Westmore · UDRP DecisionStatoiluk.org
The Panel ordered transfer of <statoiluk.org>. It found the domain confusingly similar to the Complainant’s STATOIL trademark because adding the geographic term “uk” did not avoid similarity. The Complainant established an unrebutted prima facie case that the Respondent lacked rights or legitimate interests. Despite the domain’s inactive status, the Panel found bad-faith registration and use based on the distinctive and well-known character of STATOIL and the Respondent’s failure to respond.
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This decision illustrates two recurring UDRP principles: adding a geographic abbreviation to a trademark ordinarily does not avoid confusing similarity, and an inactive domain may still satisfy the bad-faith element when the surrounding circumstances support passive holding in bad faith.
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. Johnsons Associates Case No. D2015-0043 1. The Parties The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden. The Respondent is Johnsons Associates of Evora, Portugal. 2. The Domain Name and Registrar The disputed domain name <statoiluk.org> 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 January 13, 2015. On January 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2015. The Center appointed Tobias Zuberbühler as the sole panelist in this matter on February 16, 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 is an international energy company operating in 34 countries worldwide with 21,000 employees. The Complainant is the owner of several hundred trademark registrations worldwide for STATOIL, including the International Registration No. 730092 and the Community Trademark Reg. No. 003657871. In addition, the Complainant has registered approximately 1,000 domain names throughout the world comprising its trademark STATOIL. The disputed domain name was registered on September 23, 2014 and, according to the Complainant’s evidence, is inactive. 5. Parties’ Contentions A. Complainant The disputed domain name is highly similar to the Complainant’s trademark STATOIL as it contains the Complainant’s trademark, the geographic indication “uk” and the Top-Level Domain “.org”. It is firmly established that confusing similarity exists when well-known trademarks are paired with different kinds of prefixes and suffixes. The Respondent has no rights to or legitimate interests in the disputed domain name based on the Complainant’s continuous and long prior use of its trademark and trade name STATOIL. None of the circumstances listed in paragraph 4(c) of the Policy can be established in this case. The Respondent must have known of the Complainant’s well-known trademark STATOIL. That being so, the Respondent could not have chosen or subsequently used the word “statoil” in the disputed domain name for any other reason than to trade off the goodwill and reputation of the Complainant’s trademark or otherwise create a false association, sponsorship or endorsement with or of the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar According to the consensus view of UDRP panels, the addition of geographical terms such as “UK” to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition [“WIPO Overview 2.0”], paragraph 1.9 ; see also the similar fact pattern in Statoil ASA v. VistaPrint Technologies Ltd , WIPO Case No. D2014-0511 [<statoil-uk.com>]). The Complainant has thus fulfilled paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name. Based on the Complainant’s contentions, the Panel finds that the Complainant, having made out a prima facie case which remains unrebutted by the Respondent, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to the consensus view of UDRP panels, the apparent lack of so-called active use ( e.g., to resolve to a website) of the disputed 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. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity ( WIPO Overview 2.0 , paragraph 3.2 ). In the present case, the distinctive character of the Complainant’s well-known trademark STATOIL and the fact that no response to the Complaint has been filed indicate that the Respondent has registered and is using the disputed domain name in bad faith. Accordingly, the Complainant has also satisfied paragraph 4(a)(iii) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <statoiluk.org> be transferred to the Complainant. Tobias Zuberbühler Sole Panelist Date: February 17, 2015
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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