WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA v. WhoisGuard Protected, WhoisGuard, Inc / Svreer Kennoth
Case No. D2018-0965
1. The Parties
The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc of Panama, Panama / Svreer Kennoth of Stavanger, Norway.
2. The Domain Name and Registrar
The disputed domain name <statoil.observer> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2018. On May 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 2, 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 May 8, 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 May 9, 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 May 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2018.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on June 20, 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 extensive operations worldwide. Its headquarter is in Norway, and it is one of the leading providers globally of energy products and services.
The trademark STATOIL enjoys protection through registrations worldwide, the first one was approved in 1974 (Norwegian Trademark reg. no. 90221, now ceased). A list containing examples of trademark registrations is annexed to the Complaint, such as International Registration reg. no. 730092 STATOIL (registered on March 7, 2000), International Registration no. 1220682 STATOIL (registered on December 5, 2013) and European Union Trademark reg. no. 003657871 STATOIL (registered on May 18, 2005).
Furthermore, the Complainant is the owner of domain names throughout the world, approximately 1,000 domain names, comprising the STATOIL trademark distributed among generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”).
Pursuant to the Registrar, the Domain Name was registered on April 19, 2018.
At the time of filing the Complaint and at the time of drafting this decision, the Domain Name redirects to the Complainant’s official web page.
5. Parties’ Contentions
The Complainant provides trademark registrations, and submits that its trademark is famous worldwide. The Complainant argues that the Domain Name is identical to the Complainant’s trademark. The Domain Name incorporates the Complainant’s trademark in its entirety. The gTLD, “.observer”, must be excluded from consideration as gTLDs have no legal significance.
The Complainant argues further that the Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the STATOIL trademark. The Respondent is not using the Domain Name in connection with any bona fide offering of goods or services. The Respondent redirects the Domain Name to the Complainant’s official website. This is not bona fide use in the meaning of the Policy, as the Respondent has no permission from the Complainant.
As to bad faith, the Complainant argues that the Respondent must have been aware of the Complainant’s famous trademark at the time of the registration of the Domain Name. The fact that the Respondent has redirected the Domain Name to the Complainant’s official website clearly shows that the Respondent is aware of the Complainant and further underlines the bad faith of the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark STATOIL.
The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name is identical to the Complainant’s trademark.
For the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the gTLD “.observer”.
The Panel finds that the Domain Name is confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has not granted any authorization to the Respondent to register a domain name containing its trademark or otherwise make use of its mark. The Respondent is not affiliated or related to the Complainant in any way. There is no evidence in the case file suggesting that the Respondent uses the Domain Name in connection with any bona fide offering of goods or services.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
To the Panel it is more likely than not that the Respondent was aware of the Complainant’s trademark and its business when it registered the Domain Name. This is backed up by the fact that the Respondent redirects the Domain Name to the Complainant’s official web page.
Based on the case file and a lack of explanation from the Respondent, the Panel finds that the Respondent registered and is using the Domain Name with the intention of selling to the Complainant or a competitor, or to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. The Panel finds that the Respondent is disrupting the Complainant’s business. The bad faith is supported by the fact that the Respondent has not responded to the Complaint.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the paragraph 4(a)(i) 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 <statoil.observer> be transferred to the Complainant.
Date: June 28, 2018