WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA v. xing
Case No. D2016-1064
1. The Parties
The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is xing of Beijing, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <statoil.vip> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”), in English, on May 30, 2016. On May 30, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 31, 2016, 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.
On June 2, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On June 3, 2016, the Complainant confirmed its request contained in the Complaint that English be the language of the proceeding. On June 3, 2016, the Respondent submitted the first of several requests that Chinese be the language of 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 the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on June 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 3, 2016. On July 1, 2016, the Respondent requested an automatic 4 days extension to submit the Response. The Response due date was accordingly adjusted to July 7, 2016. The Response was filed with the Center, in Chinese, on July 2, 2016.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on July 11, 2016. 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.
On July 13, 2016, the Panel issued a Panel Order (in Chinese and English) requesting the parties to file submissions and/or documentary evidence in order to establish the connection (if any) between the email addresses apparently used by or on behalf of the Respondent, in particular with respect to the email dated May 21, 2016 (the “Email”) sent to the Complainant apparently in reply to the May 19, 2016 email from the Complainant to the Respondent (the “Complainant’s Email”).
On July 14, 2016 the Complainant filed submissions in response to the Panel Order, in English.
On July 17, 2016 the Respondent filed submissions in response to the Panel Order, in Chinese.
4. Factual Background
The Complainant is an international energy company incorporated in Norway, and a leading global provider of energy products and services under the trade mark STATOIL (the “Trade Mark”). The Complainant is the owner of several international and national registrations for the Trade Mark, including international registration No. 730092 dating from March 7, 2000. The Complainant is also the owner of several hundred domain names comprising the Trade Mark.
The Respondent is an individual resident in China.
C. Disputed Domain Name
The disputed domain name was registered on May 17, 2016.
D. Website at the Disputed Domain Name
The disputed domain name has not been used.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar or identical to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith.
The Respondent contends that the disputed domain name is not confusingly similar or identical to the Trade Mark, the Respondent has rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was not registered and is not being used in bad faith.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that English be the language of the proceeding and contends that the Respondent is proficient in the English language, having sent the Email to the Complainant in well-written English. The Complainant contends that translating the Complaint and annexes would cause substantial additional expense and delay.
The Respondent has submitted several (Chinese language) requests that Chinese be the language of the proceeding and contends that he only understands a few words of English.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs.
The Panel finds that the content of the Email provides sufficient evidence to suggest the likely possibility that the Respondent is conversant in English. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should the Decision be rendered in English.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:
1. It will accept the filings herein on behalf of the Complainant in English;
2. It will accept the filings herein on behalf of the Respondent in Chinese; and
3. It will render this Decision in English.
6.2 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain name comprises the Trade Mark in its entirety.
The Panel therefore finds that the disputed domain name is identical to the Trade Mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that he has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has not been used.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
The Respondent asserts that he registered the disputed domain name in order to set up a non-profit website blog to display oil paintings of his friend “司徒爱天”, as a birthday gift to his friend. In this regard, the Respondent asserts that the disputed domain name represents an abbreviation of the Pinyin (Romanized text) for the characters “司徒爱天” (“si tu ai tian”) together with the English word “oil” meaning “oil painting”. The Respondent asserts that his friend’s surname is “司徒” (“si tu”) and his friend’s first name is “爱天”(“ai tian”) and that “司徒爱天” (“si tu ai tian”) is a very common name in China.
The Respondent has not, however, aside from this bare assertion, provided any evidence to support his claims of such intended use. Furthermore, the Respondent’s claim that “司徒爱天” (“si tu ai tian”) is a very common name in China is also unsupported by any evidence. In this regard the Panel notes that most Chinese language names comprise three characters. In all the circumstances, the Panel considers the Respondent’s creative explanation as to the genesis and intended use of the disputed domain name is not credible.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel therefore finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant’s case on bad faith is based both upon:
1. Its reputation in the Trade Mark worldwide, including in China - where the Complainant has been conducting business under the Trade Mark since 1982; and
2. On the offer in the Email to sell the Trade Mark to the Complainant for USD 900.
The Panel considers that all of the circumstances of this case support a finding of bad faith registration and use under the Panel’s general discretion – in particular the worldwide notoriety of the Trade Mark; the Complainant’s use of the Trade Mark in China since 1982; the fact the disputed domain name is identical to the Trade Mark; and the Respondent’s passive use of the disputed domain name and his failure to demonstrate any credible rights or legitimate interests in the disputed domain name. In all the circumstances, the Panel concludes that the Respondent must have known of the Complainant and of the Complainant’s rights in the Trade Mark at the time of registration of the disputed domain name.
With respect to the additional ground relied upon by the Complainant (under paragraph 4(b)(i) of the Policy), the Panel agrees with the Complainant’s submissions filed in response to the Panel Order that the Email must have been sent by or on behalf of the Respondent, for the following reasons:
1. The heading of the Email (“Transfer of the domain name Statoil.vip”), although different to the heading in the Complainant’s Email (“Your registration of statoil.vip, our ref. DNS337XXOO”), demonstrates that it was sent in response to the Complainant’s Email; and
2. The Email was sent by “Jack”, an alias used by the Respondent in connection with the Respondent’s email address listed in the WhoIs search results for the disputed domain name.
The Respondent, in his response to the Panel Order, vigorously denies any connection between himself and the Email, states that he does not know the sender of the Email, and denies knowledge of or having ever had any communications with the Complainant’s representative (the sender of the Complainant’s Email). The Respondent also accuses the Complainant of fraudulently concocting the Email and submitting false evidence, in order to, amongst other things, convince the Panel to use English as the language of the proceeding. These are serious allegations.
The Respondent does not however deny having received the Complainant’s Email and, in this regard in particular, the Respondent’s assertion that he does not know and has not had any dealings with the Complainant’s representative casts considerable doubt on the veracity of his submissions.
In any event, even if the Panel’s conclusion regarding the Email is incorrect, this is clearly a case in which, in all the circumstances, there is sufficient evidence to support a finding of bad faith registration and use under the Panel’s general discretion, for the reasons specified above.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith.
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.vip> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: July 29, 2016