About Intellectual Property IP Training IP Outreach IP for… IP and... IP in... Patent & Technology Information Trademark Information Industrial Design Information Geographical Indication Information Plant Variety Information (UPOV) IP Laws, Treaties & Judgements IP Resources IP Reports Patent Protection Trademark Protection Industrial Design Protection Geographical Indication Protection Plant Variety Protection (UPOV) IP Dispute Resolution IP Office Business Solutions Paying for IP Services Negotiation & Decision-Making Development Cooperation Innovation Support Public-Private Partnerships The Organization Working with WIPO Accountability Patents Trademarks Industrial Designs Geographical Indications Copyright Trade Secrets WIPO Academy Workshops & Seminars World IP Day WIPO Magazine Raising Awareness Case Studies & Success Stories IP News WIPO Awards Business Universities Indigenous Peoples Judiciaries Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions Economics Gender Equality Global Health Climate Change Competition Policy Sustainable Development Goals Enforcement Frontier Technologies Mobile Applications Sports Tourism PATENTSCOPE Patent Analytics International Patent Classification ARDI – Research for Innovation ASPI – Specialized Patent Information Global Brand Database Madrid Monitor Article 6ter Express Database Nice Classification Vienna Classification Global Design Database International Designs Bulletin Hague Express Database Locarno Classification Lisbon Express Database Global Brand Database for GIs PLUTO Plant Variety Database GENIE Database WIPO-Administered Treaties WIPO Lex - IP Laws, Treaties & Judgments WIPO Standards IP Statistics WIPO Pearl (Terminology) WIPO Publications Country IP Profiles WIPO Knowledge Center WIPO Technology Trends Global Innovation Index World Intellectual Property Report PCT – The International Patent System ePCT Budapest – The International Microorganism Deposit System Madrid – The International Trademark System eMadrid Article 6ter (armorial bearings, flags, state emblems) Hague – The International Design System eHague Lisbon – The International System of Appellations of Origin and Geographical Indications eLisbon UPOV PRISMA Mediation Arbitration Expert Determination Domain Name Disputes Centralized Access to Search and Examination (CASE) Digital Access Service (DAS) WIPO Pay Current Account at WIPO WIPO Assemblies Standing Committees Calendar of Meetings WIPO Official Documents Development Agenda Technical Assistance IP Training Institutions COVID-19 Support National IP Strategies Policy & Legislative Advice Cooperation Hub Technology and Innovation Support Centers (TISC) Technology Transfer Inventor Assistance Program WIPO GREEN WIPO's Pat-INFORMED Accessible Books Consortium WIPO for Creators WIPO ALERT Member States Observers Director General Activities by Unit External Offices Job Vacancies Procurement Results & Budget Financial Reporting Oversight

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Statoil ASA v. Bellnames Privacy Protection Whois Agent/WhoIs Agent, YourJungle Privacy Protection Service/Best Domains Limitada

Case No. D2014-0560

1. The Parties

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

The Respondent is Bellnames Privacy Protection Whois Agent/WhoIs Agent, YourJungle Privacy Protection Service/Best Domains Limitada of Alajuela, Costa Rica.

2. The Domain Name and Registrar

The disputed domain name <statoil-no.com> is registered with EmpireStateDomains Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 7, 2014. On April 7, 2014, the Center transmitted by email to EmpireStateDomains Inc. a request for registrar verification in connection with the disputed domain name. On May 11, 2014, EmpireStateDomains Inc. 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 May 11, 2014 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 May 16, 2014. 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 April 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 8, 2014.

The Center appointed Keiji Kondo as the sole panelist in this matter on May 19, 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 company and operates worldwide. STATOIL has been in business for over 40 years; currently STATOIL is a well-known trademark. The Complainant has registered STATOIL trademarks in many countries before the Respondent's registration of the disputed domain name.

5. Parties' Contentions

A. Complainant

(1) Identical of confusingly similar

The Complainant 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 among the world's leading providers of energy products and services. STATOIL is a well-known trademark.

The disputed domain name is "statoil-no.com". The additional element "-no" in the disputed domain name, does not take away the confusing similarity of the disputed domain name with Complainant's trademark. The "-no" part is similar to the official country code for Norway, which is also the country of foundation and headquarters of Complainant. The additional element "-no" in the disputed domain name is, hence, no more than a descriptive component, which can falsely mislead email recipients or internet users into believing that emails or information provided online originates from Complainant's offices in Norway.

(2) No rights or legitimate interests

The Respondent is not affiliated or related to the Complaint in any way, or licensed or otherwise authorized to use the STATOIL mark in connection with a website or for any other purpose.

The 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 that name or mark.

The disputed domain name is listed for sale through domain broker DomainNameSales.com.

The corresponding website "www.statoil-no.com" currently resolves to a parking page containing pay-per-click advertising, and which functions as an advertisement for the disputed domain name's listing for sale –"Statoil-NO.com may be available for PURCHASE or LEASE Click Here For More Info! or CALL US: 1-800-818-1828".

The links on "www.statoil-no.com" seeks to attract visitors to click on sponsored links related to car rental. The configuration of the website for car rental links is a clear attempt to free-ride on the former and now licensed business of the Complainant, namely the provision of car rental services in connection with petrol stations. These services are very well-known at least in Scandinavia as provided under the STATOIL mark.

The Complainant was also contacted by the Respondent by e-mail (or as it seems, by the broker used by Respondent) on March 21, 2014, in an attempt by the Respondent to sell the disputed domain name to the Complainant.

(3) Bad faith registration and used of the disputed domain names

The Respondent has registered and used the disputed domain name in bad faith. The mark STATOIL is well known worldwide, and was so at the time of registration of the disputed domain name. The disputed domain name bears no relationship to the Respondent's name or its business.

The choice to hide the registration details by registering the disputed domain name with a privacy service, and the offer to sell the disputed domain name to the Complainant is further evidence of bad faith. The fact that a domain broker has been engaged creates a strong presumption of the Respondent's intention of selling the disputed domain name to the Complainant or to a third party for an amount exceeding the out-of-pocket costs for registering the disputed domain name.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has registered STATOIL trademarks in many countries before the Respondent's registration of the disputed domain name. Currently, STATOIL is well-known trademark.

The disputed domain name <statoil-no.com> is consist of the elements "statoil" "-no" and ".com". Among these words, the gTLD ".com" is meaningless and the term "statoil" is identical with the Complainant's trademark. Furthermore, the element "-no" is similar to the official country code for Norway, which is also the country of foundation and headquarters of the Complainant. Consequently, the "-no" part does not reduce similarity but enhances the confusingly similarity.

Therefore, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark.

B. Rights or Legitimate Interests

No license or authorization of any kind has been given by the Complainant to the Respondent, to use the trademark STATOIL.

The 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, nor has it acquired any trademark or service mark rights in that name or mark.

The disputed domain name is listed for sale through the domain broker DomainNameSales.com.

The links on the website "www.statoil-no.com" seek to attract visitors to click on sponsored links related to car rental. The configuration of the website for car rental links is a clear attempt to free-ride on the former and now licensed business of the Complainant, namely the provision of car rental services in connection with petrol stations. These services are very well-known at least in Scandinavia as provided under the STATOIL mark.

Therefore, the Panel concludes that the Respondent has no rights or legitimate interests with the disputed domain name.

C. Registered and Used in Bad Faith

The mark STATOIL is well known worldwide, and was so at the time of registration of the disputed domain name.

The disputed domain name bears no relationship to the Respondent's name or its business.

The Respondent has offered to sell the disputed domain name to the Complainant.

The fact that a domain broker has been engaged creates a strong presumption of the Respondent's intention of selling the disputed domain name to the Complainant or to a third party for an amount exceeding the out-of-pocket costs for registering the domain name.

Therefore, the Panel concludes that the disputed domain name was registered and used in bad faith.

7. Decision

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 <statoil-no.com> be transferred to the Complainant.

Keiji Kondo
Sole Panelist
Date: June 6, 2014

https://www3.wipo.int/contact/en/area.jsp?area=arbitration https://www.wipo.int/pressroom/en/ https://www.wipo.int/tools/en/disclaim.html https://www.wipo.int/en/web/privacy-policy/ https://www.wipo.int/en/web/accessibility/ https://www.wipo.int/tools/en/sitemap.html https://www3.wipo.int/newsletters/en/ https://www.wipo.int/podcasts/en/ https://www.wipo.int/news/en/