Arbitration and mediation center administrative panel decision




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ARBITRATION
AND
MEDIATION CENTER




      ADMINISTRATIVE PANEL DECISION

      Statoil ASA (“Statoil”) v. Ferro Group, Phelirin Ferro



      Case No. D2014-1044

1. The Parties
The Complainant is Statoil ASA (“Statoil”) of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Ferro Group, Phelirin Ferro of Lagos, Nigeria.

2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”).

3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2014. On June 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 18, 2014, 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 June 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 15, 2014.
The Center appointed Alessandra Ferreri as the sole panelist in this matter on July 28, 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


  1. The Complainant is an international provider of energy products and services, owner of several trademark registrations for STATOIL all over the world (Annex 2 to the Complaint), amongst which (Annex 3 to the Complaint) the International trademark registration No. 730092, registered on March 7, 2000, and the Community trademark registration No. 3657871, registered on May 18, 2005.



  2. The disputed domain name was registered on March 11, 2014, and currently does not resolve to any active web-site. It has previously been used for illegal activities, as it results from an extract of the “www.Joewein.de” web-site, a site which collects reports regarding fraudulent Internet activities (Annex 4 to the Complaint).





  1. 5. Parties’ Contentions



    A. Complainant



The Complainant contends to be in business for over 40 years and to be one of the leading providers of energy products and services with 21,000 employees and extensive operations worldwide.

The Complainant further claims that STATOIL is a well-known trademark, as it has been confirmed by several previous UDRP decisions.




The Complainant argues that the disputed domain name is confusingly similar to the Complainant's STATOIL mark; indeed the addition of the element “-nig” does not eliminate the confusing similarity of the disputed domain name with the Complainant’s STATOIL trademark as it is no more than a descriptive component referring to Nigeria, a country in which the Complainant conducts business. On the contrary, the element “.nig” strengthens the association with the Complainant and may falsely mislead email recipients or Internet users into believing that emails or information provided from the disputed domain name originate from the Complainant’s office in Nigeria.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name since: (1) the Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the STATOIL trademark, (2) the 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 the Respondent acquired any trademark or service mark rights in that name or mark, and (3) it must be assumed that the Respondent’s intention in registering the disputed domain name was either to sell it to the 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 affiliated with the Complainant.


Finally, the Complainant asserts that the Respondent has registered and is using the disputed domain name in bad faith since: (1) the mark STATOIL is well-known worldwide and was so also at the time of the registration of the disputed domain name, (2) the disputed domain name bears no relationship to the Respondent’s name or business, and (3) the disputed domain name has no other meaning except in reference to the name and trademark of the Complainant, and there is no way in which it could be used legitimately.


    B. Respondent

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



6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

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


    A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s STATOIL trademark, a distinctive and well-known mark in which the Complainant has established rights through registration and extensive use all over the world.


The disputed domain name incorporates the Complainant’s STATOIL trademark in its entirety; the only differences are the adjunction of the suffix “nig” and the use of a hyphen.
In the Panel’s assessment, the mere addition of the geographical indicator “-nig”, that clearly refers to the country of Nigeria, does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark (see America Online Inc. v. Yetech Communication Inc., WIPO Case No. D2001 0055; GA Modefine SA v. Riccardo Bin Kara Mat, WIPO Case No. D2002 0195; Volkswagen AG v. Emir Ulu, WIPO Case No. D2005 0987; for the addition of a geographical indicator see Rolls Royce PLC v. Hallofpain, WIPO Case No. D2000 1709; and PepsiCo Inc. v. QWO, WIPO Case No. D2004 0865). On the contrary, the adding of the term “-nig” (a country where the Complainant conducts business) is likely to enhance the confusion and to lead Internet users to believe that the disputed domain name is effectively linked to, affiliated with or connected to the Complainant.
The Panel believes Internet users without awareness of the content of the website at the disputed domain name may think that it is in some way connected and associated with the Complainant: This scenario is known as “initial interest confusion” (see Covance, Inc. and Covance Laboratories Ltd v. The Covance Campaign, WIPO Case No. D2004-0206; CBS Broadcasting Inc., f/k/a CBS Inc. v. Nabil Z. aghloul, WIPO Case No. D2004 0988).
As regards to the use of the hyphen between the terms “Statoil” and “nig”, according with several previous UDRP decisions, the Panel finds that “the use of a hyphen is irrelevant for the purpose of differentiating the Complainant’s mark from the disputed domain name” (see Swarovski Aktiengesellschaft v. new Swarovskisrystal-shop.net, WIPO Case No. D2013-1043).
There is no doubt that the disputed domain name is confusingly similar to the Complainant’s trademark. Therefore, the Panel finds that the Complainant has satisfied the first element of the Policy.


        1. B. Rights or Legitimate Interests

The Respondent did not reply to the Complainant’s contentions. Therefore, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.


In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the disputed domain name, such as:
(i) use or preparation 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 prior to notice of the dispute; or
(ii) being commonly known by the disputed domain name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence in the record that the Respondent has any rights or legitimate interests in the disputed domain name.
The Complainant states, and it was confirmed by previous UDRP decisions (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 used worldwide for many years and has become a well-known trademark. Therefore, in this Panel’s view the Respondent must have been aware of the Complainant’s existence when it registered the disputed domain name. And indeed, the Respondent’s awareness of the Complainant’s activity and rights may be inferred by the fact that the Respondent registered the disputed domain name incorporating the STATOIL trademark in its entirety, with the mere addition of the the geographical wording “nig” referring to Nigeria and, thus, to a country in which Complainant conducts business.
Moreover, the Complainant states that the Respondent has no connection or affiliation with the Complainant and no license or authorization of any kind has been given by the Complainant to the Respondent to register the disputed domain name or to use the trademark STATOIL in any other manner. Since the Respondent has no permission from the Complainant, the Panel finds that based on the available evidence, the Respondent’s use of the disputed domain name is without rights or legitimate interests.
Furthermore, the disputed domain name does not currently resolve to any active web-site; such “passive holding” of the disputed domain name in itself is not capable of creating any rights or legitimate interests of the 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).
Finally, given the circumstance of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the disputed domain name may also be inferred by the fact that no response was filed by the Respondent. According to previous UDRP decisions “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000 0493; and GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090).


    C. Registered and Used in Bad Faith

The Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant’s name, trademark and activities have been deemed well known and in this Panel’s view the Respondent must have been aware of the Complainant’s existence when it registered the disputed domain name. And indeed, the Respondent’s awareness of the Complainant’s activity and rights may be inferred by the fact that the Respondent registered the disputed domain name incorporating the STATOIL trademark in its entirety, with the mere addition of the geographical term “nig” referring to Nigeria and, thus, to a country in which Complainant conducts business.


In the light of the above, and in line with other prior decisions (Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000 1157; Veuve Cliquot Ponsardin Maison Fondée en 1772 v. The Polygenix Group Ltd., WIPO Case No. D2000 0163; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000 0226; Ferrero S.p.A. v. Mario Pisano, WIPO Case No. D2000 1794; Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002 0395), the Panel believes that, in the absence of any right or legitimate interest and lacking any contrary evidence by the Respondent, the Respondent’s registration of a domain name identical to the Complainant’s well-known trademark suggests opportunistic bad faith (see also MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412; and Mastercard International Incorporated v. Total Card Inc., WIPO Case No. D2007 1411; mentioned in the Complaint).


Concerning the use of the disputed domain name, the Complainant has proven that the disputed domain name currently holds no Internet content of Respondent and that it has also previously been used for illegal activities, as it results from the “www.Joewein.de” extract, a site which collects reports regarding fraudulent Internet activities (Annex 4 to the Complaint).
With regard to this issue, the Panel shares the Complainant’s view and, according to several precedents originated from the decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000 0003, the Panel believes that, in certain circumstances, the inaction in respect of a domain name registration can constitute a domain name being used in bad faith.
In the Panel’s opinion, in the circumstances of this Complaint, the passive holding of the disputed domain name by the Respondent amounts to the Respondent acting in bad faith.
Indeed, considering;
(i) the well-known character of the Complainant’s trademark and its widespread and international use;
(ii) the Respondent’s failure to provide evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name;
(iii) the default of Respondent’s reply to the Complainant’s contentions and that;
(iv) the previous fraudulent use of the disputed domain name by the Respondent;
the Panel concludes that the Respondent’s passive holding of the disputed domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy that the disputed domain name “is being used in bad faith” (see Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Sanrio Company, Ltd. and Sanrio, Inc. v. Neric Lau, WIPO Case No. D2000-0172 and Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615).
In light of all the above circumstances, the Panel is satisfied that the third element is met and that the disputed domain name was registered and is being used in bad faith.
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 be transferred to the Complainant.

Alessandra Ferreri

Sole Panelist



Date: August 11, 2014



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