The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America ("United States") / Thomson Harry of Birmingham, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"). 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 4, 2017. On September 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 5, 2017, 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 8, 2017, 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 amendment to the Complaint on September 12, 2017.
The Center verified that the Complaint together with the amendment to the Complaint (hereafter referred to as 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 September 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default October 4, 2017.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on October 13, 2017. 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
It results from the Complainant's undisputed allegations that the Complainant, with its headquarters in Norway; is an international energy company operative in 34 countries worldwide. The Complainant has been in the business for over 40 years and is one of leading global providers of energy products and services employing approximately 22,000 employees.
Furthermore, it results from the evidence provided by the Complainant, which has remained unchallenged, that it is the registered owner of several verbal trademarks STATOIL, in particular International Registration No. 730092 (registered on March 7, 2000, for goods and services in classes 1, 4, 17, 39, 42, designating China, Estonia, Latvia, Lithuania and Poland) and European Union Trade Mark No. 003657871 (registered on May 18, 2005, for goods and services in classes 1, 4, 17, 35, 37, 39, 40, 42).
The disputed domain name was registered on August 7, 2017. According to the evidence provided by the Complainant the disputed domain name is currently not connected to any active website. 5. Parties' Contentions A. Complainant
The Complainant asserts that the disputed domain name is confusingly similar to its trademarks, since it incorporates its STATOIL mark in its entirety and combines it with a merely descriptive term "petroleums".
The Complainant further contends that the Respondent has no prior rights or legitimate interests in the disputed domain name. In particular, the Respondent is not a licensee of or otherwise affiliated with the Complainant. Moreover, the Respondent is not commonly known by the disputed domain name, has not made any preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, and has not used the disputed domain name for any legitimate noncommercial or fair use purpose.
Finally, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith. In this context, the Complainant points out that the Respondent must have known Complainant's trademark STATOIL which it claims to be wellknown within its field of business due to Complainant's long use and the renown. In this context, the Complainant refers to a set of previous UDRP decisions involving its marks. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "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". Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled:
(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 Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, a complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights.
It results from the unchallenged evidence provided that the Complainant is the registered owner of several trademark registrations consisting of the verbal element STATOIL (i.e. International Registration No. 730092 and European Union Trade Mark No. 003657871) that both predate the registration date of the disputed domain name, which is August 7, 2017.
Many UDRP panels have found that a domain name is confusingly similar to a complainant's trademark where the domain name incorporates the complainant's trademark in its entirety (e.g., Facebook, Inc. v. Mirza Azim,WIPO Case No. D2016-0950; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320; KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910). In the present proceedings the Complainant's registered trademark is fully included in the disputed domain name.
In addition, the disputed domain name combines the Complainant's registered trademarks STATOIL with the term "petroleums", which is a generic term related to the field in which the Complainant operates, i.e., the petroleum sector. In any event, the combination of the trademark STATOIL with this descriptive term is insufficient to avoid a finding of confusing similarity between the trademark and the disputed domain name.
In light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent's rights or legitimate interests to the disputed domain name. In the Panel's view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
According to the Complaint's further allegations, which have remained unchallenged, the Complainant has not authorized the Respondent's use of the trademark STATOIL by registering the disputed domain name comprising said mark entirely. In addition, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name or might have acquired trademark rights pursuant to paragraph 4(c)(ii) of the Policy.
In addition, according to the Complainant's undisputed allegations the disputed domain name is currently not resolving to any active website. Such use can neither be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue in the sense of paragraph 4(c)(i) and (iii) of the Policy (see SNCF Mobilités v. Private Registration / Domain Admin,WIPO Case No. D2016-1965).
It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence in this regard, this Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, "in particular but without limitation", be evidence of the disputed domain name's registration and use in bad faith.
According to the Complainant's undisputed allegations, the Respondent does not actively use the disputed domain name. With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, prior UDRP panels have found that the apparent lack of 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 (see Sanofi, Genzyme Corporation v. Registration Private, Domains By Proxy, LLC / Scott Scanlon,WIPO Case No. D2016-1138; Sanofi, Genzyme Corporation v. Domain Privacy, supra; Actelion Pharmaceuticals, Ltd v. Whois Agent, Whois Privacy Protection Service, Inc / Jean-Paul Clozel,WIPO Case No. D2016-0068; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The Panel must therefore examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. Examples of what may be circumstances found to be indicative of bad faith include (1) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent's concealing its identity or use of false contact details, and (iv) the implausibility of any good faith use to which the domain name may be put (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 3.3 with further references).
In the case at hand, this Panel finds that all of the above mentioned circumstances are preset in the case at hand, i.e.;(i) the Respondent's failure to reply to the Complaint or to provide any evidence of actual or contemplated good-faith use, (ii) the undisputed worldwide reputation of the STAOIL trademark that has existed for many years, (iii) the Respondent's concealing its identity behind a privacy service, and (iv) the implausibility of any good faith use to which the disputed domain name may be put. These circumstances surrounding the disputed domain name's registration suggest that the Respondent was aware that it has no rights or legitimate interests in the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith (see Sanofi, Genzyme Corporation v. Domain Privacy, supra; Actelion Pharmaceuticals, Ltd v. Whois Agent, Whois Privacy Protection Service, Inc / Jean-Paul Clozel, sigma). This Panel therefore concludes that the Respondent knew or should have known the trademark STATOIL when it registered the disputed domain name, and that there is no plausible legitimate active use that the Respondent could make of the disputed domain name.
In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) 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.
Tobias Malte Müller
Sole Panelist
Date: October 26, 2017
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