WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA. v. Whois Privacy Protection Service by MuuMuuDomain / hiroshi shoji
Case No. D2016-1873
1. The Parties
The Complainant is Statoil ASA. of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Whois Privacy Protection Service by MuuMuuDomain of Fukuoka, Japan / hiroshi shoji of Tochigi, Japan.
2. The Domain Name and Registrar
The disputed domain name <statoilforetag.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on September 15, 2016. On September 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 16, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed 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 20, 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 on September 20, 2016. On September 20, 2016, the Center transmitted to the Parties an email in English and Japanese regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in English and Japanese, and the proceeding commenced on October 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 23, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 24, 2016.
The Center appointed Gabriela Paiva Hantke as the sole panelist in this matter on October 28, 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 Statoil ASA. is an international oil company and energy provider and services with around 22,000 employees and extensive operations worldwide. The Complainant has been in business for more than 40 years.
STATOIL is a well-known registered trademark own by the Complainant. Also, it has been recognized in several WIPO decision cited in the Complaint.
The Complainant owns several registrations of STATOIL trademark and also several domain name registrations containing the STATOIL trademark.
The first registration of STATOIL trademark was obtained in Norway, in the year 1974, that is the country of origin of the Complainant. Among these registration is the International Registration Number 730092 registered on March 7, 2000 and the European Union Trademark Registration Number 003657871 registered on May 18, 2005. STATOIL trademark is also registered in Japan in several classes where the Respondent appears to be located.
The disputed domain name was registered on December 3, 2015 using a privacy service, and resolves to an inactive website.
5. Parties' Contentions
The Complainant alleges that the disputed domain name is confusingly similar to its well-known registered and used STATOIL trademark, that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. Accordingly, the Complainant requests transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Language of the Proceeding
The Registrar confirmed in this case that the language of the proceeding was Japanese. The Complaint was filed in English. Having received notice of the Complaint in both Japanese and English, the Respondent has not expressed any interest in responding to it or participating in any other way. Therefore the Panel considers that requiring to translate would create an undue burden and delay. The Panel determines in accordance with paragraph 11(a) of the Rules that the language of the proceeding is English.
B. Identical or Confusingly Similar
The Complainant is the owner of several registrations of the STATOIL trademark covering a range of products and services related to oil, energy and related services. It is also the registrant of several domain names containing the STATOIL trademark.
It has been established in several WIPO decisions as mentioned by the Complainant that STATOIL is a well-known trademark.
The disputed domain name <statoilforetag.com> contains the well-known trademark STATOIL of the Complainant. The additional element "foretag" is not enough to avoid confusion with the STATOIL trademark, then the disputed domain name results to be confusingly similar to the Complainant's trademark.
The Panel notes that the word "foretag" according to the Complainant means "company" or "business" in Swedish.
Under those circumstances the term "foretag" that means business or company is a descriptive element that is not enough to avoid confusion between the well-known trademark STATOIL and the disputed domain name <statoilforetag.com> and such element does not add any relevant difference with respect to the Complainant's trademark.
In view of the above the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark. Accordingly, the Complainant has satisfied the first element of the Policy.
C. Rights or Legitimate Interests
The Complainant is a company operating under the name "Statoil" and has also established ownership of the STATOIL trademark, owning several hundred registrations worldwide as well as owning domain name registrations containing the trademark, and also been STATOIL a well-known trademark.
The Complainant has not granted any license or authorization to the Respondent to use the STATOIL trademark, and the Respondent has no connection with the Complainant and its trademark STATOIL and the Respondent is not commonly known by the disputed domain name.
In the Panel's view, the allegations made by the Complainant in the Complaint constitute a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Moreover, the Respondent did not file any response and did not seek to demonstrate any rights or legitimate interests in the disputed domain name.
In view of the above, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name, and that the Complainant has therefore satisfied the second element of the Policy.
D. Registered and Used in Bad Faith
The Complainant has provided evidence that the STATOIL is a well-known trademark and that at the moment of registering the disputed domain name the Respondent should have been aware of the Complainant's trademark. Given the fact that STATOIL is a well-known trademark, registered and in business worldwide, the Panel finds that the Respondent was likely aware of the STATOIL trademark, when registering the disputed domain name.
Previous WIPO UDRP decisions have established that such registration followed by a passive holding of the domain name, when there is no plausible actual or contemplated active use of the domain name that would legitimate, has been found to be an use in bad faith. The Panel then further finds that the disputed domain name has been registered and is being used in bad faith.
In view of the above, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith.
Therefore, the Panel finds that the Complainant satisfied the third element 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 disputed domain name <statoilforetag.com> be transferred to the Complainant.
Gabriela Paiva Hantke
Date: November 11, 2016