WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA v. Scandinavian Health System AS
Case No. D2014-0631
1. The Parties
The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Scandinavian Health System AS of Norway, represented by Sukhvinder Singh Jhotti.
2. The Domain Name and Registrar
The disputed domain name <statoil.company> 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 April 15, 2014. On April 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 5, 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.
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 May 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2014. On June 1, 2014, the Center received an informal communication from the Respondent's representative.
The Center appointed Knud Wallberg as the sole panelist in this matter on June 24, 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 Statoil ASA. Statoil is an international energy company with 21,000 employees and it has been in business for 40 years and is well-known for its oil products and services.
The Complainant is the owner of the trademark STATOIL, which has been registered by the Complainant as trademarks in numerous countries all over the world, before the Respondent's registration of the disputed domain name.
The Complainant is also the owner of a large portfolio of domain names including the domain name <statoil.com>.
The disputed domain name was registered on March 19, 2014.
5. Parties' Contentions
In Complainant's submission, the disputed domain name is identical to a trademark or service mark in which Complainant has rights, since it is composed of the words "statoil" and the generic Top-Level Domain ("gTLD"), "company".
Complainant has never authorized the Respondent to use their STATOIL mark in any domain name. Complainant further contends that Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent is not making a legitimate noncommercial or fair use of the disputed domain name since it is used in connection with a parking site hosted by the Registrar, Godaddy.
Complainant finally contends that the disputed domain name was registered and is being used in bad faith. The Respondent must have been aware of the STATOIL trademark when he registered the disputed domain name. The disputed domain name is used for a standardized parking site that appears to contain links that may generate revenues.
The Respondent did not file a formal Response. In an e-mail to the Center dated June 1, 2014 the Respondent said:
I have received your notice and I have already had communication with the representative of
the Complanant and a copy is found herein.
The background for registering this domain name was quite simple. My daughter is a member of "Natur og Ungdom" (a well known Norwegian youth organisation working for conserving the environment). She had been working on a project to reveal Statoils involvment in the Canadian tar sand oil exploration. She asked me to find a way to reach out with the information she and others had collected about this. I then suggested that the information might reach the audience better if the URL made it easier to locate the information. I registered the domain knowing that Statoil had not registered it within the Sunrise period and also acknowledging the warning about copyright. I could not see that my daughters right to publicize concern about negative environmental impact of Statoil company's business disallowed me to register the domain.
Soon after however, she decided not to go with this project plan and I thereby decided that the domain name was of little use to me anymore. I therefore responded positively as can be seen below"
The correspondence referred to was an email from the Respondent to the Complainant's representative dated May 19, 2014 in which the following was stated:
Please find enclosed the Authorization Info as agreed earlier. The domain name has been blocked for moving by the Registrar until now, so that is why it took me so long to come back to you.
I am asking your client to pay NOK 25000,- for our cost of registration, acquisition, legal fees and my time in handling this case.
With best regards, "
The Panel finds that the above e-mails are relevant for the case at hand and shall be taken into account when deciding the case.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered or is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.
A. Identical or Confusingly Similar
The disputed domain contains the Complainant's distinctive and reputed STATOIL mark with the addition he ".company" designation. Since the gTLD designation may be disregarded for the purpose of this proceeding, the Panel finds that the disputed domain name is identical confusingly similar to a mark in which the Complainant has rights.
The Panel therefore finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled.
B. Rights or Legitimate Interests
According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark. The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent claims that he registered the disputed domain name on behalf of his daughter to be used by her for a "project to reveal Statoils involvment in the Canadian tar sand oil exploration", but that it soon after was "decided not to go with this project". On this background, the Panel finds that it is clear that the Respondent, at the time of the filing of this Complaint, had no rights or legitimate interests in the disputed domain name, and that the Panel need not consider whether such rights or legitimate interests may have existed prior to this point in time.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii), and paragraph 4(c) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides a list of non-exhaustive examples of circumstances which shall be evidence of registration or use in bad faith:
(i) circumstances indicating that the domain name holder has registered or has acquired the 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 the holder's documented out-of-pocket costs directly related to the domain name; or
(ii) the domain name holder has registered the 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 the domain name holder has engaged in a pattern of such conduct; or
(ii) the domain name holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv by using the domain name, the domain name holder has intentionally attempted to attract, for commercial gain, Internet users to the domain name holder's 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 holder's website or location or of a product or service on the domain name holder's website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
In the above under paragraph 5.B quoted e-mails from the Respondent, he admits that the disputed domain name was registered exactly because it contained the Complainant's STATOIL mark, and it further follows that he offered to sell the disputed domain name to the Complainant for NOK 25,000, which is a sum that by far exceeds the out-of- pocket costs related to the registration of the disputed domain name. In the Panels view, this attempt to sell the disputed domain name for such a figure undercuts any positive inference as to the Respondent's in tentations in registering and using the disputed domain name. The current use of the disputed domain name for a standard parking site does not contradict this finding.
The Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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.company> be transferred to the Complainant.
Date: July 2, 2014