WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA. v. Deborah R. Heacock
Case No. DME2013-0011
1. The Parties
The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Deborah R. Heacock of Seattle, Washington, United States of America.
2. The Domain Name and Registrar
The disputed domain name <statoil.me> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2013. On August 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 24, 2013, 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.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the Policy) as adopted by doMEn, d.o.o. (doMEn), the registry operator of the .ME TLD on April 30, 2008; the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules) approved by doMEn on October 1, 2012; and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2013.
The Center appointed James A. Barker as the sole panelist in this matter on September 30, 2013. 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 operations worldwide. The Complainant has been in business for over 40 years and is a provider energy of products and services.
The Complainant has registered marks for STATOIL in a large number of jurisdictions worldwide. These include an International Registration No. 730092. a Community trademark No. 003657871, and United States trademarks Nos. 1730486 registered in 1992 and 3953083 registered in 2011.
The Complainant is also the owner of several hundred domain names containing the trademark STATOIL. The Complainant operates a website at “www.statoil.com”.
Previous UDRP panels have found that the STATOIL trademark is well-known. These include Statoil ASA v. Weiwei Qiu / PrivacyProtect.org, WIPO Case No. D2011-1752; Statoil ASA v. Domain Admin/ Management SO Hkg, WIPO Case No. D2012-2392; Statoil ASA and Statoil Fuel & Retail Aviation AS v. NA – Claudio Russo, WIPO Case No. D2013-0963.
The disputed domain name was registered by the Respondent on March 15, 2013. The case file indicates that on August 30, 2013 the disputed domain was not used in connection with an active website but was advertised for sale.
The Respondent has been a previous unsuccessful respondent under the Policy. These include the case of Eveready Battery Company, Inc. v. Deborah R. Heacock, WIPO Case No. D2013-0463, in which the facts, in this Panel’s view, are not dissimilar to the current proceedings. The Complainant also refers to Vanguard Trademark Holdings USA, LLC v. Deborah R. Heacock, NAF Claim No. 1509070.
5. Parties’ Contentions
The Complainant makes the following allegations in accordance with paragraph 4(a) of the Policy.
The disputed domain name is identical to Complainant’s business name and trademark STATOIL.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the Complainant’s 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 disputed domain name, and has not acquired any trademark or service mark rights in that name or mark.
The Complainant provided evidence that, on August 23, 2013, the disputed domain name was listed for sale at the domain name marketplace Sedo.com. The corresponding website “www.statoil.me” then resolved to a Sedo.com parking page containing pay-per-click advertising. The links on that website sought to attract visitors to click on sponsored links related to car rental. The Complainant claims that the configuration of the website for car rental links is a clear attempt to free-ride on the former and now licensed business of Complainant, namely the provision of car rental services in connection with petrol stations. These services are very well-known at least in Scandinavia as provided under the STATOIL mark.
The Complainant claims to have been contacted by the Respondent by email on August 20, 2013, in an attempt by the Respondent to sell the disputed domain name to Complainant for USD 5,000. The Complainant states that it is not clear whether the e-mail message of August 20, 2013 was sent directly from the Respondent herself or from a domain name broker engaged by the Respondent.
The Respondent has registered and used the disputed domain name in bad faith. The Complainant’s mark is well known worldwide, and was well known at the time of registration. The disputed domain name bears no relationship to the Respondent’s name or its business. The disputed domain name has no other meaning except as the name and trademark of the Complainant.
It is clear from UDRP case-law that bad faith exists where a domain name is so obviously connected with the Complainant that its very use by someone with no connection with the Complainant suggests opportunistic bad faith. Bad faith on this ground is present where the Respondent, such as here, knowingly uses the Complainant's trademark for a website that provides multiple links related to the business of the Complainant. The Respondent is then unfairly and opportunistically benefiting from the goodwill associated with the Complainant's mark.
In further support of its claims of bad faith, the Complainant refers to the Respondent’s apparent offer to sell the disputed domain name. The Complainant also claims that the Respondent has also been subject to a previous UDRP decision, namely Vanguard Trademark Holdings USA, LLC v. Deborah R. Heacock, NAF Claim No. 1509070, a dispute which was also lost by Respondent. The Complainant states that this shows that the Respondent has engaged in a pattern of registering domain names to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, as mentioned in the Policy as an example of bad faith, paragraph 4(b)(ii).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. These elements are discussed in turn below.
A. Identical or Confusingly Similar
The Complainant provided evidence of its registered rights and, as such, the Panel finds that the Complainant has established those rights. Those rights have been recognized in previous UDRP decisions under the Policy, cited above.
The Panel also finds that the disputed domain name is relevantly identical to the Complainant’s registered mark.
For these reasons, the Panel finds that the Complainant has established this first element.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests. Once a Complainant establishes a prima facie case against the Respondent under this ground, the burden shifts to the Respondent to rebut it. The overall burden of proof remains with Complainant. See e.g. Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.
The Complainant has established a prima facie case against the Respondent in this case. The Complainant provided evidence of its own rights, and evidence against the Respondent based on the content of the website at the disputed domain name, an apparent email in connection with the sale of the dispute domain name, and previous UDRP proceedings in which the Respondent has been unsuccessful. The Respondent has chosen not to respond to this evidence and the arguments made by the Complainant. There is little in the content of the website that suggests the Respondent has any legitimate connection with the term “statoil”. Given the recognized fame of the Complainant’s mark, it is also difficult to conceive that the Respondent might have a right or legitimate interest. In the Panel’s view, there is no other evidence in the case file which contradicts the case made by the Complainant.
For these reasons, the Panel finds that the Complainant has established this second element.
C. Registered and Used in Bad Faith
The final matter which the Complainant must establish is that the disputed domain name was registered, and is being used in bad faith. The Complainant argues that the Respondent has demonstrated bad faith because, based on the fame of Complainant’s marks, the Respondent was aware or should have been aware of them. The Panel finds these arguments persuasive, and the Complainant provided various evidence to support them.
As noted above, the Complainant’s mark is registered in many jurisdictions and has previously been found by UDRP panels to be well-known. The Complainant has a number of marks registered in various jurisdictions, prior to the registration of the disputed domain name, and has a presence on the Internet at various domain names.
The fame of the Complainant’s mark, the links on the website at the disputed domain name, and the Respondent’s previous history of registering well-known trademarks suggests that, in this case, the Respondent was aware of the Complainant when she registered the disputed domain name. While the offer for sale of the disputed domain name did not clearly come from the Respondent personally, the circumstances of this case suggest that the offer was at least authorized by the Respondent. The offer of USD 5,000 appears self-evidently in excess of any out-of-pocket expenses the Respondent might have incurred. In addition, the Respondent has advertised (or allowed the advertisement of) the disputed domain name for sale and allowed sponsored links to appear on the website at the disputed domain name associated with the business of the Complainant.
All of this evidence is indicative that the Respondent was motivated to take unfair advantage of the Complainant’s trademark. The Panel therefore finds that the Respondent registered and has used the disputed domain name in bad faith.
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.me> be transferred to the Complainant.
James A. Barker
Date: October 14, 2013