Westmore · UDRP DecisionStatoilnig.com
The Panel ordered transfer of <statoilnig.com> after finding that it was confusingly similar to Statoil ASA's STATOIL mark, that Respondent lacked rights or legitimate interests, and that the domain had been registered and used in bad faith. The domain combined the mark with “nig,” which the Panel treated as a geographical reference to Nigeria, where Complainant conducted business. Its redirection to Bing was treated as passive holding, which did not preclude bad faith in light of the well-known mark, the domain's composition, privacy-service use, apparently false WhoIs information, failed delivery, and Respondent's default.
The timeline behind statoilnig.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind statoilnig.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The decision illustrates how a domain consisting of a well-known mark plus a geographical abbreviation can support all three UDRP elements when the geography corresponds to the complainant's operations. It also shows that redirection to a general search engine may be treated as passive holding and that passive holding can support bad faith when combined with trademark reputation, an implausible domain composition, lack of legitimate explanation, problematic registration data, and respondent default.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Statoil ASA v. Domain Admin, privacyprotect.org / SNSG Case No. D2013-2091 1. The Parties Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden. Respondent is Domain Admin, privacyprotect.org of Nobby Beach, Australia / SNSG of Tbilisi, Georgia. 2. The Domain Name and Registrar The disputed domain name <statoilnig.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2013. On December 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 2013, 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. Complainant filed an amended Complaint on December 5, 2014. The Center verified that the Complaint together with the amended 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 Complaints, and the proceedings commenced on December 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 3, 2014. The Center appointed Stephanie G. Hartung as the sole panelist in this matter on January 20, 2014. 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 is an international provider of energy products and services with legal domicile in Stavanger, Norway. Complainant has provided evidence that it is the registered owner of numerous trademarks relating to the designation STATOIL, including the following: - Word mark STATOIL, World Intellectual Property Organization (WIPO), Registration No.: 730092, Registration Date: March 7, 2000, Status: Active; - Word mark STATOIL, Office for Harmonization in the Internal Market (OHIM), Registration No.: 003657871, Registration Date: May 18, 2005; Status: Active. The disputed domain name <statoilnig.com> was registered on November 16, 2012. At the time of rendering this decision, it redirects to the website “www.bing.com” which is a search engine provided by Microsoft Corporation displaying numerous hyperlinks to third parties’ websites including Complainant’s website. Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant Complainant asserts that it has been in business for over 40 years and is one of the leading providers of energy products and services with 21,000 employees and extensive operations worldwide. Complainant further claims that its STATOIL trademark is highly well-known. Complainant suggests that the disputed domain name is at least confusingly similar to Complainant’s STATOIL trademark because the additional element “nig” does not eliminate the confusing similarity of the disputed domain name with Complainant’s STATOIL trademark as it is no more than a descriptive term referring to the country of Nigeria, where Complainant conducts business. As such, this term instead strengthens the association of the disputed domain name with Complainant and may falsely mislead email recipients or Internet users into believing that emails or information provided from the disputed domain name originate from Complainant’s office in Nigeria. Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name since: (1) Respondent is not affiliated or related to Complainant in any way, or licensed or otherwise authorized to use the STATOIL trademark, (2) 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, nor has Respondent acquired any trademark or service mark rights in that name or mark, and (3) it must be assumed that Respondent’s intention in registering the disputed domain name was either to sell it to Complainant or to use it otherwise for financial gain, e.g. by attracting Internet users who assume that the disputed domain name is owned by or at least affiliated with Complainant. Finally, Complainant asserts that the disputed domain name was registered and is being used in bad faith since: (1) the STATOIL trademark is well-known worldwide and was so at the time of the registration of the disputed domain name, (2) the disputed domain name bears no relationship to Respondent’s name or business, and (3) the disputed domain name has no other meaning except for referring to Complainant’s name and trademark and there is no way in which the disputed domain name could be used legitimately. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainant carries the burden of proving: (i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) That the disputed domain name has been registered and is being used in bad faith. Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant. However, paragraph 5(e) of the Rules provides that if Respondent does not submit a Response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint. A. Identical or Confusingly Similar The Panel concludes that the disputed domain name <statoilnig.com> is confusingly similar with the STATOIL trademark in which Complainant has shown itself to have rights. The disputed domain name incorporates the STATOIL trademark in its entirety. It has been held in numerous UDRP decisions and has become the consensus view among UDRP panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions , Second Edition (“WIPO Overview 2.0”), paragraph 1.9 ) that the addition of a geographical term to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Accordingly, the mere addition of the geographical term “nig”, referring to the country of Nigeria (where Complainant conducts business), is not capable of dispelling the confusing similarity arising from the incorporation of Complainant’s STATOIL trademark in the disputed domain name. Therefore, the Complainant has satisfied the first element under the Policy set forth in paragraph 4(a)(i). B. Rights or Legitimate Interests The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent makes a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain. Complainant asserts, and it has been confirmed by previous UDRP panels ( e.g. : Statoil ASA v. Ivan Rashkov , WIPO Case No. D2013-1583 ; Statoil ASA v. Domain Admin/Management SO Hkg , WIPO Case No. D2012-2392 ), that the STATOIL trademark has been in use worldwide for many years and has become a highly well-known trademark. It is, therefore, reasonable to assume that Respondent had knowledge of Complainant’s STATOIL trademark at the time of the registration of the disputed domain name and that the latter obviously alludes to Complainant’s STATOIL trademark and business. The validity of this assumption is reinforced by the fact that Respondent created the disputed domain name by combining Complainant’s STATOIL trademark with the geographical wording “nig” referring to Nigeria and, thus, to a country in which Complainant conducts business. At the same time, Respondent obviously has not been authorized to use Complainant’s STATOIL trademark, neither as part of a domain name nor on Respondent’s website or in any other way. Also, there is no other reason apparent as to why Respondent needs to rely on the word “statoil” in order to create a domain name and subsequently to set up an Internet presence since it is neither a purely generic word nor does it seem to bear any relation to Respondent’s name or business or the like. The Panel notes that, so far, Respondent has apparently not yet made use of the disputed domain name. At the time of rendering this decision, the disputed domain name simply redirects to a website at “www.bing.com” which is a search engine provided by Microsoft Corporation displaying numerous hyperlinks to third parties’ websites including Complainant’s website, but is not a typical standardized pay-per-click (PPC) site. However, such “passive holding” of the disputed domain name in itself is not capable of creating any rights or legitimate interests of Respondent therein (see e.g. : Pepperdine University v. BDC Partners, Inc. , WIPO Case No. D2006-1003 ; Archipelago Holdings LLC, v. Creative Genius Domain Sales and Robert Aragon d/b/a/ Creative Genius Domain Name Sales, WIPO Case No. D2001-0729 ). Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. As such, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating the contrary (see WIPO Overview 2.0 , paragraph 2.1 ). In the case at hand, Respondent did not reply to Complainant’s allegations as they were included in the Complaint, duly notified to Respondent by the Center on December 11, 2013, nor did it come forward with any other reasonable explanation that might have thrown a different light on Respondent’s possible rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy. C. Registered and Used in Bad Faith The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith. The Panel concludes that by the time of registering the disputed domain name, Respondent knew of Complainant’s STATOIL trademark because: (1) the STATOIL trademark has been deemed well-known at least for the purpose of this proceeding (see Section 6.B. above) and (2) Respondent has set up the disputed domain name by combining Complainant’s STATOIL trademark with the geographical term “nig” referring to Nigeria and, thus, to a country in which Complainant conducts business. In addition, as has also been argued by Complainant, the disputed domain name apparently has no other meaning except for referring to Complainant’s name and trademark and Respondent has nothing brought forward nor are any indications given to the case at hand as to how the disputed domain name could be used by Respondent in a legitimate way. Against this background, the Panel takes the view that the kind of “passive holding” of the disputed domain name at the time of rendering this decision does not prevent a finding of bad faith on the part of Respondent, but that on the contrary the examination of the circumstances of the case at hand are rather indicative thereof (see “ WIPO Overview 2.0 ”, paragraph 3.2 ). In this context, the Panel also takes into account that: (1) Respondent not only made use of a WhoIs privacy service in order to conceal his true identity, but obviously also provided false WhoIs information since the delivery of the Complaint sent to Respondent via DHL on December 11, 2013 failed and (2) Respondent has not disputed any of Complainant’s contentions included in the Complaint. These facts taken all together throw a light on Respondent’s behavior which supports the finding of registration and use of the disputed domain name in bad faith. Therefore, the Panel finds that the third element under the Policy set forth in paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) 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 <statoilnig.com> be transferred to the Complainant. Stephanie G. Hartung Sole Panelist Date: January 30, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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