The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Aysun Kalamar of Izmir, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2015. On August 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 14, 2015, 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 August 20, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2015.
The Center appointed Ladislav Jakl as the sole panelist in this matter on September 22, 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
The Complainant Statoil ASA is an international energy company with 21,000 employees and extensive operations worldwide. Statoil has been in business for over 40 years and is one of leading providers globally of energy products and services.
STATOIL is a highly well-known trademark, which has been confirmed by previous UDRP panels, for example in Statoil ASA v. Weiwei Qiu / PrivacyP,WIPO Case No. D2011-1752, Statoil ASA v. Domain Admin/ Management SO Hkg,WIPO Case No. D2012-2392, Statoil ASA and Statoil Fuel & Retail Aviation AS v. NA - Claudio Russo,WIPO Case No. D2013-0963 and Statoil ASA v. Fichambers, Esq Francis,WIPO Case No. D2013-2105.
The trademark STATOIL enjoys thorough protection through several hundred registrations worldwide, the first one, now ceased, was approved in 1974 (Norwegian Trademark Reg. No. 90221). A list containing examples of STATOIL trademark registrations applied for by and registered to the Complainant before the Respondent’s registration of the disputed domain name, is attached to the Complaint as Annex 2, as well as examples of registrations, namely International Registration STATOIL, Reg. No. 730092 and Community Trademark Reg. No. 003657871, Annex 3 to the Complaint.
The disputed domain name was registered on March 9, 2015.
The Complainant states that the disputed domain name is passively held. An independent investigation of the disputed domain name reveals an active website in the Turkish language for moving services. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is identical or highly similar to the Complainant’s trademark. The fact that the geographical reference “svenska-” (meaning Swedish) isadded to the Complainant’s trademark does not eliminate the identity, or at least the confusing similarity between the Complainant’s trademark and the disputed domain name. The addition of descriptive elements is insufficient to avoid confusing similarity. In numerous cases, it has been held that the addition of a descriptive element to a registered trademark in a domain name will not prevent a finding of confusing similarity for the purposes of the UDRP (Statoil ASA v. Fichambers, Esq Francis, supra). It has also been established in previous UDRP decisions that such descriptive components added to a complainant’s trademark may even add to the confusion (Statoil ASA v. Domains By Proxy, LLC / John Brendon,WIPO Case No.D2013-1074and Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin,WIPOCase No. D2003-0888)and/or that such components work to “reinforce the relationship” (Bank of America Corporation v. Dimitrios Zervos,WIPO Case No. D2012-1815). The prefix “svenska” in the disputed domain name is, hence, no more than a descriptive component, which can falsely mislead email recipients or Internet users into believing that emails or information provided online originates from the Complainant’s office in Sweden, a country in which the Complainant’s trademark is very well-known.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the STATOIL mark in connection with a website or for any other purpose. The Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services, is not generally known by the disputed domain name, and has not acquired any trademark or service mark rights in that name. According to the Complainant the disputed domain name currently resolves to a webpage informing that the account has been suspended. Regardless, it is important for the Complainant to obtain control of the disputed domain name to make sure that no unlawful activities are provided by use of the disputed domain name. The Complainant is regularly informed of phishing attempts and spam being sent out from email addresses using the STATOIL trademark, for example in the form of false recruitment letters. The Complainant concludes that owning the disputed domain name solely for the purpose of keeping it for a suspended account does not create any rights or amount to legitimate use.
Furthermore the Complainant argues that the Respondent has registered and used the disputed domain name in bad faith. The trademark STATOIL is well known worldwide, and was so also at the time of registration of the disputed domain name. The disputed domain name bears no relationship to the Respondent’s name or its business, which has no other meaning, except for being the name and trademark of the Complainant. It is clear from previous UDRP decisions that the registration, followed by the 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.On July 13, 2015, the Complainant sent an email to the Respondent, informing him about its rights and requesting the transfer of the disputed domain name to the Complainant. Although the term for response was set to July 24, 2015, the Respondent has still not responded to the Complainant’s email. The lack of response is a further indication of bad faith as it could be assumed that the Respondent would otherwise inform about his alleged rights in the disputed domain name and participate in a discussion with the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is 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.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. A. Identical or Confusingly Similar
The Panel accepts the Complainant’s arguments that the disputed domain name is confusingly similar to the STATOIL trademark. The addition of the word “svenska” is not sufficient to escape the finding that the disputed domain name is identical or confusingly similar to the Complainant’s trademark and does not change the overall impression of the designation as being connected to a trademark of the Complainant. Such a combination of the Complainant’s trademark and a geographic term does not avoid confusing similarity (ACCOR v. Vu Duy Truong, N/A,WIPO Case No. D2011-0093; Accor v. Lee Dong Youn,WIPO Case No. D2008-0705).
For all the above cited reasons, the Panel concludes that disputed domain name is identical or confusingly similar to the Complainant’s trademark and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. Any of the following circumstances, as indicated in paragraph 4(c) of the Policy, in particular without limitation shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) The Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) The Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel accepts the arguments of the Complainant that the Respondent cannot establish rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy as the Respondent is not related in any way with the Complainant. The Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the STATOIL mark in connection with a website or for any other purpose. The Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services1 , is not generally known by the disputed domain name, and has not acquired any trademark or service mark rights in that name. Mere registration of the disputed domain name may not of itself confer rights or legitimate interests in the disputed domain name (Terroni Inc. v. Gioacchino Zerbo,WIPO Case No. D2008-0666; St Andrews Links Ltd v. Refresh Design,WIPO Case No. D2009-0601; Gibson, LLC v. Jeanette Valencia,WIPO Case No. D2010-0490).
For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.
The disputed domain name was registered in bad faith. The disputed domain name, which contains the STATOIL mark in its entirety, was registered on March 9, 2015, while the Complainant’s trademarks STATOIL were registered much earlier, for example in Sweden on February 14, 1986 (Annex 2 to the Complaint). The Complainant’s trademark STATOIL is well known worldwide, and was so also at the time of registration of the disputed domain name.
Regardless of whether the disputed domain name is passively held (as alleged by the Complainant) or used for the Turkish language website advertising moving services discussed supra, the disputed domain name is being used in bad faith.
As to passive holding: It is necessary to accept the arguments of the Complainant that the disputed domain name bears no relationship to the Respondent’s name or its business, and that STATOIL has no other meaning, except for being the name and trademark of the Complainant. It is clear from previous UDRP decisions that the registration, followed by the passive holding of a domain name when, as here, there is no way in which it could be used legitimately, amounts to use in bad faith (Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784and F. Hoffmann-La Roche AG. v. Pinetree Development, Ltd.,WIPO Case No. D2006-0049).
As to the active use: The Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source of the services advertised on the website, a bad faith use captured by paragraph 4(b)(iv) of the Policy.
Moreover, the Complainant sent on July 13, 2015 an email to the Respondent, informing him about its rights and requesting the transfer of the disputed domain name to the Complainant. Although the term for response was set to July 24, 2015, the Respondent has still not responded to the email. The lack of response is a further indication of bad faith as it could be assumed that the Respondent would otherwise inform about his alleged rights in the disputed domain name and participate in a discussion with the Complainant.
For the above cited reasons the Panel finds that the disputed domain name was registered and is being used in bad faith. Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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.
Ladislav Jakl
Sole Panelist
Date: October 2, 2015
1 The Respondent’s observed use of the disputed domain name for a Turkish language website advertising moving services does not constitute a bona fide offering of services as it makes unauthorized use of the well-known STATOIL mark in the domain name to market these services.
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