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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Statoil ASA v. Domains By Proxy, LLC / John Brendon

Case No. D2013-1074

1. The Parties

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

The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States / John Brendon of New York, New York, United States.

2. The Domain Name and Registrar

The disputed domain name <statoil-norway.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2013. On June 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 13, 2013, 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 June 24, 2013, 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 June 24, 2013.

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 amended Complaint, and the proceedings commenced on June 26, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2013.

The Center appointed Steven A. Maier as the sole panelist in this matter on July 29, 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

The Complainant is an international energy company headquartered in Stavanger, Norway.

The Complainant is the owner of registrations for the trademark STATOIL in numerous jurisdictions throughout the world.

The Domain Name was registered on April 2, 2013.

At the date of the Center’s formal compliance check and the Notification of the Complaint on June 26, 2013, the Domain Name resolved to a website at “www.statoil.com”, which is a website operated by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant states that it is an international energy company which has been in business for over 40 years and has over 21,000 employees worldwide.

The Complainant submits that it is the owner of hundreds of trademark registrations worldwide for the mark STATOIL, the first such mark having been registered in Norway 1974. The Complainant submits evidence of numerous current registrations for the mark STATOIL including, for example, Community Trade Mark number 3657871 for STATOIL registered on May 18, 2005 for goods and services in International Classes 1, 4, 17, 35, 37, 39, 40 and 42.

The Complainant contends that its trademark STATOIL has been recognized by previous UDRP panels as having the status of a reputable and well-known trademark.

The Complainant submits that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i) of the Policy).

The Complainant states that the Domain Name differs from its trademark STATOIL only be the addition of the term “norway” which is a geographical identifier. The Complainant submits that the addition of a descriptive term of this nature cannot have the effect of preventing confusing similarity, particularly in a case such as this, where the descriptive term is connected with the Complainant’s own operations.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii) of the Policy).

The Complainant states that the Respondent is not connected with the Complainant and that the Complainant has not licensed or authorized the Respondent to make use of its STATOIL trademark in connection with a website or for any other purpose. The Complainant submits that the Respondent has not been generally known by the Domain Name and has not used the Domain Name in connection with any bona fide offering of goods or services.

The Complainant submits that the Respondent has configured the Domain Name to resolve to the Complainant’s own website at “www.statoil.com”. However, the Complainant submits that this fact does not give rise to any rights or legitimate interests on the part of the Respondent, as has been established in other UDRP cases, e.g. C. Crane Company Inc. v. Robbie Crossley, WIPO Case No. D2009-0815, in which the Panel also commented that it was not in the Respondent’s discretion to decide that such use of the Complainant’s trademark might be of benefit to the Complainant. The Complainant suggests that the most obvious reason for the Respondent redirecting the Domain Name in this manner was to attract the attention of the Complainant in the hope of obtaining an offer to purchase the Domain Name.

The Complainant also submits that the Respondent has configured email addresses for the Domain Name, which can have the effect of causing confusion, or could potentially be used for spamming, “phishing” or other similar activities.

The Complainant submits that the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).

The Complainant submits that the Respondent has no connection with the name and trademark STATOIL, which had at all material times no meaning other than to refer to the Complainant. Accordingly, it is inevitable that the Domain Name was registered and is being used in bad faith. The fact of redirection to the Complainant’s own website does not diminish the Respondent’s bad faith as this matter remains within the Respondent’s control and could be altered at any time. Furthermore, this factor clearly illustrates that the Respondent was well aware of the Complainant and its trademark.

The Complainant requests a transfer of the Domain Name.

B. Respondent

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

6. Discussion and Findings

In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

Even in a case such as this where the Respondent has failed to file a Response, the Complainant must still establish all three of the above matters.

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of numerous registrations throughout the world for the trademark STATOIL. Ignoring the gTLD “.com”, the Domain Name consists of the term “statoil” together with the addition of “-norway”. The Panel accepts the Complainant’s submission that the addition of this descriptive geographical term does not serve to distinguish the Domain Name from the Complainant’s trademark and that, in view of the fact that the Complainant is headquartered in Norway, it can only add to the likelihood of confusion.

Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has submitted that the Respondent has no rights or legitimate interests in respect of the Domain Name and that, in particular, the Respondent is unable to establish any of the criteria set out under paragraph 4(c) of the Policy that may demonstrate such rights or legitimate interests.

While it was open to the Respondent to reply to the Complainant’s contentions it has chosen not to do so and has not, therefore, put forward any evidence of rights or legitimate interests in the Domain Name. Nor is there any other evidence available to the Panel that the Respondent has any such rights or legitimate interests. In particular, the Panel agrees with the Complainant’s contention that the Respondent’s decision to direct the Domain Name to the Complainant’s own website does not give rise to any such rights or legitimate interests on the part of the Respondent.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

The Panel accepts the Complainant’s submission, which has not been disputed by the Respondent, that the term “statoil” has no meaning other than to refer to the Complainant. The Panel also infers from the Respondent’s addition of the term “-norway” and its use of the Domain Name to resolve to the Complainant’s own website that the Respondent was well aware of the Complainant and its business at the date of registration of the Domain Name. The Respondent has chosen to give no explanation for its choice of the Domain Name and the Panel is unable, on the evidence available to it, to conceive of any legitimate basis for the Respondent’s registration or use of the Domain Name.

Accordingly, the Panel finds that the Domain Name has been 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 Domain Name <statoil-norway.com> be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: August 5, 2013

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