Westmore · UDRP DecisionStatoilgas.com
The Panel ordered transfer of <statoilgas.com>. It found the domain confusingly similar to the Complainant’s STATOIL trademark because it incorporated the mark in full and added the business-related word “gas.” The Complainant established an unrebutted prima facie case that the Respondent lacked rights or legitimate interests. Bad faith was found because the Respondent was held to have known of the well-known STATOIL mark, previously used the domain for a parking page displaying sponsored links, and then passively held it.
The timeline behind statoilgas.com
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The decision illustrates a combined bad-faith pattern involving a well-known mark, an industry-related added term, prior sponsored-link parking, and later passive holding. The Panel treated “gas” as increasing confusion because it aligned with the trademark owner’s business and held that subsequent inactivity did not neutralize the earlier commercial use or the circumstances of registration.
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. Nat West, Stat Energy Case No. D2015-1625 1. The Parties The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden. The Respondent is Nat West, Stat Energy of Petaling Jaya, Selangor, Malaysia. 2. The Domain Name and Registrar The disputed domain name <statoilgas.com> is registered with Easyspace (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2015. On September 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 11, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 15, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2015. The Center appointed Haig Oghigian as the sole panelist in this matter on October 22, 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 approximately 21,000 employees. Its headquarters are in Norway and has been in business for over 40 years. The Complainant states that it is one of the leading providers globally of energy products and services. The Complainant is the owner of the trademark STATOIL which enjoys trademark protection through several hundred registrations worldwide. The Complainant is also the owner of approximately 1,000 domain names comprising the STATOIL trademark. The Complainant points to previous decisions by UDRP panels which recognize the fame of the Complainant’s trademark. The Respondent registered the disputed domain name on March 25, 2015. The website at the disputed domain name resolved to the Registrar’s parking page which featured sponsored links as evidenced by the Complaint, however, it currently does not resolve to an active page. 5. Parties’ Contentions A. Complainant The Complainant requests that the disputed domain name be transferred to the Complainant. The Complainant asserts that there is confusing similarity between the Complaint’s trademarks and the disputed domain name as (i) it incorporates the mark STATOIL in its entirety (ii) the addition of the word “gas” does not serve to distinguish it from the Complainant’s trademark and (iii) the Complainant is the second largest supplier of natural gas to the European market, this addition gives the impression that the disputed domain name reflects the “gas” portion of the Complainant’s business. The Complainant also asserts that the Respondent has no rights or legitimate interests in the disputed domain name as the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or variations thereof. The Complainant adds that (i) the Respondent is not commonly known by the disputed domain name (ii) the Respondent has no registered trademark or trade name corresponding to the disputed domain name and (iii) the registration of the disputed domain name occurred later than the registration of the vast majority of the STATOIL marks. Lastly, the Complainant asserts that the disputed domain name was registered and is being used in bad faith as the Respondent has deliberately chosen it allegedly to either sell the domain name to Complainant or use it for financial gain, for example by making fraudulent offers to email recipients or Internet users (as evidenced in Annex F to the Complaint). The Complainant asserts that the Respondent must have known about the Complainant’s trademark rights and, as such, the Respondent could not have chosen or subsequently used the word “statoil” for any reason other 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 Paragraph 4(a)(i) of the Policy requires that the complainant must prove that the domain name is identical or confusingly similar to a trademark in which the complainant has rights. The disputed domain name contains the STATOIL trademark in its entirety, and “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.” Six Continent Hotels, Inc. v. The Omnicorp , WIPO Case No. D2005-1249 . Further, addition of the word “gas” increases the confusing similarity between the disputed domain name and the Complainant’s trademark. For the above reasons, and in accordance with previous UDRP decisions, the Panel finds that the disputed domain name is confusingly similar to the Complaint’s marks. The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy requires that the complainant must prove that the respondent has no rights or legitimate interests in respect of the domain name. Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the respondent in order to demonstrate its rights or legitimate interests in a domain name. Such circumstances include: - demonstrable preparations to use or use the domain name in connection with a bona fide offering of goods or services prior to the dispute (paragraph 4(c)(i)); - an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights (paragraph 4(c)(ii)); or - legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark (paragraph 4(c)(iii)). In this case, the Complainant presented a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. It is clear on the given evidence that the disputed domain name was registered long after the Complainant registered and started to use the STATOIL marks. Further, there is no evidence that the Respondent has been or is commonly known by the disputed domain name. In addition, there is no evidence that establishes the existence of a relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the disputed domain name or any trademark confusingly similar thereto, as a domain name or for any other purposes. Moreover, the Panel finds that neither the previous use of the disputed domain name nor the current passive holding confer any rights or legitimate interests to the Respondent. It has been previously established that even if a domain name is not used, “passive holding of the disputed names in itself is not capable of creating any rights of Respondent therein”. See Statoil ASA. v. Allan, WIPO Case No. D2013-2123 . Therefore, in the absence of any Response to rebut the Complainant’s prima facie case, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has therefore satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the complainant must prove that the domain name has been registered and is being used in bad faith. In addition, paragraph 4(b) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the complainant in order to demonstrate bad faith registration and use of the domain name. Such circumstances include: - use of the domain name to intentionally attempt to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location (paragraph 4(b)(iv)). In the Panel’s view, the Respondent must have had knowledge of the Complainant’s rights in its marks when the Respondent registered the disputed domain name, since the Complainant’s marks are unique and have been used for many years. With regard to the international reputation of the STATOIL trademark the Panel is convinced that the Respondent knew of the mark, but still registered the disputed domain name. The choice of the disputed domain name was therefore intentional and not random. “Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to use the mark is a strong indication of bad faith” ( Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties , WIPO Case No. D2005-1085 ). The STATOIL trademark is well-known and the Respondent has no connection to the Complainant, is not authorized and does not have a legitimate purpose to use the Complainant’s trademarks as found under Section 6.B above Furthermore, the Panel finds that by fully incorporating the Complainant’s trademark into the disputed domain name, the Respondent could falsely create the impression that it is associated with the Complainant, which is not the case, and this “represents “opportunistic bad faith” under the Policy” Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix GroupCo. , WIPO Case No. D2000-0163 . Regarding use in bad faith, the Panel finds that the previous use of the disputed domain name resolved to a parking page which displays sponsored links, indicates that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. With respect to the current passive holding, the Panel agrees with previous UDRP panels which have held that the apparent lack of so-called active use of the disputed domain name does not as such prevent a finding of bad faith. Therefore, the Panel is satisfied that the Complainant has established bad faith registration and use as required by 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, <statoilgas.com>, be transferred to the Complainant. Haig Oghigian Sole Panelist Date: November 4, 2015
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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