered the Domain Name. It is alleged by Complainant that there is no explanation for Respondent to have chosen to use the unique name “statoil”in its Domain Name other than to trade-off the goodwill and reputation of Complainant’s trademark or otherwise create a false association with Complainant. With no Response by Respondent, this claim is undisputed. Of particular concern, is that the use of the term “mailing” was selected by Respondent because it implies that any emails sent using this Domain Name may be communications originating from Complainant.
There is substantial authority that registration of a domain name that is confusingly similar to a well-known trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use. See Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael,WIPO Case No. D2009-0942 (“the Panel concurs with previous WIPO UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements”), citing, Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Pepsico, Inc. v. “null”, aka Alexander Zhavoronkov,WIPO Case No. D2002-0562; Pepsico, Inc. v. Domain Admin,WIPO Case No. D2006-0435.
Here, the Panel finds that the term “statoil” has no relationship to the word “mailing” other than to draw a connection to Complainant. Respondent must have known of Complainant’s well-known STATOIL trademark when it registered and used the Domain Name. Such facts support a finding of bad faith registration. See Pfizer Inc. v. NA,WIPO Case No. D2005-0072. Furthermore, even though the website displayed at the Domain Name displays only a short message, under the circumstances discussed herein, the fact that Respondent may be passively holding the Domain Name can still be characterized as bad faith use. See Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (passive holding of a domain name can be bad faith when Complainant’s mark has a strong reputation and Respondent has provided no evidence of whatsoever of any actual or contemplated good faith use by it of the Domain Name).
For this reason, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith. 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 Domain Name be transferred to Complainant.
John C. McElwaine
Sole Panelist
Date: March 5, 2015
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