WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Statoil ASA and Statoil Fuel & Retail Aviation AS v. NA - Claudio Russo

Case No. D2013-0963

1. The Parties

Complainants are Statoil ASA and Statoil Fuel & Retail Aviation AS, both of Stayanger, Norway, represented by Valea AB, Sweden.

Respondent is NA - Claudio Russo of North Holland, Netherlands.

2. The Domain Name and Registrar

The disputed domain name <statoilaviation.net> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2013. On May 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 31, 2013, the Registrar transmitted by email to the Center its verification response, confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 1, 2013.

The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on July 11, 2013. 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 1 Statoil ASA is an international energy company with 21,000 employees and extensive operations worldwide. STATOIL has been in business for over 40 years and is one of leading providers globally of energy products and services.

Complainant 2 Statoil Fuel & Retail Aviation AS is a wholly-owned subsidiary of Statoil Fuel & Retail AS. Statoil Fuel & Retail AS has had operations in Europe for over 100 years and employs about 18,500 people. Complainant 2 supplies aviation fuel and related services to 85 airports in Europe, including the Netherlands where Respondent is based.

Complainant 1 and Statoil Fuel & Retail AS, the parent of Complainant 2, were part of the same corporate group until 2012 when the latter became a wholly-owned subsidiary of Alimentation Couche-Tard Inc.

Complainant 1 owns the rights to the STATOIL trademark, whereas Complainant 2 and its subsidiaries have a contractual right to use the mark.

The STATOIL trademark has been registered in numerous countries. A copy of the STATOIL community trademark n° 003657871 and of the STATOIL international registration n°730092 in the name of Complainant 1 are produced.

Complainant 1 is also the owner of several hundred domain names containing the trademark STATOIL

“Statoil Aviation” is the informal name and trade name of Complainant 2. The name is used by Complainant 2 in connection with its product and service offerings and the most commonly used name by its stakeholders. The official website of Complainant 2 is located at “www.statoilaviation.com”. The full business name Statoil Fuel and Retail Aviation AS was registered in Norway in 2010.

Previous panels have found that the STATOIL trademark is well-known, for example in Statoil ASA v. Weiwei Qiu / PrivacyProtect.org, WIPO Case No. D2011-1752 <statoilpetroleum.com> and in Statoil ASA v. Domain Admin/ Management SO Hkg, WIPO Case No. D2012-2392 <statoilcareers.com>.

The requested remedy is the transfer of the disputed domain name <statoilaiation.net> to the benefit of Complainant 1.

The disputed domain name <statoilaviation.net> has been registered on November 30, 2012, in the name of Claudio Russo, who is domiciled in the Netherlands.

5. Parties’ Contentions

A. Complainant

Complainants contend that they have a common legal interest. They rely on Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc.v. Official Tickets Ltd,, WIPO Case No. D2009-0331 <official-fulham-tickets.com> to assert that they are allowed to file a joint Complaint.

Both communicated trademark registrations protect STATOIL for e.g. petroleum products, gas and fuels in international class 4, which includes aviation fuel, and for transportation services in class 39 related to such products.

The disputed domain name is identical to the well-known trade name of Complainant 2 and is overall highly similar to the trademark STATOIL, which is owned by Complainant 1.

“Aviation” is obviously a descriptive element in the disputed domain name.

In this particular dispute, the element “aviation” adds to the confusion as it falsely misleads a consumer or other stakeholder who is searching the internet, or who is receiving an email from Respondent, into believing that the source behind the information is related to any of the Complainants, most likely Complainant 2.

Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent is not affiliated or related to any of Complainants in any way, or licensed or otherwise authorized to use the STATOIL mark in connection with a website or for any other purpose. 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 the name.

The website for which the disputed domain name corresponds currently contains sponsored links. The website also contains a message that “The domain <statoilaviation.net> is listed for sale. Click here to inquire about this domain name.”

It seems obvious, that Respondent has had no other intention for registering the disputed domain name than to sell it to Complainant or to a third party, or to make a profit from the sponsored links.

Respondent has registered and used the disputed domain name in bad faith. The mark STATOIL is well known worldwide, and was so also at the time of registration. STATOIL AVIATION is well known within the aviation sector in Europe. The disputed domain name has no other purpose than referring to the name and trademark of the Complainant.

A further indication of bad faith is the listing for sale of the disputed domain name on the website “www.bodis.com”, run by Bodis, which hosts the domain servers listed in the WhoIs of the disputed domain name.

In addition, Complainants have received an email message containing an offer to sell the domain name. The message is claimed to have been sent from “the manager” of the domain name. Although the email address from which the offer is sent does not correspond to the address of the domain registrant, the message can be presumed to have been sent directly or indirectly from Respondent.

Complainants rely on Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 <telstra.org> and Ladbroke Group Plc v. Sonoma Interntional LDC, WIPO Case No. D2002-0131 <ladbrokepoker.org> to assert that it is not possible to conceive any plausible actual or contemplated active use of the domain name by Respondent that would not be illegitimate, as a proof of bad faith use.

B. Respondent

Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To have the disputed domain names transferred to Complainant 1, it must prove each of the following (Policy, paragraph 4(a)):

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

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

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

A. Preliminary Procedural issue

The preliminary issue is whether Complainants are entitled to file a consolidated complaint against Respondent.

Complainants rely on Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc.v. Official Tickets Ltd, WIPO Case No. D2009-0331 <official-fulham-tickets.com> to assert that they are allowed to jointly file the Complaint.

The Panel finds that filing one Complaint in the name of both Complainants is allowed since both Complainants have a common legal interest in the trade mark rights on which the Complaint is based.

B. Identical or Confusingly Similar

Complainants have shown that they own rights in the word marks STATOIL and that the registrations of these trademarks predate the registration of the disputed domain name.

The disputed domain name consists of the combination of the trademark STATOIL and of the descriptive word “aviation”, which is included in Complainant’s 2 company name.

It has been consistently held that mere addition of descriptive or generic words to a registered trademark is insufficient to avoid confusing similarity (Sanofi-aventis v. BH Marketing, WIPO Case No. D2006-0440; Sanofi-aventis v. Elizabeth Riegel and Andrew Riegel, WIPO Case No. D2005-1045; Sanofi-Aventis v. Internet Marketing Inc. John Bragansa, WIPO Case No. D2005-0742; F. Hoffmann-La Roche AG v. Bobik Marley, WIPO Case No. D2007-0057).

The Panel thus finds that the disputed domain name is confusingly similar to the well-known STATOIL trademark.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy enumerates several ways in which a Respondent may demonstrate rights or legitimate interests in the disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for the purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

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

Respondent has not filed a Response, and there is nothing in the file suggesting that Respondent might have any rights or legitimate interests in the disputed domain name.

Respondent is using the STATOIL trademark to divert Internet users to a website offering the disputed domain name for sale and providing sponsored links to third-party websites.

Respondent’s use of the disputed domain name serve the purpose of generating revenue via advertised pay-per-click products and links (Lernco, Inc v. Ho Nim, WIPO Case No. D2010-1572). There is no personal use of the disputed domain names but only a use generated by a technical system.

The offer for sale of the disputed domain name further proves that Respondent’s intent is to make a commercial gain.

Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy enumerates four, non-exhaustive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the disputed 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the disputed 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

Respondent chose to add to the well-known trademark STATOIL the descriptive term “aviation” that is obviously connected with the Complainant’s 2 activity and he offered the disputed domain name for sale.

Therefore, the Panel believes that Respondent has registered the disputed domain name in bad faith, in the meaning of paragraph 4(b)(i).

The disputed domain name resolves to a website, even if it was only one page offering the disputed domain name for sale and providing sponsored links.

This use was obviously meant to divert Internet users by creating a likelihood of confusion with the STATOIL trademark and to achieve a commercial gain. Accordingly, the Panel finds that paragraph 4(a)(iv) of the Policy is satisfied.

For the above reasons, the Panel finds that paragraph 4(b) is satisfied in this case and that the registration and use of the disputed domain names has been made 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 <statoilaviation.net> be transferred to Statoil ASA (Complainant 1).

Marie-Emmanuelle Haas
Sole Panelist
Date: July 25, 2013