WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA v. VistaPrint Technologies Ltd
Case No. D2014-1949
1. The Parties
The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is VistaPrint Technologies Ltd of 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.name> is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 4, 2014. On November 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. 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 November 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 10, 2014.
The Center appointed Alfred Meijboom as the sole panelist in this matter on December 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 an international provider of energy products and services with legal domicile in Stavanger, Norway.
The Complainant has provided evidence that it is the registered owner of numerous trademarks STATOIL worldwide, including the following word marks STATOIL:
- International trademark registration no. 730092 of March 7, 2000 with designated countries Belarus, China, Estonia, Lithuania, Latvia and Poland; and
- Community trademark registration no. 003657871 of May 18, 2005.
(hereinafter the "Trademark")
The Respondent registered the disputed domain name on September 4, 2014.
5. Parties' Contentions
The Complainant asserts that it has been in business for over 40 years and is meanwhile one of the leading providers of energy products and services with 21,000 employees and extensive operations worldwide. The Complainant further claims that the Trademark is well known in its field of business.
The Complainant asserts that the disputed domain name is identical or highly similar to the Trademark, as it consists of the Trademark and the generic Top Level Domain ("gTLD") ".name", which gTLD has no legal significance.
According to the Complainant, the Respondent is portrayed as a subsidiary of the Dutch company "Vistaprint", which is an online provider of printed and promotional materials. This is strengthened by the Respondent's website under the disputed domain name, which merely shows Vistaprint's logo, and some messages promoting Vistaprint and links to Vistaprint's local websites. The Respondent has been cited in different decisions under the UDRP in connection to dubious activities relating to domain name registrations.
The Complainant further asserts that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons. The Respondent was not licensed or otherwise authorized to use the Trademark as part of the disputed domain name, and has no registered trademark or trade name corresponding to the disputed domain name. Further, the Respondent could not have been ignorant of the Trademark when it registered the disputed domain name. The Complainant assumes that the Respondent's intention of registering the disputed domain name has been either to sell it to the Complainant or to use it otherwise for financial gain, for example by making fraudulent offers to email recipients or Internet users.
Finally, the Complainant claims that the Respondent intentionally registered and is using the disputed domain name in bad faith since (1) the Respondent must have been aware of the well known Trademark and could not have chosen or subsequently used the word "statoil" in the disputed domain name for any other reason than to tradeoff the goodwill and reputation of the Trademark or otherwise create a false association, sponsorship or endorsement with or of Complainant, (2) as shown by previous UDRP cases, the Respondent is known of its scam activities and owns over 400,000 domain names, (3) the Respondent bears no relationship to the famous Trademark, (4) the disputed domain name has no other meaning except for referring to the Complainant's name and Trademark and there is no way in which the disputed domain name could be used legitimately. And the Complainant has previously filed a case against the Respondent, Statoil ASA v. VistaPrint Technologies Ltd, WIPO Case No. D2014-0511, in which the panel found that the respondent had registered and was using the domain name <statoil-uk.com> in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Respondent did not reply to the Complainant's contentions. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ("WIPO Overview 2.0"), the consensus view of UDRP panelists is that the respondent's default does not automatically result in a decision in favor of the complainant. The complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from a respondent's default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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
It is well established that gTLDs may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy (e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), and, in the present case at least, this is not different for the gTLD ".name".
The Panel finds the disputed domain name to be identical to the Trademark, so that the first element of paragraph 4(a) of the Policy is met.
B. Rights or Legitimate Interests
The Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Complainant has shown that it has not authorized the Respondent to use the Trademark, and that the Respondent is not commonly known by the disputed domain name. Further, the Panel agrees with previous UDRP decisions (e.g., Statoil ASA v. Weiwei Qiu / PrivacyProtect.org, WIPO Case No. D2011-1752, and Statoil ASA. v. Allan, WIPO Case No. D2013-2123) that the Trademark should be considered well known. In absence of another explanation, the Panel finds that the Respondent must have had the well-known Trademark in mind when it registered the disputed domain name. This is further evidenced by a recent UDRP case between the Complainant and the Respondent, concerning the Respondent's registration of a domain name comprising the Trademark and the addition of the element "uk", decided on May 13, 2014 ( WIPO Case No. D2104-0511, Statoil ASA v. VistaPrint Technologies Ltd), which is less than four months before the Respondent registered the disputed domain name.
The Panel is therefore satisfied that the Complainant has made a prima facie case, which the Respondent has not rebutted. As a result, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the second element of paragraph 4(a) of the Policy is also met.
C. Registered and Used in Bad Faith
The Panel is of the opinion that this is a clear case of cybersquatting. The Trademark is well known and, as explained in section 6.B. above, the Respondent must have been aware of the Trademark when it registered the disputed domain name.
Further, the Respondent has recently been involved in a number of other cases under the Policy, showing a pattern of conduct of preventing a trademark holder from reflecting the mark in a corresponding domain name as meant in paragraph 4(b)(ii) Policy, as the Respondent has previously registered the domain names <tvsmotor-id.co> and <tvsmotor-in.co>,1 <statoil-uk.com>2, <sanofii.com>, <sanofipaasteur.com> and <sanofiusservicesinc.com>3, <tetraspak.com>4 and <ropenind.com>5. In none of these cases the Respondent filed a response.
Consequently, the Panel is also satisfied that third and last element of paragraph 4(a) of the Policy is met.
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.name> be transferred to the Complainant.
Date: December 31, 2014