The Complainant is Statoil ASA (“Statoil”) of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Hudo Designs of Lagos, Nigeria. 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 April 11, 2018. On April 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 14, 2018, 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 April 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2018.
The Center appointed Dr. Clive Trotman as the sole panelist in this matter on May 15, 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
Background information about the Complainant is taken from the Complaint.
The Complainant is a major international energy company of some 40 years standing headquartered in Norway. The scale of the Complainant is that it has about 22,000 employees. The Complainant has numerous trademarks, of which the following are representative for the purposes of the present proceeding:
STATOIL, International Trademark, registered April 20, 2000, registration number 730092, classes 1, 4, 17, 39, 42;
STATOIL, European Union Trademark, registered May 18, 2005, registration number 003657871, classes 1, 4, 17, 35, 37, 39, 40, 42.
The Complainant also owns about 1000 domain names comprising or incorporating the trademark STATOIL.
No information is available about the Respondent except for the contact details provided to the Registrar for the purposes of registration of the disputed domain name, which was registered on February 15, 2018. The disputed domain name does not resolve to an Internet website. 5. Parties’ Contentions A. Complainant
The Complainant says it is the owner of the trademarks listed in section 4 above and has produced images of registration certificates to that effect, the one for trademark number 730092 being in the name of Den Norske Stats Oljeselskap A.S. of Stravanger, Norway.
The Complainant says the disputed domain name is confusingly similar to the trademark STATOIL and that the generic Top-Level Domain (“gTLD”) “.com” may be disregarded. The additional descriptive element “usa” in the disputed domain name does not prevent a finding of confusing similarity and may add to the confusion since it means United States of America (“USA”) and implies a location of the Complainant in the USA.
The Complainant asserts that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant is not affiliated with the Respondent, which is not authorised to use the Complainant’s trademark in any way. The Respondent is not commonly known by the disputed domain name. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and it does not resolve to a website. The disputed domain name is, however, set up for mail exchange (“MX”) in the Domain Name System according to MX Toolbox records available online, and could be used to support fake offers of employment, such as the Complainant has previously experienced.
The Complainant further contends that the disputed domain name was registered and is being use in bad faith. The disputed domain name has no meaning other than the Complainant’s name and trademark. The Complainant refers to previous decisions under the policy and says that the disputed domain name is so obviously connected with the Complainant that its use by someone having no such connection suggests opportunistic bad faith, and that in the circumstances, registration and passive holding of a domain name that cannot be used legitimately may amount to bad faith.
The Complainant says that the Respondent has been involved in a pattern of the registration of domain names incorporating well-known energy-related trademarks, such as , , , , and , and it is apparent that these domain names were registered for sale or for making fake offers of employment, for financial gain.
The Complainant says the disputed domain name could not have been registered otherwise than for the purpose of the Respondent’s commercial gain through the goodwill embodied in the Complainant’s trademark.
The Complainant has cited a number of previous decisions under the Policy, including decisions in favour of the Complainant.
The Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant holds rights as required under the Policy in the registered trademark STATOIL. The disputed domain name is , of which the gTLD “.com” may be disregarded in the determination of confusing similarity. The Panel does not find the additional descriptive element “usa” to have any other plausible meaning in the context than the country name USA, and that it does not detract from confusing similarity between the disputed domain name and the Complainant’s trademark, but enhances confusing similarity by creating an impression of a USA location of the Complainant. Accordingly the Panel finds for the Complainant under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has stated prima facie that it is not affiliated with the Respondent, which has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 Respondent has not replied or asserted any rights or legitimate interests in the disputed domain name with reference to paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise. Whilst the onus is upon the Complainant to prove that the Respondent does not have rights or legitimate interests in the disputed domain name, the Panel is satisfied that there has been no use of the disputed domain name by the Respondent that would constitute a bona fide offering of goods or services, that the Respondent is not commonly known by the disputed domain name, and that it is not in noncommecial or fair use. The Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
The Complainant’s attempt to find a website associated with the disputed domain name, according to the screen capture produced in evidence, was met with the response “This site can’t be reached, statoil-usa’s server IP address could not be found...”.
With no evidence that the disputed domain name has been put to any specific use, it amounts to being passively held. The treatment of the possible registration and use of a domain name in bad faith, in circumstances where it has apparently not been used but merely held passively, was analysed as long ago as 2000 in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (“Telstra”). Whereas previous decisions under the Policy do not have the formal status of precedent, the principles expounded by the panelist in Telstra have been cited widely in decisions under the Policy.
The Panel, bearing in mind the principles set out in Telstra, notes in the present case that:
1. The Complainant has held trademarks comprising or incorporating STATOIL, a synthesised word, since 1974, being about 44 years, and has produced a list of trademarks world-wide running to three close-typed pages. The Complainant is substantial and international, having some 22,000 employees, and the Respondent’s previous registration of domain names incorporating the names of energy companies (the Complainant has drawn attention to , , , , and ) speaks of a familiarity with the energy sector such that the Respondent, more probably than not, registered the disputed domain name with knowledge of the Complainant’s trademark.
2. The Respondent has made no claim or offered any evidence of any potential use of the disputed domain name in good faith.
3. The Written Notice of the dispute was sent to the physical address provided to the Registrar by the Respondent. The courier attempting delivery reported back: “Address information needed”. No further address information was available and the delivery could not be made. The Panel infers that the Respondent has contrived to conceal its true identity or contact details.
4. By providing a deficient address the Respondent was in breach of paragraph 5(a) of the Registration Agreement between the Respondent and the Registrar.
5. The Panel cannot conceive of any realistic way in which the Respondent may intend to use the disputed domain name without infringing the rights of the Complainant.
The Complainant has produced in evidence the result of a reverse WhoIs search conducted through “/reversewhois”, which revealed 34 domain names registered by the Respondent in 2017 and 2018. In addition to those listed above pertaining to energy companies, the list included other domain names incorporating the names of companies or official bodies or alluding to work and jobs, for instance, , , , , , , , and others.
On the totality of the available evidence, including the pattern of the Respondent’s previous domain name registrations, the Panel finds it more probable than not that the disputed domain name was registered with intent eventually to confuse people into believing that it would represent the online location, such as the email address or a website, of the Complainant. The Panel finds it implausible on balance that the Respondent did this for any other reason than with intent to profit financially from the use of the Complainant’s trademark and goodwill, representing registration in bad faith.
The disputed domain name is not presently in use for a website or email address and appears not to have been so used, however that does not preclude a finding of use in bad faith by the Respondent. The relevant issue, as identified by the panelist in Telstra, is “not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith”. It is not necessary to determine the particular manner in which the Respondent may have intended to derive benefit from the use of a domain name comprising essentially the Complainant’s contrived and distinctive trademark. The disputed domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith” (Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163). On the evidence and on the balance of probabilities, and taking into account that the provisions of paragraph 4(b) of the Policy are without limitation, the Panel is satisfied that the passive holding of the disputed domain name is in bad faith by the Respondent.
Accordingly the Panel finds the disputed domain name to have been registered and used in bad faith within the meaning of 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.
Dr. Clive N.A. Trotman
Sole Panelist
Date: May 23, 2018
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