WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA v. VistaPrint Technologies Ltd
Case No. D2015-1611
1. The Parties
Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
Respondent is VistaPrint Technologies Ltd of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names <sattoil.com> and <statoiil.com> are registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 9, 2015. On September 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On September 9, 2015, Respondent sent an email communication to Complainant and the Center indicating its willingness to transfer the disputed domain names to Complainant. On September 10, 2015, Complainant indicated its preference to continue with the proceeding.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceeding commenced on September 29, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2015. On October 20, 2015, the Center informed the parties that it would proceed with panel appointment shortly.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on October 23, 2015. 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
Complainant Statoil ASA is an international energy company with 21,000 employees and extensive operations worldwide. Complainant has been in business for over 40 years and is one of the leading providers globally of energy products and services. Complainant owns hundreds of registrations around the world for the STATOIL trademark.
The disputed domain names, <sattoil.com> and <statoiil.com>, were registered on June 2, 2015, and April 26, 2015, respectively. The disputed domain names resolve to websites that include Respondent's logo and the message "Websites are FREE at vistaprint.com/websites. Create Your Website in Minutes."
5. Parties' Contentions
Complainant contends that the disputed domain names are highly similar to Complainant's trademark rights in STATOIL. According to Complainant, the disputed domain names contain common or obvious misspellings of its STATOIL mark and are to be regarded as so-called "typosquatting" domain names. Complainant notes that, with respect to the disputed domain name <sattoil.com>, the only difference between the disputed domain name and the STATOIL mark is that the letters "a" and "t" next to each other are reversed and that, with respect to the disputed domain name <statoiil.com>, only an additional letter "i" has been added.
Complainant further argues that Respondent has no rights or legitimate interests in respect of the disputed domain names. Complainant asserts that Respondent is not affiliated or related to Complainant or licensed or otherwise authorized to use the STATOIL mark in connection with a website or for any other purpose. Complainant maintains that Respondent is not using the disputed domain names in issue in connection with any bona fide offering of goods or services, is not generally known by the disputed domain names, and has not acquired any trademark or service marks in the STATOIL name or mark.
With respect to the issue of "bad faith" registration and use, Complainant indicates that since the disputed domain names resolve to websites that contain no more than Respondent's logo and a commercial message, "it seems most plausible that Respondent's intention for registering the domain name has been to attract internet users to its website and to benefit financially from the increased traffic. It is generally recognized by UDRP panels that parking and landing pages (to which said pages can be compared) does not of itself confer rights or legitimate interests arising from a bona fide offering of goods or services."
Complainant notes that a passive holding of a domain name, where there is no way in which it could be used legitimately, can amount to use in bad faith. "Here, the disputed domain name has no other meaning except for the reference to the name and trademark of Complainant, and there is no way in which it could be used legitimately."
In further support of its "bad faith" argument, Complainant points out that it sent a "cease and desist" letter to Respondent on August 25, 2015, demanding that all use of the disputed domain names cease by September 8, 2015. Respondent did not respond to such letter and did not cease use. Complainant also observes that Respondent has been the subject of a large number of UDRP complaints that have resulted in the transfer or cancellation of the subject domain names. "Such repeated conduct is compelling evidence of bad faith," Complainant declares.
Respondent did not file a formal Response to the Complaint. However, on September 9, 2015, Respondent sent an email to Complainant's counsel indicating Respondent's willingness to cooperate in the transfer of the disputed domain names.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that each of the disputed domain names is confusingly similar to the STATOIL mark. As noted by Complainant, each of the disputed domain names contains obvious misspellings of the STATOIL mark. As such, Complainant's STATOIL trademark would be recognizable within each of the disputed domain names.
The Panel further finds that Complainant, through its ownership of numerous registrations for, and long use of, the STATOIL mark, has rights in such mark.
B. Rights or Legitimate Interests
The Panel determines that Complainant has sustained its burden of establishing that Respondent has no rights or legitimate interests in either of the disputed domain names. The disputed domain names merely resolve to websites that contain Respondent's logo and a commercial message. The evidence provides no support for a finding that Respondent is using the confusingly similar disputed domain names in connection with any bona fide offering of goods or services, is commonly known by the disputed domain names, or is making a legitimate noncommercial or fair use of the disputed domain names, within the meaning of the Policy.
C. Registered and Used in Bad Faith
The Panel concludes that each of the disputed domain names was registered and is being used in bad faith. Each of the disputed domain names resolves to a website that invites Internet users to utilize Respondent's services by accessing Respondent's "vistaprint.com/websites" site. As determined above, each of the disputed domain names is confusingly similar to Complainant's STATOIL trademark. The Panel, therefore, determines that Respondent, through its use of the disputed domain names, has intentionally attempted to attract, for commercial gain, Internet users to its websites or other on-line location by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of such sites, within the meaning of paragraph 4(b)(iv) of the Policy. The fact that Respondent advertises that its "Websites are FREE" does not necessarily defeat a finding that its use of disputed domain names was for "commercial gain." Respondent is engaged in a commercial enterprise and, through the use of the disputed domain names, is seeking customers. Under such circumstances, it may be determined that it is using the disputed domain names for commercial gain.
There is other evidence of "bad faith" registration and use. Most compelling is evidence that Respondent has been involved in at least six other cases under the Policy that establish a pattern of conduct of preventing a trademark holder from reflecting the mark in a corresponding domain name, within the meaning of paragraph 4(b)(ii) of the Policy. The Panel refers to the decision in Statoil ASA v. VistaPrint Technologies Ltd, WIPO Case No. D2014-1949, wherein it was noted that Respondent had engaged in conduct that resulted in either the transfer or cancellation of eight other domain names (nine, if you include the domain name involved in the cited case), two of which incorporated in full the STATOIL mark, i.e., <statoil.name> and <statoil-uk.com>. In view thereof, it is clear that Respondent was aware of Complainant and of the STATOIL mark at the time it registered the disputed domain names. The fact that Respondent did not respond to Complainant's "cease and desist" letter further supports a determination of bad faith registration and use.
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 names <sattoil.com> and <statoiil.com> be transferred to the Complainant.
Jeffrey M. Samuels
Date: November 2, 2015