WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA (“Statoil”) v. Oneandone Private Registration, 1&1 Internet Inc / Dainia Velishek
Case No. D2017-1303
1. The Parties
The Complainant is Statoil ASA (“Statoil”) of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Oneandone Private Registration, 1&1 Internet Inc of Chesterbrook, Pennsylvania, United States of America (“United States”) / Dainia Velishek of Elk River, Minnesota, United States.
2. The Domain Name and Registrar
The disputed domain name <statoil-n0.com> is registered with 1&1 Internet SE (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2017. On July 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 12, 2017, 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 July 12, 2017 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 July 13, 2017.
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, and the proceedings commenced on July 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 3, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2017.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on August 10, 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 Statoil ASA is an international energy company seated in Norway and operative in 34 countries worldwide. The Complainant has its headquarters in Stavanger, Norway and has been in business for over 40 years and is one of leading providers globally of energy products and services.
Trademark STATOIL is registered in jurisdictions throughout the world and its first registration goes back to 1974 in the company’s home country, Norway (Norwegian trademark no. 90221, now ceased). The Complainant’s trademark registrations include international trademark registration no. 730092 for STATOIL, registered on March 7, 2000. A sample proof of these registrations was attached to the Complaint as Annex 2 and Annex 3.
The Complainant also holds a multitude of domain names registered throughout the world, all formed by the famous mark STATOIL.
The disputed domain name was registered on April 6, 2017. The disputed domain name does not resolve to an active website.
5. Parties’ Contentions
The Complainant is the owner of registrations worldwide for the mark STATOIL, with the oldest registration being granted in 1974 in Norway.
The Respondent registered the disputed domain name, which incorporates the trademark STATOIL, registered by the Complainant.
As stated by the documents presented, the registration and use of the trademark STATOIL predates the registration of the disputed domain name.
Accessing the disputed domain name it directs to a forbidden website, as states Annex 4 of the Complaint. The disputed domain name, though, has held pay-per-click content. The Complainant alleges that the disputed domain name as it appears may be used on phishing scams.
Lastly it was stated that the Respondent does not own a trademark registration or a pending application, either concerning the expression STATOIL or any other one.
In sum, the Complainant alleges that the registration and use of the disputed domain name is intentional to mislead Internet users by leading them to phishing scams, that it is clear that the Respondent has no rights in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy, in its paragraph 4(a), determines that three elements must be presented and duly proven by a Complainant to obtain relief. These elements are:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name <statoil-n0.com> is, indeed, confusingly similar to the STATOIL trademark, as the latter is entirely incorporated in the disputed domain name.
The Complainant has presented consistent evidence of ownership of the trademark STATOIL in jurisdictions throughout the world, by presenting international registrations for it, as well as comprehensive evidence of the use of the trademark.
The use of the trademark with the addition of the “-n0” in the disputed domain name does not differentiate it from the trademark – on the contrary, the mark STATOIL is reproduced in its entirety, which may lead the public to consider the disputed domain name to lead to a site related to the Complainant . Further, the “-n0” can be also considered mistyping, a fact of which squatters normally take profit from, preparing a page that might give the user the impression it is the real one that was searched.
Given the above, the Panel concludes that the disputed domain name is confusingly similar to the registered trademark of the Complainant.
B. Rights or Legitimate Interests
Given the clear evidence that the trademark STATOIL is registered in the Complainant’s name and is widely known as identifying the Complainant’s activities, and that the Complainant has not licensed this to the Respondent, the Panel finds that the Complainant has established prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In the absence of a Response, the Respondent has not rebutted such prima facie case.
The use of the disputed domain name is intentionally misleading for consumers. It is a clear attempt to benefit from the renown of the mark to direct visitors to the website at the disputed domain name. In addition, the Complainant contends that the MX-records are set up for the disputed domain name, which indicates a potential risk of fraud, which has not been rebutted by the Respondent.
The Panel, thus, finds for the Complainant under the second element of the Policy.
C. Registered and Used in Bad Faith
Given the circumstances of this case, the facts outlined in sections A and B above can also evidence the Respondent’s bad faith in the registration and use of the disputed domain name.
The disputed domain name was registered to clearly mislead the consumers – hence the extra “-n0” in the trademark. The Respondent intended to give an overall impression that the disputed domain name is associated with an official website, and the Panel accepts that the disputed domain name may be making use of the Complainant’s renowned trademark for unlawful purposes. The current passive holding of the disputed domain name is also evidence of bad faith from the Respondent.
All the points above lead to the conclusion by this Panel that the Respondent was fully aware of the Complainant and that the Respondent registered and is using the domain name in bad faith.
The Panel finds that the Complainant has also proved 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 <statoil-n0.com> be transferred to the Complainant.
Alvaro Loureiro Oliveira
Date: August 24, 2017