WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA ("Statoil") v. Tomas Sundstrom
Case No. D2014-0698
1. The Parties
The Complainant is Statoil ASA ("Statoil") of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Tomas Sundstrom of Pitea, Sweden.
2. The Domain Name and Registrar
The disputed domain name <statoil.today> is registered with Ascio Technologies Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 29, 2014. On April 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 8, 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 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2014. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on May 30, 2014.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on June 6, 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, is a Norwegian corporation established under Norwegian law. It is an international energy company headquartered in Norway with 21,000 employees and extensive operations worldwide. Statoil has been in business for over 40 years and is one of the world's leading providers of energy products solaces.
The trademark STATOIL is protected through several hundred registrations made worldwide. The first dates back to 1974 (Norwegian Trademark Registration No. 90221). A schedule containing examples of the trademark registration STATOIL applied and registered in the name of the Complainant before the date of the Respondent's registration of the disputed domain name is annexed at Annex 2 to the Complaint. At Annex 3 to the Complaint are set out examples of such registrations i.e. International Trademark registration (Registration No. 730092) for STATOIL and European Community Trademark (Registration No. 003657871) for STATOIL.
The Complainant submits that STATOIL is a highly well-known trademark which has been confirmed by previous UDRP panel decisions. In particular, it relies upon Statoil ASA v. Weiwei Qiu / PrivacyProtect.org, WIPO Case No. D2011-1752 which related to <statoilpetroleum.com>, Statoil ASA v. Domain Admin/Management SO Hkg, WIPO Case No. D2012-2392 which related to <statoilcareers.com> and Statoil ASA and Statoil Fuel & Retail Aviation AS v. NA – Claudio Russo, WIPO Case No. D2013-0963 which related to <statoilaviation.net>.
In the absence of a Response, the Panel finds that the Complainant has trademark rights in the mark STATOIL and follows the three earlier UDRP panel decisions referred to above.
5. Parties' Contentions
The Complainant submits:
5.1 The disputed domain name is identical to the Complainant's business name and trademark STATOIL.
5.2 The Respondent has no rights or legitimate interest in the disputed domain name. In particular it relies upon the lack of evidence that the Respondent is not affiliated or related to the Complainant in any way.
5.3 The disputed domain name in dispute was registered and is being used in bad faith because the disputed domain name has no other meaning except for being the name and trademark of the Complainant there is no way in which it could be used legitimately.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel has found for the reasons set out above that the Complainant has trademark rights in the mark STATOIL which predate the date of registration of the disputed domain name.
The disputed domain name <statoil.today> consists of the word "statoil" together with the word "today". In the Panel's view, the predominant part of the disputed domain name is the word "statoil". The word "today" is purely descriptive. The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel has found that there is no evidence before it which demonstrates that the Respondent has any rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated or related to the Complainant in any way or licensed or otherwise authorized to use the mark STATOIL in connection with a website or for any other purpose. Moreover, there is no evidence that the Respondent is generally known by the disputed domain name and has not acquired any trademark or service mark rights in the name or mark STATOIL.
To the contrary, the disputed domain name resolves to a default parking page provided by One.com which is an affiliated company to the Respondent's Registrar, Ascio. Evidence of this is set out at Annex 4 to the Complaint.
In support of this contention, the Complainant relies upon two earlier UDRP panel decisions Statoil ASA v. David Campbel, WIPO Case No. D2013-1130 relating to the domain name <statoilgroup.com> and Statoil ASA v. IVAN RASHKOV, WIPO Case No. D2013-1583 relating to the domain name <statoil.pro>. The Complainant submits that in both cases the circumstances and evidence before the panel were identical to the position in this case. In particular, in Statoil ASA v. David Campbel, supra the panel stated that: "since the Respondent has no permission from the Complainant, the Panel finds that based on the available evidence, the Respondent's use of the disputed domain name is without rights or legitimate interest".
In the absence of a Response and supported in its view by the two earlier decisions cited above, the Panel finds that the Respondent has no rights or legitimate interest in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant submits that the Respondent has registered and used the disputed domain name in bad faith. It points out that mark STATOIL is well-known worldwide and was also well-known at the date of registration. The disputed domain name bears no relation to the Respondent's name nor its business. It submits, based upon earlier decisions, that registration of a domain name 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. The Complainant relies upon two earlier decisions: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 <telstra.org> and Statoil ASA v. Creative Domain Pty Ltd. / Christine K. Hoyer, WIPO Case No. DAU2013-0012 in respect of the domain name <statoil.com.au>.
Case Telstra Corporation Limited v. Nuclear Marshmallows, supra is often used as authority for this proposition. The Complainant has also cited the decision Statoil ASA v. Creative Domain Pty Ltd. / Christine K. Hoyer, supra as authority for the panel's finding in that case that registration in bad faith followed by passive holding of a domain name when there is no way in which it could be used legitimately can also amount to bad faith. This Panel follows those decisions.
In the absence of a Response and any evidence showing why the disputed domain name could be used legitimately, the Panel finds that the disputed domain name was registered and is being used in bad faith. The Panel is also supported in this finding by the contents of Annex 4 to the Complaint which is referred to above.
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.today> be transferred to the Complainant.
Clive Duncan Thorne
Date: June 11, 2014