WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA. v. Allan
Case No. D2013-2123
Complainant is Statoil ASA. of Stavanger, Norway, represented by Valea AB, Sweden.
Respondent is Allan of London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names <statoilmailling.com>, <statoiltt.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2013. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 9, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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” 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 6, 2014.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on January 14, 2014. 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
Complainant is an international provider of energy products and services with legal domicile in Stavanger, Norway.
Complainant has provided evidence that it is the registered owner of numerous trademarks STATOIL, including the following:
- International Trademark Registration No. 730092,STATOIL (Word mark), Registration Date: March 7, 2000, Status: Active;
-Community Trademark Registration No. 003657871 STATOIL (Word mark), Registration Date: May 18, 2005, Status: Active.
The disputed domain names <statoilmailling.com> and <statoiltt.com> were registered on November 7, 2013 and November 11, 2013, respectively; by the time of rendering this Decision, they redirect to a website at “www.bing.com” which is a search engine provided by Microsoft Corporation displaying numerous hyperlinks to third parties’ websites including Complainant itself.
Complainant requests that the disputed domain names be transferred to Complainant.
5. Parties’ Contentions
Complainant asserts that it has been in business for over 40 years and is meanwhile one of the leading providers of energy products and services with 21,000 employees and extensive operations worldwide. Complainant further claims that its STATOIL trademark is highly well-known.
Complainant suggests that the disputed domain names are at least confusingly similar to Complainant’s STATOIL trademark, because the additional elements “maillling” and “tt” do not take away the confusing similarity of the disputed domain names with Complainant’s STATOIL trademark as they are no more than descriptive components which can falsely mislead e-mail recipients or Internet users into believing that e-mails or information provided online originate, i.e., from an office of Complainant on Trinidad and Tobago.
Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain names since (1) Respondent is not affiliated or related to Complainant in any way, or licensed or otherwise authorized to use the STATOIL trademark, (2) Respondent is not using the disputed domain names in connection with any bona fide offering of goods or services, is not generally known by the disputed domain names, nor has Respondent acquired any trademark or service mark rights in that name or mark, and (3) it must be assumed that Respondent’s intention of registering the disputed domain names has been either to sell them to Complainant or to use them otherwise for financial gain, i.e., by attracting Internet users who assume that the disputed domain names are owned by or at least affiliated with Complainant.
Finally, Complainant asserts that the disputed domain names were registered and are being used in bad faith since (1) the STATOIL trademark is well-known worldwide and was so also at the time of the registration of the disputed domain names, (2) the disputed domain names bear no relationship to Respondent’s name or business, (3) the disputed domain names have no other meaning except for referring to Complainant’s name and trademark and there is no way in which the disputed domain names could be used legitimately.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That 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.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a Response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain names <statoilmailling.com> and <statoiltt.com> are confusingly similar with the STATOIL trademark in which Complainant has shown to have rights.
The disputed domain names incorporate the STATOIL trademark in its entirety. It has been held in numerous UDRP decisions and has meanwhile become a consensus view among UDRP panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9) that the addition of a generic or descriptive term or geographical wording to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Accordingly, the mere addition of the generic term “mailling” (which is an obvious typo-squatting of “mailing”) and the geographical wording “tt” (referring to the Republic of Trinidad and Tobago) is not capable to dispel the confusing similarity arising from the incorporation of Complainant’s STATOIL trademark in the disputed domain names.
Therefore, the first element under the Policy set forth by paragraph 4(a)(i) in the case at hand is fulfilled.
B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain names in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain names, nor can it be found that Respondent makes a legitimate, noncommercial or fair use without intent for commercial gain.
Complainant asserts, and it has been confirmed by previous UDRP panels (i.e.., Statoil ASA v. IVAN RASHKOV, WIPO Case No. D2013-1583; Statoil ASA v. Domain Admin/Management SO Hkg, WIPO Case No. D2012-2392), that the STATOIL trademark has been in use worldwide for many years and has meanwhile become a highly well-known trademark. It is, therefore, reasonable to argue that Respondent had knowledge of Complainant’s STATOIL trademark at the time of the registration of the disputed domain names and that the latter obviously alludes to Complainant’s STATOIL trademark and business.
At the same time, Respondent obviously has not been authorized to use Complainant’s STATOIL trademark, neither as a domain name nor on Respondent’s website or in any other way. Also, there is no other reason apparent as to why Respondent needs to rely on the designation “statoil” in order to create domain names and subsequently to set up an Internet presence since it is neither a pure generic word nor it seems to be in relationship i.e., with Respondent’s name or business or the like.
The Panel notes that so far the disputed domain names have apparently not yet been made use of by Respondent since by the time of rendering this Decision, they simply redirect to a website at “www.bing.com” which is a search engine provided by Microsoft Corporation displaying numerous hyperlinks to third parties’ websites including Complainant itself, but is not a typical standardized pay-per-click (“PPC”) site. However, even such more of a “passive holding” of the disputed domain names in itself is not capable of creating any rights of Respondent therein (see, i.e., Pepperdine University v. BDC Partners, Inc., WIPO Case No. D2006-1003; Archipelago Holdings LLC, v. Creative Genius Domain Sales and Robert Aragon d/b/a/ Creative Genius Domain Name Sales, WIPO Case No. D2001-0729).
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not reply to Complainant’s allegations as they were included in the Complaint duly notified to Respondent by the Center on December 16, 2013, nor did it come forward with any other reasonable explanation that might have thrown a different light on Respondent’s possible rights or legitimate interests in the disputed domain names.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain names were registered and are being used by Respondent in bad faith.
The Panel concludes that by the time of registering the disputed domain names, Respondent knew of Complainant’s STATOIL trademark because (1) the STATOIL trademark has been deemed well-known at least for the purpose of this proceeding (see Section 6.B. above) and (2) Respondent has registered at least two domain names including Complainant’s STATOIL trademark, one of which combines a typical typo-squatting version of the generic word “mailing”. In addition, as has been argued also by Complainant, the disputed domain names apparently have no other meaning except for referring to Complainant’s name and trademark and Respondent has nothing brought forward nor are any indications given to the case at hand as to how the disputed domain names could be used by Respondent in a legitimate way.
Against this background, the Panel takes the view that even the kind of “passive holding” of the disputed domain names by the time of rendering this Decision does not at all prevent the finding of bad faith on the part of Respondent, but that on the contrary the examination of the circumstances of the case at hand are rather indicative thereof (see WIPO Overview 2.0 paragraph 3.2).
In this context, the Panel also takes into account that (1) Respondent obviously provided false WhoIs information since the delivery of the Complaint sent to Respondent via DHL on December 16, 2013 failed because of an incorrect address and phone number and (2) Respondent kept silent on all of Complainant’s contentions as they were included in the Complaint. These facts taken all together throw a light on Respondent’s behavior which further supports the finding of a registration and use of the disputed domain names in bad faith.
Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) 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 <statoilmailling.com> and <statoiltt.com> be transferred to Complainant.
Stephanie G. Hartung
Date: January 23, 2014