WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA (Statoil) v. Domains by Proxy LLC, Domainsbyproxy.com / Frederic Bavastro
Case No. D2016-1824
1. The Parties
The Complainant is Statoil ASA (Statoil), Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Domains by Proxy LLC, Domainsbyproxy.com, Scottsdale, Arizona, United States of America / Frederic Bavastro, Chicago, United States of America, represented by Samardzic, Oreski & Grbovic, Serbia.
2. The Domain Name and Registrar
The disputed domain name, <statoilvr.com> (the “Domain Name”), is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2016. On September 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 9, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 12, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint September 13, 2016.
The Center verified that the Complaint together with the amendment to 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 September 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2016. The Response was filed with the Center on October 6, 2016.
The Center appointed Tony Willoughby as the sole panelist in this matter on October 12, 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.
The invitation to the Complainant to amend the Complaint stemmed from the fact that the underlying registrant had availed himself of a privacy service, the above-named Domains by Proxy LLC. The underlying registrant was identified to the Center by the Registrar as being the above-named Frederic Bavastro. For the purposes of this decision the Panel treats the underlying registrant as having been at all material times the beneficial owner of the Domain Name and henceforth all references herein to the Respondent are references to the above-named Frederic Bavastro.
4. Factual Background
The Complainant is an international energy company. The Complainant is the registered proprietor of numerous registrations of the trade mark STATOIL, one of which is European Union Trade Mark Registration No. 003657871 STATOIL (word) registered on May 18, 2005.
The Domain Name was registered on June 11, 2016 and is currently connected to a Pay-Per-Click parking page of the Registrar featuring advertising links, few if any of which appear to have any connection to the Complainant.
The Respondent is also the proprietor of well over one hundred other “.com” domain names with a second level ending with the letters “vr”, including <capgeminivr.com>, <eurodisneyvr.com>.<harvardvr.com>, <oxforduniversityvr.com>, <qatarairwaysvr.com>, <sainsburysvr.com> and <victoriassecretvr.com>.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its STATOIL registered trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.
The Respondent acknowledges the Complainant’s trade mark rights, but contends that his purpose in registering the Domain Name was not to target the Complainant or its trade mark, but to provide a bona fide, non-profit information service for the benefit of patients suffering from and health care professionals and others interested in the effects of surgical removal of the larynx.
The Respondent asserts that he is the “founder of an informal community … which will operate and function via [a] web site under the name of “Stato In Laryngectomy Voice Restoration”. He claims that the Domain Name was selected as being an appropriate acronym and that he therefore has rights or legitimate interests in respect of the Domain Name for the purposes of paragraph 4(a)(ii) of the Policy.
The Respondent denies any bad faith intent.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Respondent does not dispute that the Domain Name, featuring as it does the Complainant’s STATOIL trade mark, is confusingly similar to that trade mark and the Panel so finds.
C. Rights or Legitimate Interests
The Complainant contends that the addition of the letters “vr” to the Complainant’s trade mark STATOIL at the second level of the Domain Name does nothing to minimize the risk of confusion, but on the contrary adds to the risk of confusion. It asserts that the letters “vr” are an acronym for “virtual reality” and that the Complainant along with others in the oil industry commonly use virtual reality technology when assessing oil reservoirs and potential oil reservoirs. The Complainant contends that the Domain Name must have been selected with the Complainant in mind and that the Domain Name cannot realistically be used for any purpose other than one intended to exploit the Complainant’s trade mark in some way.
The Panel finds that the Complainant has made out a prima facie case calling for an answer from the Respondent.
The Respondent has provided an answer. As set out in paragraph 5B above he contends that he selected the Domain Name as an acronym for “Stato In Laryngectomy Voice Restoration” and that he proposes to use it for a bona fide,noncommercial information service to those concerned with and/or suffering from the effects of laryngectomy. He claims to have a community and refers in the Response to its “founders and members”.
A fundamental problem with the Respondent’s explanation is that he has produced no supporting material to demonstrate the existence of his plans, nor has he produced any evidence of the existence of his “community”.
Another fundamental problem for the Respondent is that he has not responded to the Complainant’s evidence showing that the Respondent is the proprietor of a very substantial portfolio of domain names featuring the suffix “vr.com” including inter alia <capgeminivr.com>, <eurodisneyvr.com>.<harvardvr.com>, <oxforduniversityvr.com>, <qatarairwaysvr.com>, <sainsburysvr.com> and <victoriassecretvr.com>. What part does “voice restoration” have to play in relation to any of those names?
The Panel concludes on the evidence before him that the Respondent’s explanation is not to be believed.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
Why did the Respondent register the Domain Name? The Panel has found that on the evidence before him the Respondent’s answer to that question is not to be believed. That leads to another question: why did the Respondent go to the trouble of concocting an explanation, which without supporting evidence and in the absence of an answer dealing with the remainder of his “-vr.com” domain name portfolio, frankly, defies credibility?
The Panel concludes that the Respondent’s aim was to conceal his real intent, which if made known to the Panel would result in the Panel ordering transfer of the Domain Name to the Complainant.
Thus, the Panel finds on the evidence before him and on the balance of probabilities that the Respondent registered the Domain Name for one or more of the abusive purposes set out in paragraph 4(b) of the Policy.
The fact that the Domain Name may not currently be in active use (other than to connect to a parking page of the Registrar) does not assist the Respondent. The mere existence of the Domain Name in the hands of the Respondent represents, in the view of the Panel, an abusive threat hanging over the head of the Complainant and, as such, a continuing bad faith use of the Domain Name for the purposes of paragraph 4(a)(iii) of the Policy.
The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <statoilvr.com>, be transferred to the Complainant.
Date: October 14, 2016