WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA v. Daniel MacIntyre, Ethical Island
Case No. D2014-0369
1. The Parties
The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Daniel MacIntyre, Ethical Island of San Mateo, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names <statoil.holdings> and <statoil.ventures> (the "Domain Names") are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 10, 2014. On March 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on March 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 3, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 4, 2014.
The Center appointed Nicholas Smith as the sole panelist in this matter on April 28, 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 is a Norwegian multinational oil and gas company headquartered in Stavanger, Norway. It has traded for over 40 years and has 21,000 employees. It maintains a website at "www.statoil.com".
The Complainant owns numerous registered trademarks that contain the name "Statoil" around the globe, including a Norwegian trade mark registration for the word mark STATOIL (the "STATOIL Mark") registered on February 25, 2000 and similar registrations in the European Community, Brazil, Egypt, South Africa and under the Madrid Protocol.
The Domain Names <statoil.holdings> and <statoil.ventures> were registered on February 9, 2014. They are currently inactive, with both of them resolving to a website maintained by the Registrar that is described as a "Go Daddy InstantPage" which appears to have been created by the Registrar and contains a photo and an inspirational quote only.
5. Parties' Contentions
The Complainant makes the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainant's STATOIL Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainant is the owner of the STATOIL Mark having registered the STATOIL Mark in numerous countries since 1974, the date of the first registration of the STATOIL Mark in Norway. The Domain Names are identical to the STATOIL Mark.
The Respondent has no rights or legitimate interests in the Domain Names. The Respondent is not affiliated with the Complainant in any way. The Complainant has not authorized the Respondent to use and register the STATOIL Mark or to seek the registration of any domain name incorporating the STATOIL Mark. The Domain Names currently hold no Internet content except for certain background images and famous quotes. The use of the Domain Names in this manner does not confer a right or legitimate interest on the Respondent.
The Domain Names were registered and are being used in bad faith. The STATOIL Mark is well known worldwide, and was so also at the time of registration. The Domain Names bear no relationship to the Respondent's name or its business. It is clear from previous UDRP decisions that registration in bad faith, 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, see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Statoil ASA v. Creative Domain Pty Ltd. / Christine K. Hoyer, WIPO Case No. DAU2013-0012. Here, the Domain Names have no other meaning except for being the name and trademark of the Complainant, and there is no way in which they could be used legitimately.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Names must be identical or confusingly similar to the Complainant's trade or service mark.
The Complainant is the owner of the STATOIL Mark, having registrations for the coined word "statoil" as a trade mark in various countries around the world.
The Domain Names consist of the STATOIL Mark and the top-level domains ".holdings" and ".ventures" respectively. If, as is ordinarily the case, the relevant comparison is made between the second level portion of the Domain Names and the Complainant's trade mark (see paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), i.e., if the top-level domains are not included in the comparison, the Domain Names are identical to the STATOIL Mark. If, however, they are included, the Domain Names, which are a combination of the STATOIL Mark and two descriptive terms (".holdings" and ".ventures"), this may suggest a further association with the Complainant which may be relevant under the second and third elements. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a 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 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 trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." (Policy, paragraph 4(c))".
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the STATOIL Mark. There is no evidence that the Respondent is commonly known by the Domain Names or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial use as the Respondent is not currently using the Domain Names.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Names in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names; or
(ii) the Respondent has registered the Domain Names in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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 location or of a product or service on the Respondent's website or location.
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the STATOIL Mark at the time the Domain Names were registered. The STATOIL Mark has been extensively promoted by the Complainant around the globe, making it a well-known mark (Statoil ASA v. Weiwei Qiu / PrivacyProtect.org, WIPO Case No. D2011-1752; Statoil ASA v. Domain Admin/ Management SO Hkg, WIPO Case No. D2012-2392; and Statoil ASA and Statoil Fuel & Retail Aviation AS v. NA - Claudio Russo, WIPO Case No. D2013-0963). It is thus highly likely that the Respondent was fully aware of the existence of the Complainant and its rights in the STATOIL Mark at the time it registered the Domain Names. Furthermore, the STATOIL Mark is a coined term with no descriptive or generic meaning and as such it is not apparent why anybody would choose to register the Domain Names unless seeking to create an association with the Complainant. Finally, the Respondent has provided no alternative explanation, either in this proceeding or in correspondence with the Complainant, for its registration of the Domain Names.
The registration of the Domain Names in awareness of the Complainant's STATOIL Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Domain Names currently resolve to holding sites, apparently operated by the Registrar. It is not clear if the Respondent took any actual step in setting up the holding sites and there is no evidence that the Domain Names have been used by the Respondent for any purpose. They are, in essence, being passively held by the Respondent. Telstra Corporation Limited v. Nuclear Marshmallows, supra, established that, in certain circumstances, the passive holding of a domain name could amount to use of the domain name in bad faith.
A panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. In this case the following circumstances exist:
(a) The Respondent was aware of the Complainant at the time it registered the Domain Names;
(b) The Domain Names reproduce a well-known mark in its entirety;
(c) The Respondent has registered two Domain Names that reproduce the STATOIL Mark, meaning that there may have been a deliberate strategy to register domain names that reproduce the STATOIL Mark in their entirety;
(d) The Respondent has failed to respond to this proceeding including providing any bona fide reason for registering the Domain Names.
On the basis of the circumstances outlined above, the Panel is prepared to conclude that the Respondent is using the Domain Names in bad faith.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Names in bad faith under paragraph 4(a)(iii) of the Policy.
For 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.holdings> and <statoil.ventures> be transferred to the Complainant.
Date: April 30, 2014