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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Statoil ASA v. Michael Bradford

Case No. D2014-1953

1. The Parties

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

The Respondent is Michael Bradford of Brea, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <statoiluk-gas.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center on November 4, 2014. On November 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 6, 2014, 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 November 13, 2014, 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 November 18, 2014.

The Center verified that the Complaint together with the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 10, 2014.

The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on December 17, 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

The Complainant Statoil ASA is a Norwegian corporation established under Norwegian law.

The Complainant is an international energy company with 21,000 employees and extensive operations worldwide. The Complainant has been in business for over 40 years and is one of the leading providers globally of energy products and services.

The trademark STATOIL is well known, as confirmed by the previous decisions under the UDRP, such as Statoil ASA v. Weiwei Qiu / PrivacyProtect.org, WIPO Case No. D2011-1752 <statoilpetroleum.com>; Statoil ASA v. Domain Admin/ Management SO Hkg, WIPO Case No. D2012-2392 <statoilcareers.com>; Statoil ASA. v. Allan, WIPO Case No. D2013-2123 <statoilmailling.com> and <statoiltt.com> and Statoil ASA v. VistaPrint Technologies Ltd, WIPO Case No. D2014-0511 <statoil-uk.com>.

The Complainant owns numerous trademark registrations for STATOIL all over the world ever since 1974, namely international registration STATOIL, International registration no. 730092, and European Community trademark registration no. 003657871.

The Complainant's main website operates at "www.statoil.com".

The disputed domain name was registered on May 27, 2014.

5. Parties' Contentions

A. Complainant

The disputed domain name <statoiluk-gas.com> comprises the Complainant's entire trademark and trade name and adds the generic term "uk-gas". The addition of the descriptive term "uk-gas" does not impact the overall impression of the dominant part of the name "Statoil". It is firmly established by previous UDRP decisions that confusing similarity exists when well-known trademarks are paired with different kinds of prefixes and suffixes. See, e.g., Dr. Ing.h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488.

Considering the brand awareness of the trademark STATOIL worldwide, an Internet user would most probably assume a connection with the Complainant when seeking information on a website with the domain name <statoiluk-gas.com>.

The Complainant stated that there is no question that the disputed domain name <statoiluk-gas.com> is visually, phonetically and conceptually confusingly similar to the Complainant's well-known trademark STATOIL. Due to the fact that the disputed domain name incorporates the trademark STATOIL followed by "uk-gas", the public is inclined to think that the domain name <statoiluk-gas.com> will lead to a website related to the Complainant.

The Complainant stated that the Respondent has no rights or legitimate interests in respect of the disputed domain name. 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 name in connection with any bona fide offering of goods or services, is not generally known by the disputed domain name and has not acquired any trademark or service mark rights in that name or mark.

The Complainant added that; the disputed domain name bears no relationship to the Respondent's name or its business. 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. The disputed domain name has no other meaning except for the reference to the name and trademark of the Complainant, and there is no way in which it could be used legitimately.

It must reasonably be inferred that the Respondent knew about the Complainant when it registered the disputed domain name.

Accordingly, it must be established that the Respondent has registered and is using the disputed domain name <statoiluk-gas.com> in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules requires the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:

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

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

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

A. Identical or Confusingly Similar

The disputed domain name incorporates the Complainant's trademark and company name STATOIL in its entirety in association with the words "uk" and "gas". In this type of combination it is clear that the trademark STATOIL stands out and leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademark.

Previous UDRP panels have held that when a domain name wholly incorporates a complainant's registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g.,Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S.r.l., WIPO Case No. D2001-1206; Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the trademark STATOIL and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests. The Complainant showed, inter alia, that the Respondent has neither a license nor any other permission to use the disputed domain name. The Respondent has failed to demonstrate such rights or legitimate interests. The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right or legitimate interest in the disputed domain name. Based on the available record, it is clear that the Respondent has not demonstrated any bona fide offering of goods or services by its use of the disputed domain name and has not rebutted the Complainant's prima facie case. Nor has the Respondent shown that it has been commonly known by the disputed domain name.

The Panel further finds that given the use made of the disputed domain name, when the Respondent registered the disputed domain name it must have known the STATOIL trademark of the Complainant.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

The Panel is of the opinion that the Respondent must have been aware of the Complainant and its trademark rights when it registered the disputed domain name. The Panel is prepared to infer that the Respondent is taking advantage of the goodwill and reputation of the Complainant's trademark for commercial gain and it is well established that such use is evidence of bad faith. Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Universal Spheres Inc., WIPO Case No. D2010-0822. Further, such use clearly threatens to divert actual clients away from the Complainant and disrupt the Complainant's business.

As in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Ladbroke Group Plc v. Sonnoma International LDC, WIPO Case No. D2002-0131, after examining all circumstances surrounding the registration and use of the disputed domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly, the Panel finds in favor of the Complainant on the third element 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 <statoiluk-gas.com> be transferred to the Complainant.

Dilek Ustun Ekdial
Sole Panelist
Date: December 30, 2014

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