WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA v. Cameron Jackson
Case No. D2016-1649
1. The Parties
The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Cameron Jackson of Kingston, New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <statoil.lol> (the "Disputed Domain Name") is registered with Uniregistrar Corp (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 15, 2016. On August 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 16, 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.
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, and the proceedings commenced on August 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 7, 2016.
The Center appointed Lynda M. Braun as the sole panelist in this matter on September 16, 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.
4. Factual Background
The Complainant, an international energy company with 21,000 employees and business operations in 37 countries worldwide, is a Norwegian corporation established under Norwegian law. The Complainant has been in business for over forty years and is one of the leading global providers of energy products and services.
The Complainant owns the trademark STATOIL, including, inter alia international trademark no. 730092, registered on March 7, 2000 and currently is registered in dozens of countries worldwide, including Australia, the listed location of the Respondent (the "STATOIL Mark"). In addition, the Complainant is the owner of several hundred domain names containing the STATOIL Mark, including <statoil.com>.
The Respondent registered the Disputed Domain Name on August 8, 2016. The Disputed Domain Name resolves to a parking page provided on the Registrar's website and does not contain any content belonging to the Respondent. The Respondent appears to be a serial cybersquatter, having registered many domain names that correspond to, or contain, well-known trademarks. As a result, the Respondent has had numerous UDRP cases filed against him during the past ten years.
5. Parties' Contentions
The Complainant contends that:
- The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
- The Disputed Domain Name was registered and is being used in bad faith; and
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the STATOIL Mark based on both longstanding use and its numerous registered trademarks worldwide. The Disputed Domain Name consists of the STATOIL Mark followed by the generic Top-Level Domain ("gTLD") ".lol", which was launched on May 2, 2015.
Moreover, the addition of a gTLD such as ".lol" in a domain name may be technically required. Thus, it is well established that such element may generally be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012‑0182. Thus, the Panel concludes that the Disputed Domain Name is identical to the Complainant's STATOIL Mark.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its STATOIL Mark. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name.
Finally, where a respondent has registered and used a domain name in bad faith (see the discussion below), the respondent cannot for that reason be found to have made a bona fide offering of goods or services.
In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant's prima facie case.
The Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
The Panel concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith.
First, the Respondent has engaged in a pattern of registering domain names consisting of or incorporating well-known trademarks of others. See Pfizer Inc. v. Cameron Jackson, WIPO Case No. D2005-0909. Previous UDRP panels have found this to be evidence of registration in bad faith. See AT&T Corp. v. Asia Ventures, Inc., WIPO Case No. 2005-1012 ("With some 40 UDRP decisions against him, it is clear that the Respondent has engaged in such a pattern, so this alone would be sufficient for a finding of bad faith.").1 This conduct in and of itself is evidence of bad faith.
Second, bad faith may be found where the Respondent knew of the registration and use of the STATOIL Mark prior to registering the Disputed Domain Name. See Façonnable SAS v. Names4sale, WIPO Case No. D2001‑1365. Such is the case here in which the Respondent registered the Disputed Domain Name long after the Complainant obtained its numerous registrations worldwide for the STATOIL Mark. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant's trademarks). Moreover, the Respondent's prior registrations of domain names containing the STATOIL Mark is evidence of his knowledge of the STATOIL Mark.
Third, by using the Disputed Domain Name to resolve to a Registrar parking page and having no substantive content on the web page, the Respondent has registered and is using the Disputed Domain Name in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The lack of use of a domain name without rights or legitimate interests in that domain name and that coincides with a well-known trademark owned by someone else constitutes bad faith under the Policy. See Itaú Unibanco Holding S.A. v. Valdery Dos Santos Decorações ME, WIPO Case No. D2009-1335; LACER, S.A. v Constanti Gómez Marzo, WIPO Case No. D2001-0177.
Finally, the registration of the Disputed Domain Name that reproduces in its entirety the Complainant's STATOIL Mark is further evidence of the Respondent's bad faith because such registration prevents the Complainant from registering a domain name reflecting its STATOIL Mark under the "lol" TLD. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. The use of a domain name connected with a well-known trademark by someone with no connection to that trademark suggests opportunistic bad faith. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. The Panel further notes that the Respondent had previously registered domain names incorporating the Complainant's STATOIL Mark which were ordered to be transferred to the Complainant by a UDRP panel. See Statoil ASA ("Statoil") v. Cameron Jackson, WIPO Case No. D2015‑2226 (ordering transfer of <statoil.site> and <statoil.xyz>).
In light of the above, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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.lol> be transferred to the Complainant.
Lynda M. Braun
Date: September 18, 2016
1 A sampling of other UDRP cases involving domain names containing well-known trademarks registered by the Respondent include BHP Billiton Innovation Pty Ltd v. Cameron Jackson, WIPO Case No. D2015-2214 (BHPBILLITON); Chocoladefabriken Lindt & Sprüngli AG v. Cameron Jackson, WIPO Case No. D2007-1290 (LINDT) and Alstom v. Cameron Jackson, WIPO Case No. D2007-1022 (ALSTOM); Compagnie Générale des Etablissements Michelin v. Cameron David Jackson, WIPO Case No. D2015‑1671 (MICHELIN), William Grant & Sons Limited, The Glenfiddich Distillery v. Cameron David Jackson, WIPO Case No. D2016-0261 (DRAMBUIE), and Thule Sweden AB v. Cameron David Jackson, WIPO Case No. D2016-0414 (THULE), and Banco Bradesco S/A v. Cameron David Jackson, WIPO Case No. D2015-0704 (BRADESCO).