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WIPO Arbitration and Mediation Center


Statoil ASA v. VistaPrint Technologies Ltd

Case No. D2014-0511

1. The Parties

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

The Respondent is VistaPrint Technologies Ltd, Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <statoil-uk.com> is registered with Tucows Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 31, 2014. On April 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 1, 2014, 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 and contact information for the disputed domain name.

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 April 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 30, 2014.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on May 7, 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, Statoil ASA, has proved that the trademark STATOIL enjoys thorough protection through several hundred registrations worldwide, the first one, now ceased, was approved in 1974 (Norwegian Trademark Reg. No 90221).

The disputed domain name <statoil-uk.com> was registered on February 8, 2014. The website at the disputed domain name at present displays a Vistaprint logo, some messages promoting Vistaprint and a link to Vistaprint's local websites.

The Complainant's trademark registrations long predate the registration of the disputed domain name.

5. Parties' Contentions

A. Complainant

The Complainant claims that the disputed domain name is confusingly similar to the Complainant's STATOIL registered trademark; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith.

In addition, the Complainant affirms that the disputed domain name registration details are fake and that the name and references to VistaPrint are used only for the sake of creating confusion and/or as a basis for fraudulent activities. This fact, according to the Complainant, is supported by several comments made in various forums and context online, where the company name VistaPrint Technologies Ltd. has apparently been used in connection with dubious activities connected to domain name registrations.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to obtain a transfer of the disputed domain name, the Policy paragraphs 4(a)(i) – (iii) require that the Complainant must demonstrate to the Panel that:

(i) The disputed 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 the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established to have rights to the STATOIL trademark. The disputed domain name, which combines the Complainant's STATOIL trademark with the suffix "uk", appears confusingly similar to the registered trademarks of the Complainant.

This Panel agrees with the Complainant's opinion that the addition of the element "- uk" in the domain name, is not sufficient to avoid the confusing similarity of the domain name with the Complainant's trademark, but, on the contrary, it may add to the confusion since the Complainant conducts business in the United Kingdom.

Therefore, the Panel finds the disputed domain name to be confusingly similar to the trademark STATOIL in which the Complainant has rights.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made out a prima facie case. The Respondent has no connection or affiliation with the Complainant that has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant's trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services for the reasons described in section 6.C below. In addition, the Respondent does not appear to be commonly known by the name "Statoil-UK" or by a similar name. Finally, the Respondent has not replied to the Complainant's contentions, alleging any rights or legitimate interests in the disputed domain name.

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

C. Registered and Used in Bad Faith

The Panel is of the opinion that the Respondent registered the disputed domain name aware of the Complainant's trademark registrations and rights to the STATOIL mark.

In fact, considering that the Complainant's trademark has been registered and used for decades and thus long predates the disputed domain name's registration, and in the absence of contrary evidence, the Panel finds that the Respondent knew of the Complainant's services and trademarks and intentionally intended to create an association with the Complainant and its business; that the Respondent must have had actual knowledge of the Complainant's trademarks at the time of the registration of the disputed domain name; and that the above described use of the disputed domain name, i.e., to divert Internet traffic to the Respondent's website, falls clearly within the example of bad faith set out in 4(b)(iv) of the Policy: "by using the 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."

Inference of bad faith registration and use of the disputed domain name is also given by the fact that the Respondent never replied to the Complainant's cease and desist letter. Indeed, due to the fact that the Respondent has not responded to, let alone denied, the assertions of bad faith made by the Complainant in the pre-action communications and in this proceeding, it is reasonable to assume that if the Respondent did have legitimate purposes in registering and using the disputed domain name it would have responded.

In Nintendo of America, Inc. v. Garrett N. Holland et al, WIPO Case No. D2000-1483, the panel found that: "… despite Complainant's efforts to persuade Respondent to cease its unauthorized use of the Character Name Marks, Respondent has continued to violate Complainant's trademark rights."; and in RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242, the panel found (concerning respondent's bad faith) that "A second factor is Respondent's refusal to voluntarily transfer the contested Domain Names. The Complainant alleges that it sent numerous cease and desist letters to Respondent without receiving a response".

Finally, noting the assertions and documents provided by the Complainant regarding the Respondent's true identity, this Panel considers that indeed there are enough inferences to at least suspect that the Respondent's real name may be different from the one indicated in the WhoIs database, i.e. VistaPrint Technologies Ltd.

Accordingly, the Panel finds on the basis of the evidence presented, that the Respondent has registered and is using the disputed domain name in bad faith.

Therefore, the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

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 <statoil-uk.com> be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist
Date: May 13, 2014