WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Statoil ASA v. Nguyen Van Minh

Case No. D2015-1513

1. The Parties

The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.

The Respondent is Nguyen Van Minh of Ha Noi, Viet Nam.

2. The Domain Name and Registrar

The disputed domain names <svenska-statoil.net> and <svenskastatoil.net> are registered with Name.com LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2015. On August 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 25, 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 1, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 21, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 22, 2015.

The Center appointed Ladislav Jakl as the sole panelist in this matter on October 7, 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 Statoil ASA is an international energy company with 21,000 employees and extensive operations worldwide. Statoil has been in business for over 40 years and is one of leading providers globally of energy products and services.

STATOIL is a highly well-known trademark, which has been confirmed by previous UDRP panels, for example in Statoil ASA v. Weiwei Qiu / PrivacyProtect.org, 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. Ivan Rashkov, WIPO Case No. D2013-1583 and Statoil ASA v. Fichambers, Esq Francis, WIPO Case No. D2013-2105.

The trademark STATOIL enjoys thorough protection through several hundred registrations worldwide, the first one, now ceased, was approved in 1974 (Norwegian Trademark Reg. No. 90221). A list containing examples of STATOIL trademark registrations applied for by and registered to the Complainant before the Respondent’s registration of the disputed domain names, is attached as Annex 2 to the Complaint, as well as examples of registrations, namely International Registration STATOIL, Reg. No. 730092 and Community Trademark Reg. No. 003657871, Annex 3 to the Complaint.

The disputed domain names <svenska-statoil.net> and <svenskastatoil.net> were registered on February 11, 2015.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain names <svenska-statoil.net> and <svenskastatoil.net> are identical or highly similar to the Complainant’s trademark. The fact that the geographical reference “svenska-” (meaning Swedish) isadded to the Complainant’s trademark, does not eliminate the identity, or at least the confusing similarity between the Complainant’s trademark and the disputed domain names. Neither will the hyphen in one of the disputed domain names in any way distance the disputed domain name from the Complainant’s trademarks. The addition of descriptive elements is insufficient to avoid confusing similarity. In numerous cases, it has been held that the addition of a descriptive element to a registered trademark in a domain name will not prevent a finding of confusing similarity for the purposes of the UDRP (Statoil ASA v. Fichambers, Esq Francis, supra). The Complainant further contends that it has also been established in previous UDRP decisions that such descriptive components added to a complainant’s trademark may even add to the confusion (Statoil ASA v. Domains By Proxy, LLC / John Brendon, WIPO Case No. D2013-1074and Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888) and/or that such components work to “reinforce the relationship” (Bank of America Corporation v. Dimitrios Zervos, WIPO Case No. D2012-1815). The prefix “svenska” in the disputed domain names is, hence, no more than a descriptive component, which can falsely mislead email recipients or Internet users into believing that emails or information provided online originates from the Complainant’s office in Sweden.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the STATOIL mark in connection with a website or for any other purpose. The Respondent is not using the disputed domain names in connection with any bona fide offering of goods or services, is not generally known by the disputed domain names, and has not acquired any trademark or service mark rights in those names. According to the Complainant the disputed domain names currently resolve to a web page, informing only that “This IP is being shared among many domains”, hence the web pages are without content and it is important for the Complainant to obtain control of the disputed domain names to make sure that no unlawful activities are provided by use of them. The Complainant is regularly informed of phishing attempts and spam being sent from email addresses using the STATOIL trademark, for example in the form of false recruitment letters. The Complainant concludes that owning the disputed domain names solely for the purpose of keeping them for a suspended account does not create any rights or amount to legitimate use.

Furthermore the Complainant argues that the Respondent has registered and used the disputed domain names <svenska-statoil.net> and <svenskastatoil.net> in bad faith. The trademark STATOIL is well known worldwide, and was so also at the time of registration of the disputed domain names. The disputed domain names bear no relationship to the Respondent’s name or its business, which has no other meaning, except for being the name and trademark of the Complainant. The use of the Swedish word “svenska” in the disputed domain names indicates a relationship with Sweden and possible knowledge of Swedish and that Sweden is the neighboring country to the Complainant’s country of origin (Norway) and a country in which Statoil is very well known and reputed, which is a clear indication of bad faith. Moreover the Complainant states that it is clear from previous UDRP decisions that the registration, followed by the passive holding of a domain name when there is no way in which it could be used legitimately, can amount to use in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The Complainant concludes that the criteria of the Policy, paragraph 4(b)(iv) are met and the Respondent has registered and used the disputed domain names in bad faith in violation of the Policy, paragraph 4(a)(iii).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant.

A. Identical or Confusingly Similar

The Panel accepts the Complainant’s arguments that the disputed domain names <svenska-statoil.net> and <svenskastatoil.net> are confusingly similar to the STATOIL trademark. The addition of the word “svenska” is not sufficient to escape the finding that the disputed domain names are identical or confusingly similar to the Complainant’s trademark and does not change the overall impression of the designation as being connected to a trademark of the Complainant. Such a combination of the Complainant’s trademark and a geographic term does not avoid confusing similarity (ACCOR v. Vu Duy Truong, N/A, WIPO Case No. D2011-0093; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705).

For all the above cited reasons, the Panel concludes that disputed domain names are identical or confusingly similar to the Complainant’s trademark and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain names. Any of the following circumstances, as indicated in paragraph 4(c) of the Policy, in particular without limitation shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain names:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; or

(ii) The Respondent (as an individual, business, or other organization) has been commonly known by the domain names, even if Respondent has acquired no trademark or service mark rights; or

(iii) The Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel accepts the arguments of the Complainant that the Respondent cannot establish rights or legitimate interests in the disputed domain names under paragraph 4(c) of the Policy as the Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the STATOIL mark. The Respondent is not using the disputed domain names in connection with any bona fide offering of goods or services, is not generally known by the disputed domain names, and has not acquired any trademark or service mark rights in those names. Mere registration of the disputed domain names may not of itself confer rights or legitimate interests in the disputed domain names (Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666; St Andrews Links Ltd v. Refresh Design, WIPO Case No. D2009-0601; Gibson, LLC v. Jeanette Valencia, WIPO Case No. D2010-0490).

For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain names were registered and are being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):

(ii) the Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain names, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.

The disputed domain names were registered in bad faith. The disputed domain names, which contain the STATOIL mark in its entirety, were registered on February 11, 2015, while the Complainant’s trademarks STATOIL were registered much earlier, for example the first one was approved in 1974 (Norwegian Trademark Reg. No. 90221 - Annex 2 to the Complaint). There is no doubt that the trademark STATOIL is well-known worldwide, and was so also at the time of registration of the disputed domain names.

The disputed domain names are used in bad faith. It is necessary to accept the arguments of the Complainant that the disputed domain names bear no relationship to the Respondent’s name or its business, and that STATOIL has no other meaning, except for being the name and trademark of the Complainant. The registration, followed by the passive holding of the disputed domain names when, as here, there is no way in which they could be used legitimately, can amount to use in bad faith (Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784and F. Hoffmann-La Roche AG. v. Pinetree Development, Ltd., WIPO Case No. D2006-0049).

For the above cited reasons the Panel finds that the disputed domain names were registered and are being used in bad faith. Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

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 names <svenska-statoil.net> and <svenskastatoil.net> be transferred to the Complainant.

Ladislav Jakl
Sole Panelist
Date: October 16, 2015