WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA v. Shenzhen ShenghongxinrongTrade Ltd.
Case No. D2017-0322
1. The Parties
The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Shenzhen ShenghongxinrongTrade Ltd. of Shenzhen, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <statoilasa.org> ("the Domain Name") is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the "Registrar").
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 17, 2017. On February 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 21, 2017, 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 March 1, 2017, the Center sent an email communication to the Parties in both Chinese and English. On March 2, 2017, the Complainant requested 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 in both Chinese and English of the Complaint, and the proceedings commenced on March 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 5, 2017.
The Center appointed Karen Fong as the sole panelist in this matter on April 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 with approximately 22,000 employees and extensive operations worldwide. It 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 and is headquartered in Stavanger, Norway.
The Complainant's products and services are provided under the trade mark STATOIL ("the Trade Mark"). It has an extensive portfolio of trade marks worldwide. The earliest registration for the Trade Mark in Norway dated back to 1974. This mark has since expired. The earliest trade mark submitted in evidence dates back to 2000 (i.e., International registration no. 730092 with registration date of March 7, 2000). The Complainant also has a large portfolio of domain names which contain the Trade Mark. This includes <statoil.com>, <statoilasa.com>, <statoilasa.biz>, <statoilasa.net>, <statoilasa.info> and <statoilasa.eu> (which it manages).
The Respondent registered the Domain Name on December 27, 2016. The Domain Name is connected to a website which hosts an online shop for a variety of home electronics products ("the Website").
5. Parties' Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant's contentions.
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 was registered and is being used in bad faith
B. Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the Registration Agreement is Chinese in this case.
The Complainant submits in paragraph 10 of the Complaint as well as in its response to the Center on March 2, 2017 that the language of the proceeding should be English. The Complainant contends that there is evidence that the Respondent is proficient in the English language as the content of the home page of the Website is in English. The Respondent has also registered other domain names which contain English words and word combinations, such as <bestonlineshop.info> and <sweetloveonline.net>. If the documents have to be submitted in Chinese, the proceeding will be unduly delayed and the Complainant would have to incur substantial expenses for translation.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs.
The Panel accepts the Complainant's submissions regarding the language of the proceeding. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that in any case all of the communications from the Center to the parties were transmitted in both Chinese and English. The Respondent chose not to respond to the Complaint. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
C. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights to the Trade Mark which pre-date the Domain Name.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself. The trade mark would generally be recognizable within the domain name. In this case the Domain Name comprises the Complainant's trade mark STATOIL in its entirety and the acronym "asa". ASA is an abbreviation of the Norwegian word "allmennaksjeselskap"which is the equivalent to the expression public limited company. It comprises the Complainant full company name Statoil ASA. The addition of this term "asa" does nothing to minimise the risk of confusion. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain ("gTLD") ".org".
The Panel finds that the Domain Name is confusingly similar to the Trade Mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. The Complainant has established this element of the case.
D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non- commercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
The Complainant contends 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 trade mark or service mark rights in that name or mark. The Website is misleading as the Domain Name has been chosen to inappropriately benefit from online traffic intending to find the home page of the Complainant and to take an unfair advantage of the reputation of the Complainant's trade mark rights. This is supported by the fact that the Complainant holds the corresponding domain names with the gTLDs ".com", ".net", ".info" and manages the ".eu" domain. This also further supported by the fact that the Respondent has also registered the domain name <globalecheck.org> which offer substantially the same goods as the goods offered on the Website with identical pictures and prices.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
E. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the Complainant's STATOIL trade mark when it registered the Domain Name. The Complainant has provided sufficient evidence that the Domain Name registration post dates the STATOIL trade mark registrations.
The very incorporation of the Trade Mark and in in fact the Complainant's full company name in the Domain Name confirms the Respondent's awareness of the Trade Mark. Further the Domain Name has no other meaning except for being the name and the Trade Mark of the Complainant. Thus, the Panel concludes that the Respondent deliberately registered the Domain Name in bad faith.
The Panel also finds that the actual use of the Domain Name is in bad faith. It is highly likely that web users who directly type the Domain Name into their browsers, or find it through a search engine, will be looking for a site operated by the Complainant rather than the Respondent. The Domain Name is extremely likely to confuse Internet users trying to find the Complainant's official website. Such confusion will inevitably result due to the incorporation of the Trade Mark as the most prominent element of the Domain Name. The use of the Trade Mark also makes a false representation, in favour of the Respondent's business, of a commercial connection with the Complainant or endorsement by it.
Such confusion and apparent endorsement of the Respondent's products is likely to be of considerable commercial benefit to the Respondent in that it will draw large numbers of users to the Website through the attractive force of the Trade Mark within the Domain Name. The Respondent employs the fame of the STATOIL trade mark to mislead users into visiting the Website instead of the Complainant's. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Website is and the products sold on it are those of or authorised or endorsed by the Complainant.
The Panel therefore also concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) 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, <statoilasa.org>, be transferred to the Complainant.
Date: April 27, 2017