WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA ("Statoil") v. Dag Sturle Langslet
Case No. D2016-2445
1. The Parties
The Complainant is Statoil ASA ("Statoil") of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Dag Sturle Langslet of Haslum, Norway.
2. The Domain Name and Registrar
The disputed domain name <statoil.shop> is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 2, 2016. On December 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 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 December 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 27, 2016. In response to this notification, the Center received two email communications from the Respondent on December 27, 2016 and another two email communications on January 17, 2017.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on January 17, 2017. 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 the proprietor of the trademark STATOIL, registered in several jurisdictions, for example as a European Union Trade Mark No. 003657871 with priority from February 10, 2004.
The disputed domain name was registered on November 24, 2016, and resolves to a hosting provider's parking site.
5. Parties' Contentions
The Complainant asserts that the disputed domain name is confusingly similar to its well-known trademark because it consists entirely of the Complainant's trademark.
The Respondent has no rights or legitimate interests in the disputed domain name, because the Respondent is not affiliated with or related to the Complainant and the Complainant has not authorized the Respondent to use the Complainant's trademark. The Respondent is also not using the disputed domain name in bona fide offering of goods or services, nor is the Respondent generally known by the disputed domain name.
The Respondent must have been aware of the Complainant's well-known trademark when registering the disputed domain name and the Respondent is passively holding the disputed domain name when there is no way it could be used legitimately.
The Respondent did not reply to the Complainant's contentions. As noted above, the Respondent sent numerous emails indicating i.e., "I have responded to this long time ago. I am not giving the domain name away for free"; "And Where is this taking place? And when?"
6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant establishes that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.
It is well established in decisions under the UDRP that generic Top-Level Domain ("gTLD") indicators (e.g., ".com") as well as new generic Top-Level Domain indicators (e.g., ".shop") may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name. With the exclusion of the suffix ".shop", the disputed domain name is identical to the Complainant's trademark STATOIL and contains no other elements. Hence the first element of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests in the disputed domain names.
The consensus view among UDRP panels is that once a complainant has made a prima facie showing indicating the absence of the respondent's rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 and paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Complainant has credibly submitted that the Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to use the Complainant's trademark in a domain name or otherwise. The Respondent has not rebutted these arguments.
Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. In light of the Panel's findings below, the Panel finds there are no other circumstances which provide the Respondent with any rights or legitimate interests in the disputed domain names.
Therefore, the Panel finds that the second element of the Policy is fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant establishes that each disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
"(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] website or location or of a product or service on [the respondent's] website or location."
The Panel accepts, in accordance with previous panels, that the Complainant's trademark is well-known. Considering this, and the fact that the Respondent is located in Norway, where also the Complainant is domiciled, it is inconceivable that the Respondent would not have been aware of the Complainant's trademark when registering the disputed domain name.
The disputed domain name resolves to a website which appears to be a hosting provider's parking site. Hence the Respondent is passively holding the disputed domain name.
The consensus view among UDRP panels is that passive holding does not as such prevent a finding of bad faith, see paragraph 3.2 of the WIPO Overview 2.0. The Panel must consider all relevant circumstances in determining whether the Respondent is acting in bad faith. Such circumstances include, inter alia, the reputation of the Complainant's trademark and whether a response to the Complaint has been filed.
In this matter the Complainant's trademark has been considered as well-known. The email communications sent by the Respondent were received by the Center after the response due date and they do not contain any facts or explanations relevant to the Complainant's contentions.
The Panel considers all these factors together indicate that the disputed domain name was registered and is used in bad faith.
Therefore, the Panel finds that the third element of the Policy has been fulfilled.
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.shop> be transferred to the Complainant.
Date: January 31, 2017