WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Statoil ASA (Statoil) v. Whois Agent, Whois Privacy Protection Service Inc. / takoon boonsit, takoon

Case No. D2016-2566

1. The Parties

The Complainant is Statoil ASA (Statoil) of Stavanger, Norway, represented by Valea AB, Sweden.

The Respondent is Whois Agent, Whois Privacy Protection Service Inc. of Kirkland, Washington, United States of America / takoon boonsit, takoon of Bangkok, Thailand.

2. The Domain Name and Registrar

The disputed domain name <statoilhydro.com> is registered with Name.com, Inc. (Name.com LLC) (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 19, 2016. On December 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 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 December 22, 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 amended Complaint on December 27, 2016.

The Center verified that the Complaint together with the amended 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 proceeding commenced on December 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 18, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 19, 2017.

The Center appointed Alistair Payne as the sole panelist in this matter on January 24, 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 an international energy company operative in 37 countries worldwide and with 22,000 employees. The Complainant, with headquarters in Stavanger, Norway, has been in business for over 40 years. The Complainant owns trade mark registrations throughout the world for its STATOIL trade mark including in particular European Union Trade Mark registration number 003657871 for the STATOIL word mark, registered on May 18, 2005. In addition the Complainant owns more than 1,000 domain names that incorporate the STATOIL trade mark.

The disputed domain name was registered on September 20, 2014. The disputed domain name resolves to a website written mainly in the Thai language but that includes separate representations of the STATOIL word mark on its own together with images of working men and which features links to a sports betting website.

5. Parties' Contentions

A. Complainant

The Complainant submits that it owns registered trade mark rights as set out above and that due to the long use of its STATOIL mark since 1974 in numerous countries across the world there exists a high degree of consumer awareness of its mark and brand. The Complainant notes that the disputed domain name incorporates the STATOIL mark together with the word "hydro" which the Complainant has previously used as one of its corporate brands. The Complainant submits that the disputed domain name is identical to the company name and trade mark previously used by it and submits a copy of its previous website page as evidence in this regard. It says that considering the brand awareness of the trade mark STATOIL worldwide, an Internet user would most probably assume a connection with the Complainant and its STATOILHYDRO brand. It therefore submits that the disputed domain name is therefore confusingly similar to its STATOIL mark.

The Complainant further submits that it has not licensed or otherwise permitted the Respondent to use its trade mark. It says that there is no relationship between the parties which would justify the registration of the disputed domain names by the Respondent and nothing in the record, including the WhoIs information to suggest that the Respondent is commonly known by the disputed domain name. The Complainant adds that the Respondent has no registered trade mark or trade name corresponding to the disputed domain name and that its registration occurred later than those of a vast majority of the Complainant's STATOIL and STATOILHYDRO marks and at a time when those had already become well-known marks. The Complainant says that the Respondent must therefore have been aware of the Complainant's STATOIL mark when it registered the disputed domain name and submits that its real intention was to attract Internet users to the Respondent's website, which promotes gambling sites, for commercial gain by creating a likelihood of confusion with the Complainant's mark. This, says the Complainant, is neither legitimate or bona fide conduct.

As far as bad faith is concerned, the Complainant submits that the Respondent has intentionally registered and is using the disputed domain namein bad faith. It says that the Respondent must have known of the Complainant's STATOIL brand and also been aware of its former use of the brand STATOILHYDRO at the date of registration of the disputed domain name. It says that the Respondent could not have chosen or subsequently used the words "statoil" and "hydro" in the disputed domain name for any reason other than to trade off the goodwill and reputation of the Complainant's trade mark or otherwise create a false association, sponsorship or endorsement with or of the Complainant. It notes that a reverse WhoIs lookup search based on the name of the Respondent shows that the Respondent has also registered other domain names that contain well-known trademarks, such as <harleyfullerton.com> and <fifafivebet.com> and has therefore engaged in a pattern of this sort of conduct. The Complainant says that it must reasonably be inferred that the Respondent knew about the Complainant and the prior use of the disputed domain name when the Respondent registered the disputed domain name, and that it is common for a third party to register domain names that have lapsed in order to confuse Internet users and falsely attract visitors to its website. This, says the Complainant, is conduct in terms of paragraph 4(b)(iii) or paragraph 4(b)(iv) of the Policy and amounts to evidence of registration and use in bad faith.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns registered trade mark rights for its STATOIL word mark, in particular under European Union Trade Mark registration number 003657871. The Panel notes that the STATOIL mark is not a common word but is a coined term that is distinctive and, as a result of very substantial use in numerous countries worldwide, is a very well reputed trade mark.

The disputed domain name wholly contains the Complainant's distinctive STATOIL mark together with the commonly used term "hydro". Considering the degree of distinctiveness of the Complainant's mark and the degree of renown attaching to it, the Panel does not find that the use of the term "hydro" distinguishes the disputed domain name. In any event the Panel accepts the Complainant's evidence that it has used the brand STATOILHYDRO in the past and notes that the risk of Internet users confusing the disputed domain name as having some association or affiliation with the Complainant is only exacerbated as a consequence. As a result the Panel finds that the disputed domain name is confusingly similar to the Complainant's registered STATOIL trade mark and that the Complaint succeeds under this element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that it has not licensed or otherwise permitted the Respondent to use its trade mark and that there is no relationship between the parties which would justify the registration of the disputed domain names by the Respondent and nothing in the record, including the WhoIs information to suggest that the Respondent is commonly known by the disputed domain name. The Complainant has submitted that the Respondent has no registered trade mark or trade name corresponding to the disputed domain name and that its registration occurred later than those of a vast majority of the Complainant's STATOIL and STATOILHYDRO marks and at a time when those had already become well-known marks. In addition the Complainant says that the Respondent is using the disputed domain name to confuse and divert Internet users and that this is not bona fide conduct.

The Panel finds that the Respondent has not rebutted the prima facie case made out by the Complainant. For this reason and for the reasons set out under Part C below the Panel finds that the Complaint succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name was registered on September 20, 2014. The Panel notes, based on the evidence submitted by the Complainant, that until 2009 the Complainant traded under the corporate name "Statoil Hydro ASA" and that it re-named itself that year as "Statoil ASA". It is apparent that the Complainant owned trade mark registrations in many countries worldwide for its STATOIL mark that pre-date this change of name and the registration of the disputed domain name by many years. By the date of registration of the disputed domain name in 2014 it appears that the Complainant had developed a very significant reputation worldwide in connection with its STATOIL mark. Further, the Panel notes that the STATOIL mark is a coined term and is quite distinctive. In these circumstances the Panel infers that the Respondent must have been aware of the Complainant's STATOIL mark and was most likely aware of its past trading name "Statoil Hydro ASA" and registered the disputed domain name with full knowledge of the Complainant's rights.

The disputed domain name resolves to a website written mainly in the Thai language but that includes separate representations of the STATOIL word mark on its own, together with images of working men in appropriate attire and hard hats that could well be relevant to the oil industry, and which also features links to a sports betting website. This amounts to the Respondent using the disputed domain name to confuse Internet users into thinking that it is the Complainant but instead diverting them to its own website, obviously for commercial purposes in terms of paragraph 4(b)(iv) of the Policy.

In addition the Panel notes that according to the Complainant's submission the Respondent has registered other domain names that contain well-known trade marks, such as <harleyfullerton.com> and <fifafivebet.com>, for similar commercial purposes. This reinforces the Panel's view under paragraph 4(b)(iv) of the Policy but also amounts to conduct as described in paragraph 4(b)(iii) of the Policy, namely that the disputed domain name has been registered in order to prevent the Complainant as owner of the STATOIL trade mark from reflecting the mark in a corresponding domain name, in circumstances that the Respondent has engaged in a past pattern of this conduct.

Accordingly the Panel finds that the Respondent has both registered and used the disputed domain name in bad faith.

7. Decision

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 <statoilhydro.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: February 3, 2017