WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA v. Paal Hansen
Case No. D2016-2242
1. The Parties
The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Paal Hansen of Stavanger, Norway.
2. The Domain Name and Registrar
The disputed domain name <statoilepost.com> (the "Domain Name") is registered with Key-Systems GmbH (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 4, 2016. On November 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 7, 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 November 10, 2016, the Center sent an email communication to the parties in both English and Danish regarding the language of the proceeding. On the same day, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 November 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 13, 2016.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on December 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 is an international energy company with approximately 22,000 employees and extensive operations worldwide. The Complainant has been in business for over 40 years and is one of the leading providers globally of energy products and services. The Complainant has operations in 37 countries around the world, with its headquarter in Norway.
The Complainant enjoys trademark protection through registrations worldwide, the first ones being approved in 1974 (Norwegian Trademark Reg. No 90221 now ceased). A list containing examples, such as International Registration STATOIL, WIPO Reg. No 730092 and Community Trademark Reg. No 003657871, is attached to the Complaint. The Complainant is also the owner of domain names containing the trademark STATOIL.
The Respondent registered the Domain Name on April 24, 2016. The Respondent has listed the Complainant's postal address as its own when registering the Domain Name with the Registrar.
5. Parties' Contentions
The Complainant provides trademark registrations, and submits that the STATOIL trademark is well-known, based on previous UDRP decisions. The Complainant argues that the Domain Name is highly similar to the Complainant's trademark and trade name STATOIL as the Domain Name consists of "statoil" and the word "epost". E-post is the Norwegian word for email. The addition of the word "epost" does not impact the overall impression of the dominant part of the name "statoil". Rather, the addition of the term "epost" serves to convey the impression that the domain name is related to the Complainant's business. It is established that confusing similarity exists when well-known trademarks are paired with different kinds of prefixes and suffixes.
The Complainant argues further that the Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the STATOIL mark in connection with a website or for any other purpose. The Respondent is not using the domain name in connection with any bona fide offering of goods or services, is not generally known by the Domain Name, and has not acquired any trademark or service mark rights in that name or mark. As the Domain Name currently holds no Internet content of the Respondent, it may be assumed that the Respondent's intention for registering the Domain Name has been to use it for financial gain. The fact that the Domain Name includes the Norwegian word for email indicates a potential risk of use of the Domain Name in the distribution of fraudulent emails.
Finally, as to the bad faith, the Complainant argues that the Respondent must have known of the Complainant and its trademark. STATOIL is known worldwide. The headquarters of the Complainant is located in the hometown of the Respondent, namely Stavanger. The Domain Name bears no relationship to the Respondent. The Complainant refers to previous UDRP decisions and similar cases in which domain names used by the respondents with no connection to the complainant suggest bad faith. The Complainant also refers to decisions on passive holding of a domain name when there is no way in which it could be used legitimately. The Complainant concludes it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement, unless otherwise agreed by the parties. Importantly, paragraph 11(a) also states that the determination of the language of the proceeding is "subject to the authority of the Panel . . ., having regard to the circumstances of the administrative proceeding".
The language of the Registration Agreement here is Danish, as the Registrar confirmed in its verification response to the Center. The Complainant submitted its Complaint in English, and subsequently requested that English be the language of the proceeding. The Complainant argued that the Respondent is proficient in the English language, the Respondent is a resident of Norway without connection to Denmark or the Danish language, and concluded that English is also the current linguafranca and most suitable for the current proceedings. Translating the Complaint and the annexes would cause substantial additional expense and delay. The Respondent did not reply to the Complainant's contentions on the language issue.
The Panel finds that the Respondent is most likely to understand English and he has been given a fair chance to object. The Respondent seems to be a resident of Norway. The Respondent does not appear to have any legitimate connection to Denmark or the Danish language. There seems to be no particular need for the Respondent to conduct the proceedings in Danish.
The Panel determines that the language of this proceeding will be English.
Turning to the merits of the case, in order to prevail, the Complainant must prove the three elements in paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark STATOIL.
The test for confusing similarity involves the comparison between the trademark and the disputed domain name. In this case, the Domain Name consists of the Complainant's trademark STATOIL and the word "epost". E-post is the Norwegian word for email. The addition of the suffix adds to the confusion rather than reduces the risk of confusion.
For the purposes of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain ("gTLD") ".com".
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has not granted any authorization to the Respondent to register a domain name containing its trademark or otherwise make use of its mark.
According to the evidence, the Respondent is not affiliated or related to the Complainant in any way, and the Respondent is not using the Domain Name in connection with any bona fide offering of goods or services. The Respondent is not generally known by the Domain Name, and has not acquired any trademark or service mark rights in that name or mark.
Taking into account that the Domain Name includes the Complainant's well-known trademark, the Panel considers that on the balance of probabilities the Respondent wants to use the Domain Name to misrepresent that the Domain Name is connected and/or associated with the Complainant.
The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent must have been aware of the Complainant's trademark and its business when he registered the Domain Name. STATOIL is known worldwide. The headquarter of the Complainant is located in the hometown of the Respondent. The Domain Name bears no relationship to the Respondent.
It is more likely than not that the Respondent's intention for registering the Domain Name has been to use it for financial gain. The fact that the Domain Name includes the Norwegian word for email indicates a risk of use of the Domain Name in the distribution of fraudulent emails.
The Panel finds that on the balance of probabilities the Respondent registered and has used the Domain Name with the intention of confusing Internet users into believing that the Domain Name is associated with the Complainant. This is supported by the fact that the Respondent has left with the Registrar the Complainant's postal address as the Respondent's own address.
The finding of bad faith is supported by the fact that the Respondent has not replied to the Complaint.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(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 <statoilepost.com> be transferred to the Complainant.
Date: December 23, 2016