WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA v. Registration Private, Domains By Proxy, LLC / Danya Alabandi
Case No. D2018-0300
1. The Parties
The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America ("United States") / Danya Alabandi of Palo Alto, California, United States.
2. The Domain Name and Registrar
The disputed domain name <statoilhr.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 9, 2018. On February 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 12, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 12, 2018 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 February 13, 2018.
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 February 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 18, 2018. On February 27, 2018, the Center received an email communication from an email address associated with the Respondent, and then an email communication from the Complainant requesting suspension of the administrative proceeding. The proceeding was suspended on February 27, 2018. On March 29, 2018, the proceeding was reinstituted. The new due date for the submission of a Response was April 17, 2018. The Respondent did not submit a Response.
The Center appointed Jon Lang as the sole panelist in this matter on July 6, 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
The Complainant is an international energy company with approximately 22,000 employees and operations worldwide. It is a Norwegian corporation, headquartered in Norway and has been in business for over 40 years. It is one of the leading global providers of energy products and services.
The Complainant owns several trademark registrations for STATOIL worldwide, including International Trademark registration no. 730092 (Registration date: March 7, 2000) and European Union Trademark registration no. 003657871 (Registration date: May 18, 2005). The Complainant is also the owner of a number of domain names throughout the world which comprise the STATOIL trademark.
The Domain Name was registered on November 25, 2017 and resolves to a parked web page containing advertisements for the Registrar.
As mentioned in section 3, on February 27, 2018, the Center received an email communication from an individual on behalf of the Respondent which stated "I have already tried to delete the domain but could not due to it being in dispute. I already sent an e-mail to firstname.lastname@example.org. I agree to cancel/transfer the domain. Thank you".Whilst the proceeding was suspended as a result of the email communication the same day from the Complainant's representative (requesting suspension of the proceeding), on March 29, 2018 the Complainant's representative again wrote stating "I regret to inform you that we have not received a signed Standard Settlement Form from the Respondent. I therefore, on behalf of the Complainant, request that the Center reinstitute the proceeding".
No further communications were received by the Center from or on behalf of the Respondent.
5. Parties' Contentions
The following is a summary of the main contentions of the Complainant.
By virtue of the Complainant's long use and renown of the Complainant's STATOIL trademark, STATOIL is associated exclusively with the Complainant. The STATOIL trademark is undisputedly considered a well‑known trademark within its field of business and enjoys wide protection.
The Domain Name is identical or confusingly similar to the Complainant's trademark
The Domain Name is identical or confusingly similar to the Complainant's trademark as it consists of the trademark STATOIL. The fact that the descriptive abbreviation "hr" and the generic Top-Level Domain ("gTLD") ".com" are added to the Complainant's trademark does not eliminate the identity, or at least the similarity, between the trademark and the Domain Name.
The addition of a descriptive element to a registered trademark in a domain name will not prevent a finding of confusing similarity for the purposes of the UDRP. Indeed, descriptive components added to a trademark may even add to confusion by, for example, reinforcing the suggestion of a relationship between domain name registrant and trademark owner.
The letters "hr" cannot be considered a dominant part of the Domain Name. They are an abbreviation used for "Human Resources" and serve to convey the impression that the Domain Name is related to the Complainant in general and, more specifically, to the Complainant's Human Resources department.
The gTLD ".com" must, according to well-accepted principles, be excluded from consideration.
Given the brand awareness of the STATOIL trademark worldwide and lack of distinguishing factors (between mark and Domain Name), an Internet user will assume a connection between the Domain Name and the Complainant.
The public will think that the Domain Name will lead to a website related to the Complainant and its business, or that an email using the Domain Name originates from the Complainant.
The Domain Name must be considered visually, phonetically and conceptually confusingly similar to the Complainant's well-known trademark STATOIL.
The Respondent has no rights or legitimate interests in respect of the Domain Name
The Respondent has no rights to or legitimate interests in the Domain Name given the Complainant's continuous and long prior use of its trademark and trade name STATOIL. The Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the STATOIL trademark 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 trademark or service mark rights in that name or mark.
The Domain Name resolves to a parked web page consisting of advertisements for the Registrar, GoDaddy.com, LLC. The Respondent's use, or non-use, of the Domain Name does not contradict the Complainant's contention that it (the Respondent) does not have any rights or legitimate interests in the Domain Name. It can be assumed that the Respondent's intention in registering the Domain Name was to use it for financial gain or illegal activities.
The Complainant has previously taken action over domain names of a similar character used for phishing purposes. The fact that MX-records are set up for the Domain Name indicates a potential risk of use by way of the distribution of fraudulent emails.
The Domain Name was registered and is being used in bad faith
The Respondent has intentionally registered and is using the Domain Name in bad faith. The Domain Name bears no relation to the Respondent's name or its business.
The trademark STATOIL is well-known worldwide, as it was at the time of registration of the Domain Name. The Respondent must have been aware of the existence of the Complainant and its rights in the STATOIL trademark. The incorporation of the abbreviation "hr" in the Domain Name, being a reference to Human Resource departments, could be used for sending fraudulent emails (for instance, fake employment offers) which further underlines the assertion of bad faith.
The Respondent could not have chosen or subsequently used the word "statoil" in its Domain Name for any reason other than to capitalize on the goodwill of the Complainant's trademark and attract commercial gain; there is no way in which the Domain Name could be used legitimately.
The Respondent did not file a Response or otherwise put forward any arguments against the contentions of the Complainant.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant clearly has rights in the STATOIL trademark.
Ignoring the gTLD ".com" (as the Panel may do for comparison purposes), the Domain Name comprises the Complainant's STATOIL trademark, followed by the letters "hr". As the STATOIL trademark and Domain Name are not identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark. To satisfy the test, the trademark to which the domain name is said to be confusingly similar would generally need to be recognizable as such within the domain name. See section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
The well-known STATOIL trademark is clearly recognizable within the Domain Name. The only real issue therefore is whether the letters "hr" which follow it, renders the Domain Name something other than confusingly similar (to the STATOIL trademark). In the Panel's view, it does not.
Indeed, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not generally prevent a finding of confusing similarity. The nature of such additional terms may, however, bear on the assessment of the second and third elements. See section 1.8 of WIPO Overview 3.0.
Accordingly, the Panel finds that the Domain Name is confusingly similar to the STATOIL trademark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.
Despite a respondent not having been licensed by or affiliated with a complainant, it might still be able to demonstrate rights or legitimate interests. For instance, a respondent can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers.
However, in this case, the Respondent is not known by the Domain Name and, given the nature of the web page to which the Domain Name resolves, which appears to be designed to sell the services of the Registrar, it cannot be said that there is legitimate noncommercial use. As to an absence of an intent to mislead (for commercial gain), the Respondent's choice of Domain Name (the dominant element being the Complainant's well-known STATOIL trademark with the addition of descriptive letters potentially enhancing rather than reducing the risk of confusion), suggests the very opposite. In these circumstances, "use", such as it is, could not be regarded as "fair" either.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it seems clear that the Respondent set out to acquire a domain name that would create a misleading impression of association with the Complainant, which has then been used to resolve to a parked web page advertising the services of a third party (the Domain Name Registrar). In these circumstances, it would be difficult to accept that such use could amount to a bona fide offering of goods or services for the purposes of the Policy.
In Drexel University v. David Brouda, WIPO Case No. D2001-0067, the panel stated that "rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant." It appears to the Panel that there is very little the Respondent could say to challenge the Complainant's assertion that it lacks rights or legitimate interests in the Domain Name and accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
One way a complainant may demonstrate bad faith registration and use, as envisaged by the non-exhaustive list of circumstances in paragraph 4(b) of the Policy, is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website (or other online location) by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation or endorsement of its website (or other location) or of products or services on it.
The Respondent must have been aware of the Complainant's STATOIL trademark at the time of registration. It clearly sought to create a misleading impression of association with the Complainant. It must have known that Internet users looking for the website of the Complainant may well be misdirected as a result of its registration. It can only be assumed that the Respondent derives (or has the opportunity to derive) some commercial benefit from the parked web page, but even if that is not the case, it is incumbent on a registrant of such an obviously confusingly similar domain name to come forward and seek to justify its registration if it is to avoid an adverse finding. That is even more so where the formulation of the Domain Name (e.g. to suggest a connection with a specific division of a corporate trademark owner) could lend itself to use for nefarious purposes.
The Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <statoilhr.com> be transferred to the Complainant.
Date: July 12, 2018