WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA v. Weiwei Qiu / PrivacyProtect.org
Case No. D2011-1752
1. The Parties
The Complainant is Statoil ASA of Stavanger, Norway, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Weiwei Qiu of Stavanger, Norway / PrivacyProtect.org of Nobby Beach, Australia.
2. The Domain Name and Registrar
The disputed domain name <statoilpetroleum.com> is registered with Answerable.com (I) Pvt Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2011. On October 14, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 16, 2011, 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 October 18, 2011, 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 amendment to the Complaint on October 19, 2011.
The Center verified that the Complaint together with the amendment to 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 October 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2011. The Response was filed with the Center on November 9, 2011.
The Respondent submitted supplemental filings on November 10, 2011, and the Complainant sent an e-mail in reply thereto on November 10, 2011. The supplemental filings from both parties were admitted by the Panel because of their briefness, and the fact that the proceedings were not delayed by these supplemental filings.
The Center appointed Amund Grimstad as the sole panelist in this matter on November 17, 2011. 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 is Statoil ASA. Statoil ASA was founded in 1972 and is one of the world’s largest oil companies and significant supplier of natural gas. The Complainant is today present in over 30 countries around the world and employs over 20,000 people.
The Complainant is the owner of the trademark STATOIL, which has been registered by the Complainant as trademarks in numerous countries all over the world.
5. Parties’ Contentions
The disputed domain name <statoilpetroleum.com> is confusingly similar to the STATOIL trademark.
The disputed domain name consists of the Complainant’s STATOIL trademark with the addition of the word “petroleum” and the gTLD “.com”. The trademark STATOIL is the distinctive element of the disputed domain name. The additions are not sufficient to escape the finding of similarity.
The Complainant further states that the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name <statoilpetroleum.com>. The Complainant has rights in the trademark STATOIL, which precede the Respondent’s registration of the disputed domain name.
The Complainant argues that the Respondent has failed to show any legitimate interest in the disputed domain name. The Respondent is not using the disputed domain name for a bona fide offering of goods or services as established in prior UDRP decisions.
The Respondent is not authorized to use the Complainant’s trademark STATOIL in a domain name.
The Respondent is using the disputed domain name to promote STATOIL products and also to sell other products which are directly in competition with the products sold by the Complainant.
Furthermore, the Complainant argues that the disputed domain name has been registered and is being used in bad faith.
The disputed domain name is not identical to the Complainant’s company name, as the disputed domain name also contains the word “petroleum”. At the time of registration, the Complainant used the company name “StatoilHydro”, not “Statoil”.
The Complainant has not used, nor registered the disputed domain name <statoilpetroleum.com> and does not use the term “Statoil Petroleum”, nor registered the company name “Statoil Petroleum”.
The word “statoil” is generic and can therefore not create any exclusive rights to the word.
The Respondent contends that the words “Statoil Petroleum” cannot be found on the STØREN Complainant’s official website
The disputed domain name is not in use. The disputed domain name redirects to a SEDO parking page. The parking is free, but the parking page company puts advertisements on the parking page as payment for the parking.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain name <statoilpetroleum.com> transferred to it, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
-The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
In order for the Complainant to successfully argue that the disputed domain name must be transferred to it, the disputed domain name must be identical or confusingly similar to a trademark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i)).
The STATOIL trademark is registered worldwide and is well known. The disputed domain name <statoilpetroleum.com> contains the STATOIL trademark, creating confusing similarity to this trademark.
The Respondent uses the trademark with the addition of the word “petroleum”. The trademark STATOIL is the distinctive element of the disputed domain name. Both a visual and aural comparison between the trademark and the disputed domain name provides strong support for the assertion that the disputed domain name is confusingly similar to the trademark. The mere addition of the descriptive word “petroleum” to the trademark does not change the overall impression of that the disputed domain name is connected to the trademark STATOIL.
The addition of the gTLD “.com” is not relevant in assessment of whether the disputed domain name is confusingly similar to the Complainant’s trademark.
The additions are thus not sufficient to escape the finding of confusing similarity.
The first requirement of the Policy has therefore been fulfilled.
B. Rights or Legitimate Interests
Secondly, the Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).
A complainant is required to make out an initial prima facie case that a respondent lacks rights or legitimate interests. The respondent then carries the burden of demonstrating rights or legitimate interests in a domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy, see for example Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent does not appear to claim that it has any right in the STATOIL trademark and has not provided any explanation why it registered this particular domain name, besides the fact that the Complainant was not using it. In the absence of submissions of rights or legitimate interests from the Respondent, the Complainant is deemed to have satisfied paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
The trademark of the Complainant is registered in various countries and is used worldwide. The question is whether the Respondent has registered the disputed domain name in bad faith.
The disputed domain name is used to link to a parking page with sponsored links. This is allegedly done by the free parking service, but with the permission of the Respondent. This does not constitute a legitimate noncommercial or fair use of the disputed domain name.
The Panel notes that the trademark STATOIL is well known. It is most likely that the Respondent was aware of the Complainant and its trademark, and its reputation in the energy sector, when the Respondent registered the disputed domain name. In this regard, the Panel also notes that the Respondent Weiwei Qiu is located in the same country and city as the Complainant.
The Panel agrees with the decision rendered in Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, in that bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”. The use of the trademark STATOIL with the addition of the generic word “petroleum” suggests that the Respondent has acted in bad faith.
In this particular case, the Respondent claims that the disputed domain name was registered when the Complainant was in the process of changing its company name from “Statoil ASA” to “Statoil Hydro ASA”. This however, fails to take into consideration that even if the company name was to be changed, the rights of Complainant in the STATOIL trademarks would still apply.
The Panel therefore finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to an on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or other location (Policy, paragraph 4(b)(iv)).
The third requirement of the Policy has therefore been 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 disputed domain name <statoilpetroleum.com> be transferred to the Complainant.
Dated: December 8, 2011