WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Statoil ASA (Statoil) v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / patrick ubong

Case No. D2016-1792

1. The Parties

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

The Respondent is Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org of Nobby Beach, Australia / patrick ubong of Uyo, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <statoilgas-asa.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 September 2, 2016. On September 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 3, 2016, 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. The Center sent an email communication to the Complainant on September 5, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 7, 2016.

The Center verified that the Complaint together with 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2016.

The Center appointed Mladen Vukmir as the sole panelist in this matter on October 7, 2016. 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 Panel has determined the following non-contested facts:

(i) the disputed domain name was registered on July 8, 2016 (Annex A to the Complaint and further confirmation received from the Registrar).

(ii) the Respondent is the Registrant of the disputed domain name (Annex A to the amended Complaint and further confirmation received from the Registrar).

(iii) the disputed domain name points to an “under construction” website (Annex G to the Complaint).

(vi) as listed and evidenced in the Complaint and Annexes D and E to the Complaint, the Complainant is the holder of a number of STATOIL trademarks, including:

- International Trademark Registration Number 730092, STATOIL (Word mark), registration date: March 7, 2000. Status: Active;

- International Trademark Registration Number 1220682, STATOIL (Word mark), registration date: December 5, 2013. Status: Active;

- European Union (“EU”) Trademark Registration Number 003657871 STATOIL (Word mark), registration date: May 18, 2005. Status: Active.

5. Parties’ Contentions

A. Complainant

The Complainant, essentially, asserts that:

(i) Statoil ASA is an international energy company which has been in business for over 40 years and is one of the leading providers of energy products and services on a global basis.

(ii) the Complainant’s STATOIL trademark was first approved in 1974 under the Trademark Reg. No. 90221 (now ceased). Today, the Complainant’s STATOIL trademark is protected by several hundred of registrations worldwide, including a registration in Nigeria, since 1986 under Registration Number 19864630.

(iii) the Complainant’s STATOIL trademark is also protected by two (2) International Trademark Registrations, Number 730092 and Number 1220682, as well as the EU Trademark Registration, Number 003657871.

(iv) the Complainant is the owner of a significantly big portfolio of domain names throughout the world, containing approximately 1000 domain names, all comprising the STATOIL trademark distributed among both generic Top-Level Domains (“gTLDs”) as well as country code Top-Level Domains (“ccTLDs”).

(v) the disputed domain name is identical or confusingly similar to the Complainant’s STATOIL trademark in which Complainant has rights. In this regard, the Complainant claims that:

- the disputed domain name is confusingly similar to the Complainant’s STATOIL trademark and trade name, as it consists of Complainant’s trademark and the generic terms “gas” and “asa”, where “asa” is the abbreviation of the Norwegian term “allmennaksjeselskap”, which means public limited company;

- the gTLD “.com” must be excluded from consideration because it has no legal significance. In support of this contention, the Complainant invokes position adopted by panels in previous UDRP cases and in particular in UDRP case Missoni S.p.A. v. Chen Zhu, Chen Guang Yao, Cheng-Hong Wu, WIPO Case No. D2014-0420;

- in accordance with the consensus view of WIPO Overview 2.0, in order to satisfy the threshold test for confusing similarity under the UDRP, the relevant trademark would generally need to be recognizable as such within the disputed domain name, with the addition of common, dictionary, generic, descriptive, geographical or negative terms typically being disregarded as insufficient to prevent threshold confusing similarity;

- panels in previous UDRP cases have held that the mere addition of a generic term to a famous mark does not sufficiently distinguish the domain name from the complainant’s trademark in the mind of the consumers. In this regard the Complainant invokes UDRP cases LEGO Juris A/S v. Kang Zheng, WIPO Case No. D2010-1924; and Statoil ASA. v. Allan, WIPO Case No. D2013-2123;

- bearing in mind (a) the widespread reputation and high degree of recognition of the Complainant’s STATOIL marks and (b) the lack of distinguishing factors between the disputed domain name and the Complainant’s marks, the disputed domain name should be considered as confusingly similar to the STATOIL mark in which the Complainant has rights;

- STATOIL is the second largest supplier of natural gas to the European market, with a market share in the EU of approximately 15 percent, and therefore the addition of the term “gas” to the trademark STATOIL gives the impression that the disputed domain name is reflecting the “gas” sector of the Complainant;

- due to the worldwide brand awareness of the Complainant’s STATOIL trademark, Internet users would probably assume there is a connection between the Complainant and the Respondent when seeking information on a website under the disputed domain name;

- there is no question that the disputed domain name <statoilgas-asa.com> is visually, phonetically and conceptually similar to the Complainant’s well-known trademark STATOIL.

(vi) the Respondent has no rights or legitimate interest in the disputed domain name, and in support of such assertion contends that:

- based on Complainant’s continuous and long prior use of its trademark and trade name STATOIL, the Respondent has no rights or legitimate interest in the disputed domain name;

- the Complainant has not licensed or otherwise permitted the Respondent to use its trademark. There is no relationship between the parties which could justify the registration of the disputed domain name by the Respondent;

- nothing in the records, including the WhoIs information, suggests that the Respondent is commonly known by the disputed domain name;

- the Respondent has no registered trademark or trade name corresponding to the disputed domain name;

- there is no possibility that Respondent could have been unaware of the rights held by the Complainant, because a simple Google search would have yielded information on rights of the Complainant;

- given the worldwide reputation of the Complainant’s STATOIL trademark, it is not a trademark that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant;

- it can be assumed that Respondent’s intention for registering the disputed domain name has been either to sell the disputed domain name to the Complainant, or to use it otherwise for financial gain, for example by making fraudulent offers to email recipients or Internet users. The fact that MX-records are set up for the disputed domain name indicates a potential risk of use of the disputed domain name in fraudulent email correspondence.

- it has been concluded by the panel in UDRP case Statoil ASA v. David Campbell, WIPO Case No. D2013-1130 that due to the fact that the Respondent has no permission from the Complainant, even if the disputed domain name is not used, the Respondent’s use of the disputed domain name is without rights or legitimate interests;

- it was concluded by panels in earlier UDRP cases that the passive holding of the disputed domain names in itself is not capable of creating any rights of respondent therein. In this regard, the Complainant invokes panel decision in Statoil ASA. v. Allan, supra.

(vii) the Respondent has registered and used the disputed domain name in bad faith, and in this regard the Complainant asserts that:

- the Respondent must have known of the Complainant’s well-known trademark STATOIL. That being so, the Respondent could not have chosen or used the word “statoil” in the disputed domain name for any reason other than to tradeoff the goodwill and reputation of the Complainant’s trademark or otherwise create a false association, sponsorship or endorsement with or of the Complainant;

- use of the generic term “gas” gives the impression that the communication by using “[…]@statoilgas-asa.com” in emails originates from the Complainant or that website is connected with the Complainant.

- a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration. In this respect the Complainant refers to the practice of previous UDRP panels and invokes Ebay Inc. v. Wangming, WIPO Case No. D2006-1107.”

- already the registration, followed by a 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. In support of this contention, the Complainant relies upon earlier positions taken by panels in previous UDRP cases, and in particular Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Statoil ASA. v. Allan, supra.

B. Respondent

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

6. Discussion and Findings

The Panel now proceeds to consider this matter on the merits in light of the Complaint, the lack of a response, the Policy, the Rules, the Supplemental Rules and other applicable legal authority pursuant to paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to the disputed domain name, each of the following:

(i) the domain name is confusingly similar to a trademark in which the Complainant has rights; and

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

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Primarily, the Panel wishes to emphasize that, under general consensus view, the mere fact of ownership of a registered trademark by the complainant is generally sufficient to satisfy the threshold requirement of having trademark rights. The location of the trademark, its date of registration (or first use), and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP (see paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).

The Complainant has presented sufficient evidence to establish that it is the owner of at least three STATOIL wordmarks as listed above, all registered well before the disputed domain name. Furthermore, panels in previous UDRP cases held that the Complainant’s STATOIL trademark is well-known within its field of business. See, e.g., Statoil ASA v. Domain Admin/Management SO Hkg, WIPO Case No. D2012-2392; Statoil ASA v. IVAN RASHKOV, WIPO Case No. D2013-1583; Statoil ASA. v. Allan, supra; Statoil ASA v. Aysun Kalamar,WIPO Case No. D2015-1439.

Furthermore, it is well established that the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the disputed domain name. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name, with the addition of common, dictionary, generic, descriptive, geographical or negative terms typically being disregarded as insufficient to prevent threshold confusing similarity. Application of the confusing similarity test under the UDRP typically involves a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name (see paragraphs 1.2 and 1.9 of the WIPO Overview 2.0).

After performing the straightforward visual and aural comparison, it is evident to this Panel that the disputed domain name incorporates the Complainant’s STATOIL trademark in its entirety, and that the same trademark is clearly recognizable as such within the disputed domain name.

The Panel must further answer the question, whether adding the terms “gas” and “asa” as well as of the hyphen to the Complainant’s STATOIL trademark in the disputed domain name is sufficient to prevent the confusing similarity of the disputed domain name with the Complainant’s STATOIL trademark.

With respect to the above, this Panel upholds the Complainant’s contentions that the addition of the terms “gas” and “asa” to the Complainant’s trademark in the disputed domain name is insufficient to prevent a finding of confusing similarity. Namely, the word “gas” is clearly generic and/or descriptive. The same applies to the term “asa”, a commonly used abbreviation for the Norwegian term “allmennaksjeselskap” which means “public limited company” in English. As such, in this Panel’s view, these two words are not sufficient to overcome the confusing similarity with respect to the Complainant’s STATOIL trademark which remains the dominant and distinctive element in the disputed domain name.

It should be noted that prior UDRP panels have found confusing similarity in several earlier cases based on the circumstances involving domain names comprised of a well-known trademark and a generic and/or descriptive term. Confusing similarity was found in each instance because the term added was insufficient to distinguish the domain name from the trademark itself. See the generally adopted panel views under paragraph 1.9 of the WIPO Overview 2.0, and particularly, Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet Ltd., WIPO Case No. D2000-0275; Société Air France v. R Blue, WIPO Case No. D2005-0290; SANOFI AVENTIS v. ProtectFly.com/RegisterFly.com, WIPO Case No. D2006-1272; F.Hoffmann-La Roche AG v. Avieltech Consultant, WIPO Case No. D2007-0930. Also, see the numerous UDRP decisions cited by the Complainant: Swarovski Aktiengesellschaft v. PrivacyProtect.org Domain Admin / Trade Out Investments Ltd, WIPO Case No. D2011-1522; Swarovski Aktiengesellschaft v. Christine Jil, WIPO Case No. D2011-0981; Swarovski Aktiengesellschaft v. liu ji, WIPO Case No. D2011-0353; Swarovski Aktiengesellschaft v. Marzena Marzena, WIPO Case No. D2011-0980; Swarovski Aktiengesellschaft v. shenglin fan, WIPO Case No. D2012-0170; Swarovski Aktiengesellschaft v. Kimi DeLuca, WIPO Case No. D2007-0252; Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947; and Siebel Systems, Inc v. Implementation Services Group, Inc., WIPO Case No. D2002-1070.

Regarding the hyphen, in this Panel’s view, addition of the same in the disputed domain name is insignificant and does nothing to avoid confusing similarity of the disputed domain name with the respective STATOIL trademark of the Complainant.

A number of previous UDRP panels found the hyphen to be insufficient to overcome the confusing similarity of the domain names consisting of a trademark, one or more hyphens and one or more generic and or descriptive terms (see e.g. Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630; Swarovski Aktiengesellschaft v. jianxin ou aka jianxinou, WIPO Case No. D2010-2022; Swarovski Aktiengesellschaft v. Domain Privacy Group Inc. / George Tzikas, WIPO Case No. D2010-2067; and Swarovski Aktiengesellschaft v. Bruce Bush, WIPO Case No. D2012-0628).

In relation to the applicable gTLD “.com” suffix in the disputed domain name, it is a consensus view that it is usually disregarded under the confusing similarity test (see paragraph 1.2 of the WIPO Overview 2.0).

For all the foregoing reasons, the Panel finds that the Complainant has satisfied the requirement set forth in paragraph 4(a)(i) of the Policy, i.e., has proven that the disputed domain name is confusingly similar to its trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

“(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or

(iii) Where [the respondent is] making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”

The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, whereby: “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. […]”.

In this case, the Respondent is in default, hence, the Panel has evaluated the arguments and evidence submitted by the Complainant and finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests to the disputed domain name.

The Panel observes that there is neither any relation, disclosed to the Panel nor otherwise apparent from the records, between the Respondent and the Complainant, nor does it arise that the Complainant has ever licensed or otherwise permitted the Respondent to use its STATOIL trademark, or to apply for or use any domain name incorporating the same trademark.

Furthermore, there is no evidence that the Respondent has been commonly known by the disputed domain name or has been using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers.

This Panel upholds the Complainant’s contentions that the fact that the disputed domain name has not been actively used does not prevent the Panel from finding that the Respondent has no rights or legitimate interests in the disputed domain name. In this respect, this Panel holds that the positions taken by panels in the previous UDRP cases invoked by the Complainant in the Complaint are also applicable to the present case due to their similar factual background. Namely, the panel in Statoil ASA. v. Allan, supra found that “passive holding of the disputed domain name in itself is not capable of creating any rights of Respondent therein”, while the panel in Statoil ASA v. David Campbell, supra concluded that “since Respondent has no permission from the Complainant, the Panel finds that based on the available evidence, Respondent’s use of the disputed domain name is without rights or legitimate interests”.

Accordingly, the Panel finds that the requirements set forth in paragraph 4(a)(ii) of the Policy have been fulfilled by the Complainant’s making the prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and by the Respondent’s failing to produce any arguments or evidence to the contrary.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular, but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:

(i) circumstances indicating that the holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’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 holder’s website or location or of a product or service on the holder’s website or location.

In the records, there is no evidence that the Respondent has actively used the disputed domain name (e.g., that it resolves to an active website) or that he attempted to sell or to contact the trademark holder in relation to the same. Therefore, the Respondent’s comportment may be considered as passive holding of the disputed domain name (although, in line with the evidence presented by the Complainant, the mail exchange records for the disputed domain name have been set up and the website under the disputed domain name states that the website is “under construction”, which all points out to the Respondent’s intention of using the disputed domain name). The question that the Panel must answer is whether passive holding of the disputed domain name by the Respondent prevents finding of the bad faith in this case.

Taking into consideration all the circumstances of this case, this Panel holds that passive holding of the disputed domain name by the Respondent does not prevent finding of the bad faith. According to the Panel’s findings, there are cumulative circumstances which are indicative of bad faith. Such circumstances include the Respondent’s knowledge of the Complainant, its well-known STATOIL trademark, and the Complainant’s business; no response to the Complaint having been filed; and the registrant’s concealment of its identity through using of a proxy service and providing of incomplete/wrong contact information.

In the absence of a Response or any other evidence to the contrary, the Panel accepts the Complainant’s arguments that the Respondent must have been aware of the Complainant and its well-known STATOIL trademark at the time of registration of the disputed domain name. Namely, the Complainant has established that it is the holder of a number of STATOIL trademarks enjoying protection in various jurisdictions. In addition, panels in previous UDRP cases held that the Complainant’s STATOIL trademark is well-known within its field of business. It would be too much of a coincidence for the Respondent to come up with the disputed domain name incorporating the Complainant’s well-known STATOIL trademark, the word “gas” which points to the Complaint’s business and word “asa” which represents the integral part of the Complaint’s company name as the designation of the company type, without knowledge of the Complainant and its business. Therefore, it may be concluded that the Respondent was aware of the Complainant, its STATOIL trademark and the Complainant business when registering the disputed domain name. In this Panel’s view, this is one of the indications of bad faith on the side of the Respondent.

Previous UDRP cases have found bad faith registration based in part on proof that the respondent “knew or should have known” about the existence of the complainant’s trademark and, in particular in cases that involved well-known or widely used trademarks (see paragraph 3.4 of the WIPO Overview 2.0).

In this case, the Respondent has used privacy service for registration of the disputed domain name. Furthermore, according to the information available in the case file (email of the courier service sent on September 21, 2016 to the Center informing the Center that the address provided for the Respondent is wrong and/ or /incomplete) it arises that the Respondent provided wrong/incomplete contact information when registering the disputed domain name. It is hard to imagine any other reason for the Respondent to use the privacy service and provide wrong/incomplete contact information, other than to conceal his identity. Therefore, this Panel holds that the Respondent’s presumed intention to conceal his identity is further indication that the Respondent acted in bad faith when registering the disputed domain name. Such position of the Panel is in line with the general consensus view as summarized in paragraph 3.2. of the WIPO Overview 2.0: “Although use of a privacy or proxy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. For example, registrant use of a privacy service in combination with provision of incomplete contact information to such service or a continued concealment of the ‘true’ or ‘underlying’ registrant (possibly including that registrant's actual date of acquisition) upon the institution of a UDRP proceeding may be evidence of bad faith.”

The Respondent did not file a response to the Complaint. Although, in this Panel’s opinion, not responding to the Complaint is not by itself an indication of bad faith, in combination with other circumstance of this particular case, it contributes to the Panel’s opinion on the Respondent acting in bad faith. Namely, if the Respondent was not acting in bad faith, then it would be reasonable to expect him to come forward and reply to the Complainant’s contentions. However, the Respondent did not do that, and therefore, the Panel finds this as further indication of the Respondent’s bad faith.

All the aforedescribed circumstances cumulatively add up to finding of the bad faith of the Respondent when registering the disputed domain name, and that passive holding of the disputed domain name does not prevent such finding. In this regard, the Panel accepts the Complainant’s contentions that it is hard to imagine that the Respondent could have registered and subsequently used the disputed domain name other than to trade-off the goodwill and reputation of the Complainant, its STATOIL trademark and its business.

Such position of the Panel is further supported by the fact that the Respondent added terms “gas” and “asa” to the Complainant’s STATOIL trademark. It is hard to imagine that the Respondent has done so with the intention to distinguish the disputed domain name from the Complainant’s STATOIL trademark. To the contrary, this Panel believes that the Respondent decided to include said terms in the disputed domain name with the purpose to reinforce consumer confusion as to the connection between the Complainant, its STATOIL trademark and the disputed domain name. Namely, according to the information provided in the Complaint and the general information about the Complainant and its business available online, the Complainant is involved in the energy sector and is one of the largest suppliers of natural gas to the European market. In addition, the term “asa” is the integral part of the Complainant’s company name as a designation of the company type as stated earlier. It would be entirely reasonable for anyone seeking information regarding the Complainant and its business to type words “gas” or “asa” in addition to the Complainant’s STATOIL trademark in one of the Internet search engines, or to associate the disputed domain name with the Complainant and its business when seeing the same terms in the disputed domain name.

It is a general consensus view that passive holding of the domain name does not as such prevent finding of a bad faith, as summarized in paragraph 3.2 of the WIPO Overview 2.0: “With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the 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. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere “parking” by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals)”.

What is more, panels in previous UDRP cases held that registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is by itself a sufficient evidence of bad faith registration (see e.g. Ebay, Inc. v. Wangming, WIPO Case No. D2006-1107). Such position may in this Panel’s view also be applied to the case at hand taking into the consideration that the Complainant’s trademark is well-known and that there is no evidence in the records, or otherwise apparent that the Respondent has any rights to the same trademark.

Given the above, the Panel finds that the disputed domain name has been registered and used in bad faith and that the Complainant fulfilled the third element under 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, <statoilgas-asa.com> be transferred to the Complainant.

Mladen Vukmir
Sole Panelist
Date: October 21, 2016