WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA v. Magne Espelund
Case No. D2003-0097
1. The Parties
The Complainant is Statoil ASA, Alsnögatan 11, SE-116 92 Stockholm, of Sweden, represented by Cogent IPC AB of Sweden.
The Respondent is Magne Espelund, C/O Kenneth Pedersen, Lie, 5353 Straume, of Norway.
2. The Domain Names and Registrar
The disputed domain names are <statoil-gas.com> and <statoilgas.com>.
The domain names at issue are registered with Capital Networks Pty Ltd. dba TotalNIC.net.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 10, 2003. On February 12, 2003, the Center transmitted by email to Capital Networks Pty Ltd. dba TotalNIC.net a request for registrar verification in connection with the domain names at issue. On date of registrar verification, Capital Networks Pty Ltd. dba TotalNIC.net transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 March 4, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on March 25, 2003.
The Center appointed Peter G. Nitter as the Sole Panelist in this matter on April 4, 2003. 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
Complainant is an oil and gas company founded in 1972, having more than 16,000 employees and running business operations in 25 countries. Complainant is among the leading suppliers of gas to the European market, and has substantial interests in the worldís largest submarine gas transport system.
Complainant holds more than 800 trademark registrations and applications containing the word STATOIL in more than 50 countries worldwide.
5. Partiesí Contentions
The dominant parts of the domain names at issue are identical to the Complainantís trademark STATOIL. The addition of the generic suffix "gas" is strengthening the impression that the domain names are Complainantís, since the Complainant is a leading supplier of gas to the European market. Hence, the domain names are confusingly similar to Complainantís trademark.
The Complainant has not found anything that would suggest that Respondent has any registered trademarks or trade names corresponding to the domain names at issue. Nor has Complainant found anything that would suggest that Respondent has been using the name STATOIL, so that he may claim having established any rights in this name through use. There is furthermore no connection or co-operation between the Complainant and the Respondent, and no license or authorization has been granted by Complainant to use the trademark STATOIL.
Respondent cannot possibly claim to have been using STATOIL without being aware of the Complainantís rights, as STATOIL must be considered as famous trademark in Norway.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three tests which a Complainant must satisfy in order to succeed. The Complainant must satisfy that:
(i) the domain name 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 such domain name; and
(iii) the domain name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
As the disputed domain names are not identical to a trademark of Complainant, the question is whether there is a confusing similarity between the domain names and the trademark.
The domain names at issue are almost identical Ė the only difference lays in the addition of a hyphen between the two words "statoil" and "gas" in one of the domain names. In previous proceedings under the UDRP, Panels have found that for purposes of assessing the confusing similarity between domain names and trademarks hyphens, as well as top-level domain extensions, spaces, and punctuation are to be ignored, see WIPO Cases Nos. D2000-0075, D2000-0119 and D2000-0206. The panel thus finds that the difference between the domain names at issue is without significance to the case, and the Panel is therefore going to discuss the question of confusing similarity for the two domain names together.
The domain names at issue incorporates in its entirety Complainantís house mark STATOIL, which, as a result of its extensive use over a long period of time and the vital importance of the STATOIL business operations to the Norwegian society, undoubtedly is a famous mark within Norway. Despite the fact that the mark STATOIL partly is made up of the generic terms "state" and "oil," it must therefore be regarded as a strong and distinctive trademark within Norway.
The only difference between the domain names at issue and Complainantís trademark STATOIL is the addition of the suffix "gas." Previous cases under the UDRP have shown that the addition of a generic term to a famous mark is not sufficient to give the domain names an individual meaning and prevent the overall impression that the domain names have some sort of connection with Complainant (see Case No D2001-0331). The same view must prevail in the present case, where the suffix "gas" constitutes a generic word with no distinctiveness. As Complainant and its trademark is widely known for conducting business with gas, said suffix is rather fitted to strengthen the impression that the domain names belongs to, or is affiliated with Complainant.
Hence, the addition of the suffix "gas" can in no way prevent a strong likelihood of confusion between the domain names at issue and Complainantís trademark, and the prerequisites in the Policy, Paragraph 4(a)(i) are therefore fulfilled.
B. Rights or Legitimate Interests
The Administrative Panel has considered the allegation by the Complainant as to the lack of rights or legitimate interests of the Respondent in respect of the domain names at issue.
Complainant maintains that it has in no way authorized the respondent to register the domain names at issue. As a result of default, these allegations have not been contested by the Respondent. In the present case, it would be difficult for Complainant to prove that an authorization to register and use the domain names at issue has not been granted, at the same time as Respondent easily could have done so, pursuant to Paragraph 4(c) of the Policy.
In the above mentioned circumstances, it is therefore considered sufficient for Complainant to make a prima facie showing of the fact that Respondent lacks rights or legitimate interest in the contested domain names.
The Administrative Panel has visited the "www.statoilgas.com" and "www.statoil-gas.com" websites of the Respondent in order to investigate whether there could be found any evidence as to Respondents rights or the legitimacy of the interest of the Respondent in the contested domain names. The Administrative Panel found, that in correspondence with Complainantís assertions in its Complaint, the websites displayed only the registrarís standard Ďunder constructioní page, and gave no evidence of any rights or legitimate interests in the domain names on the part of the Respondent.
Hence, there are no indications that Complainant has granted Respondent any rights to use its trademark, nor the right to register or use the domain names at issue, nor are there any indications present that Respondent has any other rights or legitimate interests in any trademark corresponding to the domain names at issue.
Under these circumstances, this Administrative Panel has thus satisfied itself that Complainant has established a prima facie case that the Respondent has no rights or legitimate interest in the contested domain names.
Hence, the Panel finds that the Respondent has no rights or legitimate interest in the contested domain names, and the prerequisites in the Policy, Paragraph 4(a)(ii) are therefore fulfilled.
C. Registered and Used in Bad Faith
Respondent has not invoked any circumstances which could invalidate Complainantís allegations and evidence with regard to the Respondentís registration and use of the domain names in bad faith.
Complainantís trademark is famous in Norway where the Respondent is a resident, and the mark has thus undoubtedly been known to Respondent when registering the domain names at issue. The addition of the suffix "gas" is, in the opinion of the Panel, a further indication that Respondent has been aware of Complainantís trademark and the kind of business that is being carried out under this trademark, and is also an indication that Respondent has attempted to create a likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation, or endorsement of his website.
Respondent has not put the disputed domain names into active use. As shown in previous decisions under the UDRP, such active use is however not necessary to constitute bad faith use. In Case No. D2000-0003 it has been established that bad faith use is not limited to positive action, and that passive holding of a domain name may constitute bad faith use. Bad faith use, in the meaning of the Policy, Paragraph 4(a)(iii) may also, according to previous decisions under the UDRP (see Case No. D1999-0001), consist of an offer to sell the domain names at issue for an amount considerably exceeding the Respondentís out-of-pocket costs. Complainant has evidenced that Respondent has made such an offer.
As a result of the above, the Panel finds that the prerequisites in the Policy, Paragraph 4(a)(iii) are fulfilled.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <statoil-gas.com> and <statoilgas.com> be transferred to the Complainant.
Peter G. Nitter
Dated: May 5, 2003