WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA v. Registration Private, Domains By Proxy, LLC / Andreas Skaare, 1989
Case No. D2017-2488
1. The Parties
Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Andreas Skaare, 1989 of Hafrsfjord, Norway.
2. The Domain Names and Registrar
The disputed domain names <statoil-solar.com> and <statoilsolar.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2017. On December 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 19, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 22, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 27, 2017.
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 proceedings commenced on December 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 18, 2018.
The Center appointed David Perkins as the sole panelist in this matter on February 16, 2018. 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
1. The Complainant is an international energy company, headquartered in Norway and established over 40 years ago. It operates in 36 countries, it has some 22,000 employees and is one of the leading providers globally of energy products and services.
The STATOIL trade mark
2. Exhibited to the Amended Complaint is a schedule of registrations of the STATOIL trade mark in some 42 countries. Also exhibited are particulars of Complainant’s international registration of the STATOIL trade mark, IR 730,092 in classes 1, 4, 17, 39, and 42 registered on March 7, 2000 and of its European Union Trade Mark for the STATOIL mark, CTM 003657871 in classes 1, 4, 17, 35, 37, 39, 40 and 42 registered on May 18, 2005.
The STATOIL domain names
3. The Amended Complaint states that Complainant has approximately 1,000 domain names - gTLDs and ccTLDs - comprising its STATOIL trade mark.
1. In the absence of a Response, what is known of the Respondent is contained in the Amended Complaint and its Annexes.
2. The disputed domain names <statoilsolar.com> and <statoil-solar.com> were respectively registered on October 4 and 10, 2017 using a privacy protection service.
3. Both disputed domain names resolve to parking websites where they are offered for sale captioned “Learn how you can get this domain.”
5. Parties’ Contentions
Identical or Confusingly Similar
1. Complainant asserts that its STATOIL trade mark is a well-known trade mark within its field of business and cites the following four Decisions under the Policy as evidence that this was recognised by the panelists in those cases. Those Decisions are:
Statoil ASA v. Weiwei Qiu / PrivacyProtect.org, WIPO Case No. D2011-1752. The disputed domain name was <statoilpetroleum.com>.
Statoil ASA v. Weiwei Qiu, WIPO Case No. D2015-0411. The disputed domain name was <statoil-petroleum.com>.
Statoil ASA. v. STNG, WIPO Case No. D2013-2113. The disputed domain name was <statoil-group.com>.
Statoil ASA v. Domain Admin, Privacy Protection Service Inc D/B/A PrivacyProtect.org / Nicolas Kerry, WIPO Case No. D2017-0046. The disputed domain name was <statoil-eu.com>.
2. Complainant points to the fact that the disputed domain names incorporate its well-known STATOIL trade mark in its entirety and that, for the purposes of paragraph 4(a)(i) of the Policy, the descriptive suffixes “solar” should be disregarded. In support of that contention, the Amended Complaint cites several Decisions under the Policy and submits that the two disputed domain names are confusingly similar to its STATOIL trade mark.
Rights or Legitimate Interests
3. Complainant’s case is that Respondent is not affiliated or related to it in any way, nor is Respondent licensed under or otherwise authorised to use the STATOIL trade mark.
4. Complainant further asserts that Respondent is not using either of the disputed domain names in connection with any bona fide offering of goods or services. Nor, says Complainant, is the Respondent generally known by either of the disputed domain names. Complainant also asserts that Respondent has not acquired any trade mark or service mark rights in the STATOIL name or mark.
5. Complainant cites two cases under the Policy with similar circumstances to this case where the Panels ordered transfer to it of the disputed domain names. They are:
Statoil ASA v. IVAN RASHKOV, WIPO Case No. D2013-1583. The disputed domain name was <statoil.pro>; and Statoil ASA v. David Campbell, WIPO Case No. D2013-1130. The disputed domain name was <statoilgroup.com>.
Registered and Used in Bad Faith
6. Complainant says that, as a result of the extensive and global promotion of its STATOIL mark, Respondent must have been aware of its existence and rights to that mark and, consequently, registration of the two disputed domain names can only have been in bad faith. Complainant cites Statoil ASA v. Daniel MacIntyre, Ethical Island, WIPO Case No. D2014-0369 where bad faith was held on that ground. In that case the disputed domain names were <statoil.holdings> and <statoil.ventures>.
7. Complainant further asserts that its STATOIL trade mark is so well-known that Respondent could not have chosen to use that mark in the disputed domain names for any reason other than to capitalise on the goodwill of that trade mark and thereby to attract commercial gain. Furthermore, the fact that the descriptive suffix “solar” is closely linked to its business of energy products and services is, Complainant says, indicative of bad faith.
As noted, no Response has been filed.
6. Discussion and Findings
1. The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
2. The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name in issue.
3. The Policy paragraph 4(b) sets out circumstances which, again 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.
4. As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
Identical or Confusingly Similar
5. Complainant has established that it has rights in the STATOIL trade mark, which the Panelist considers is a well-known mark.
6. The two disputed domain names both incorporate that well-known mark and, for the purposes of assessing confusing similarity, the descriptive suffix ‘solar’ is to be disregarded.
7. Accordingly, the Amended Complaint satisfies the two requirements of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests.
8. In the absence of a Response, there is nothing to indicate that Respondent could demonstrate rights or legitimate interests in either of the disputed domain names under paragraph 4(c)(i) to (iii) of the Policy, or otherwise. Complainant’s case summarised in paragraphs 5.A.3 to 5.A.5 above is well made out and, accordingly, the Amended Complaint meets the requirement of paragraph 4(a)(ii) of the Policy.
Registered and Used in Bad Faith.
9. On the basis of Complainant’s case summarised in paragraphs 5.A.6 and 5.A.7 above, the Panel finds that it evidences registration and use of the two disputed domain names under paragraph 4(b)(i) of the Policy. In assessing bad faith, in this case relevant factors include the strong reputation of Complainant’s STATOIL trade mark, the lack of evidence of any actual use or contemplated good faith use of the disputed domain names other than offering them for sale and that Respondent has taken active steps to conceal his identity by operating under a privacy shield. The panelist in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, said “...it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the disputed domain name.” The same can be said on the basis of the facts of this case.
10. Accordingly, the Amended Complaint satisfies 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 disputed domain names <statoil-solar.com> and <statoilsolar.com> be transferred to Complainant.
Date: March 2, 2018