The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Eldar Saetre of Denver, Colorado, United States. 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 March 15, 2018. On March 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 16, 2018, 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 March 18, 2018 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 March 23, 2018.
The Center verified that the Complaint together with the amendment to 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 March 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 17, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2018.
The Center appointed Christian Gassauer-Fleissner as the sole panelist in this matter on May 1, 2018. 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 an international energy company with approximately 22,000 employees and extensive operations worldwide. The Complainant operates since at least 40 years and is one of the leading providers of energy products and services. The Complainant currently operates globally and its headquarters are located in Stavanger, Norway.
The Complainant is the owner of the trademark STATOIL, which is protected through hundreds of registrations around the world, the first one being granted in 1974 (Norwegian trademark registration No. 90221, now ceased). Among the many trademark registrations in the Complainant’s name, the Complainant cites in particular STATOIL, international registration No. 730092 of March 7, 2000, for goods and services in classes 1, 4, 17, 39 and 42, and STATOIL, European Union Trademark registration No. 3657871 filed on February 10, 2004, and registered on May 18, 2005, for goods and services in classes 1, 4, 17, 35, 37, 39, 40 and 42.
The Complainant also owns numerous domain names containing the trademark STATOIL.
The disputed domain name was registered on February 7, 2018, using a privacy protection service (Registration Private, Domains by Proxy, LLC D). In its verification response, the Registrar informed the Center that the Respondent is an individual named Eldar Saetre, with address in Denver, Colorado, United States. The disputed domain name holds no Internet content. 5. Parties’ Contentions A. Complainant
According to the Complainant, the disputed domain name is confusingly similar to the Complainant’s trademark, as it fully reproduces the Complainant’s trademark followed by the additional element “gas” and the generic Top-Level Domain (“gTLD”) “.org”. The Complainant contends that the additional element “gas” is clearly descriptive and since gas is one of the Complainant’s main products it only serves to convey the impression that the disputed domain name is related to the Complainant. Moreover, the addition of the gTLD “.org” does not have any bearing in the comparison of the disputed domain name with the Complainant’s trademark.
The Complainant maintains that the Respondent lacks rights or legitimate interests in the disputed domain name for a number of reasons.
First, the Respondent is not affiliated or related to the Complainant. Secondly, the Complainant never licensed, nor otherwise authorized the Respondent to use the trademark STATOIL in connection with a website, or for any other purpose.
Furthermore, according to the Complainant, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services.
The Complainant points out that the disputed domain name currently holds no Internet content. The Complainant therefore infers that the Respondent registered the disputed domain name for financial gain and/or for illegal activities. In the Complainant’s view, the fact that email “MX-records” are set up for the disputed domain name indicates a potential risk of use of the disputed domain name in the distribution of fraudulent emails.
The Complainant maintains that the disputed domain name was registered in bad faith because the STATOIL trademark was already well known at the time of the registration of disputed domain name.
As far as use in bad faith is concerned, the Complainant cites previous UDRP decisions stating that bad faith exists where a domain name is so obviously connected with the Complainant that its very use by someone with no connection with the Complainant suggests bad faith. The Complainant maintains that the fact that the descriptive term the Respondent has chosen is one the Complainant’s products further underlines the bad faith.
Furthermore, the Complainant points out that the Respondent could not have chosen or subsequently used the word “statoil” in the disputed domain name for any reason other than to capitalize on the goodwill of the Complainant’s trademark. According to the Complainant, there is therefore no way in which the disputed domain name could be legitimately used and subsequently, it must be established that the Respondent has registered and is using the disputed domain name in bad faith.
In the amendment to the Complaint, the Complainant points out that the information about the Respondent Eldar Saetre provided by the Registrar is false, as Mr. Eldar Saetre is the CEO of the Complainant. Moreover, the email address provided by the Registrar as contact information for the Respondent “[…]@” is connected to a third party. According to the Complainant, it is therefore clear that the Respondent uses false contact information, which underlines that the Respondent has registered and is using the domain in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark as it fully incorporates the Complainant’s trademark followed by the descriptive term “gas”. The mere addition of the term “gas” is certainly insufficient to avoid confusing similarity. Gas is one of the main products of the Complainant. The Panel believes that the Respondent deliberately chose to add the term “gas” to the Complainant’s STATOIL trademark, to induce Internet users to believe that the disputed domain name referred to some activities of the Complainant relating to the product of gas.
Therefore, the Panel concludes that the Complainant has made out the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel believes that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
In particular, the Complainant did not authorize the Respondent to reflect its trademark in the disputed domain name. The Respondent is not an authorized dealer or licensee of the Complainant, nor is related to the Complainant in any way. Furthermore, there is no evidence in the case file that the Respondent is known by the disputed domain name or holds rights in the distinctive sign and trademark STATOIL by virtue of any kind of registration or otherwise.
The disputed domain name is currently not used. Therefore, there is no evidence of any use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, nor of any 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 Respondent had the opportunity to provide its arguments in support of its rights or legitimate interests in the disputed domain name. However, by not filing a Response, the Respondent missed this opportunity and the Panel is authorized to draw from the Respondent’s default all such inferences it considers appropriate, in compliance with paragraph 14 of the Rules.
In consideration of the foregoing, the Panel concludes that the Complainant has satisfied its burden under the second element to show that the Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel finds that the Respondent registered and used the disputed domain name in bad faith.
As far as registration in bad faith is concerned, the fact the disputed domain name fully incorporates the Complainant’s trademark is clear evidence that the Respondent was well aware of the Complainant’s trademark at the time it proceeded with the registration of the disputed domain name. The addition of the term “gas” to the Complainant’s trademark in the disputed domain name is an evident attempt to mislead Internet users as to the origin of the disputed domain name.
As far as use in bad faith is concerned, previous UDRP panels have already ascertained the well-known character of the Complainant’s STATOIL trademark due to its extensive use and global promotion (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; Statoil ASA v. Daniel MacIntyre, Ethical Island,WIPO Case No. D2014-0369; Statoil ASA v. Domain Admin, Privacy Protection Service Inc / Nicolas Kerry,WIPO Case No. D2017-0046).
The fact that the Respondent effectively passively holds the disputed domain name cannot prevent a finding of use in bad faith. The disputed domain holds no Internet content. “Customers searching for information on the Complainant and the Complainant’s service may come to the conclusion that there are problems at the Complainant’s site, that the Complainant’s web information and services are no longer in active use. Such ʻnon-use’ by the Respondent can […] have the same negative result on the Complainant as active use of a disputed domain name, and amounts to bad faith use” (FIL Limited v. George Dyle,WIPO Case No. D2014-1418).
Furthermore, the Complainant has provided evidence that the Respondent has set up “MX-records” for the disputed domain name. This entails that the Respondent can send emails through the email address “@”. The Respondent can therefore use (or may already have used) the disputed domain name to send fraudulent emails such as messages containing spam, phishing attempts, etc. (See also Conféderation Nationale du Crédit Mutuel, Crédit Industriel et Commercial v. Khodor Dimassi,WIPO Case No. D2016-1980).
Finally, evidence of bad faith registration is shown by Respondent’s provision of false contact information when registering the domain (See, e.g., Euromarket Designs, Inc. d/b/a Crate & Barrel v. Namesnet,WIPO Case No. D2000-1196; Inkkas, LLC v. Katherine Garcia,WIPO Case No. D2017-1992 “The false contact information is evidence of use and registration in bad faith”).
For all reasons mentioned above, the Panel concludes that the Respondent registered and is using the disputed 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 disputed domain name be transferred to the Complainant.
Christian Gassauer-Fleissner
Sole Panelist
Date: May 22, 2018
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