WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Statoil ASA (“Statoil”) v. Registration Private, Domains By Proxy, LLC / Jenny Tran

Case No. D2016-1963

1. The Parties

The Complainant is Statoil ASA (“Statoil”) 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”) / Jenny Tran of San Jose, California, United States.

2. The Domain Name and Registrar

The disputed domain name <no-statoil.com> is registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2016. On September 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 29, 2016 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 September 30, 2016.

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 October 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2016.

The Center appointed Stefan Abel as the sole panelist in this matter on October 31, 2016. 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 a Norwegian multinational energy company founded in 1972. Today, it is active in 37 countries and employs around 22,000 employees.

The Complainant owns numerous registered trademarks that contain the name “statoil” in countries around the globe, e.g., the trademark STATOIL, International registration number 730092, registered on March 7, 2000.

The Complainant maintains several hundred domain names including <statoil.com> and <statoilpetroleum.com>.

The disputed domain name <no-statoil.com> was registered on August 11, 2016. It is currently inactive.

In the course of the Center’s notification of the Complaint it turned out that the postal address of Jenny Tran indicated in the Whois-information provided by the Registrar was not correct and the Written Notice was undeliverable.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain name <no-statoil.com> is highly similar to the well-known trademark and trade name STATOIL. The word “no” linked to the trademark by a hyphen can be understood as “that there is no Statoil or a no to Statoil”. It can also be understood a negation or as an abbreviation for the word “number” and must be seen as secondary in the context with the Complainant’s trademark. The addition of the word “no” does not impact the overall impression of the dominant part of the name STATOIL but rather conveys the idea that the disputed domain name is related to the Complainant. According to the Complainant, former UDRP panels have repeatedly established that confusing similarity exists when well-known trademarks are paired with a prefix and suffix or the word “no”, referencing, in particular, Wine & Spirit Education Trust (WSET) v. Domains by Proxy, Inc/Larry Johnson, WIPO Case No. D2010-0547. Additionally, the Complainant asserts that the word “no” is of a generic or descriptive nature and does not distinguish the disputed domain name from the Complainant’s trademark. Therefore, an Internet user or the public would most probably assume some connection to the Complainant, i.e.,that the disputed domain name <no-statoil.com> will lead to a website related to the Complainant and its business or that an email address using the disputed domain name originates from the Complainant. The generic Top-Level Domain (“gTLD”) “.com” is not to be taken into account.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is neither related to nor authorized by the Complainant to use the trademark. The Complainant expresses concern that the disputed domain name is or will be used for illegal activities and asserts that the Respondent’s motivation to register the disputed domain name was to use it for financial gain. According to the Complainant, the MX-records set up for the disputed domain name indicate a potential risk of use of the disputed domain name in the distribution of fraudulent emails.

The Complainant alleges that the Respondent registered and used the disputed domain name in bad faith. The trademark STATOIL has been extensively and globally promoted and was well-known at the time of registration. The disputed domain name is not related to the Respondent’s name or its business. The disputed domain name has no other meaning except for being the Complainant’s trade name and trademark. The Respondent knew or must have known about the trademark. According to the Complainant, the disputed domain name is so obviously connected with the Complainant that its very use by someone with no connection to the Complainant constitutes bad faith. The registration of the disputed domain name followed by a passive holding and the lack of a legitimate use of the disputed domain name suffices to constitute bad faith use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy provides for a transfer or cancellation of the disputed domain name if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:

(i) the Respondent’s 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 has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out certain circumstances which, in particular, but without limitation, shall be evidence of registration and use of the disputed domain name in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name <no-statoil.com> is confusingly similar to the Complainant’s trademark or service mark.

The gTLD “.com” is excluded from consideration in this case as it is the top level part of the disputed domain name and technically required, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 1.2.

The disputed domain name contains the Complainant’s trademark in its entirety. However, it is not identical to the Complainant’s trademark since the word “no” is added and linked to the trademark by a hyphen.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

The panel finds that this element is satisfied. “NO” is a common abbreviation referring to Norway, where the Complainant is located. It is separated by a hyphen from the Complainant’s trademark and company name “Statoil”. Internet users aware of the Complainant’s country might therefore understand the element “no” simply as a reference to the country where the Complainant is located. The element “no”, perceived as an indication of the Complainant’s country, lacks any distinctive character.

As a general rule, the addition of a generic term to a domain name, consisting of a trademark, rarely excludes the finding of confusing similarity under the Policy. This finding is consistent with a number of previous UDRP decisions (see, e.g., Chocoladenfabrik Lindt & Sprüngli AG v. Contact Privacy Inc. Customer 0137742104 / ICS INC., WIPO Case No. D2015-0625).

B. Rights or Legitimate Interests

The Panel finds that the Complainant has met the element of paragraph 4(a)(ii) of the Policy. There is no indication that the Respondent is licensed or otherwise authorized by the Complainant to use its registered trademark or service mark or to register the disputed domain name.

The Complainant has successfully made out a prima facie case by stating that the Respondent is neither affiliated nor related to the Complainant and lacks any authorization to use the Complainant’s trademark or service mark. “STATOIL” does not have a purely generic or descriptive meaning. “STATOIL” appears to have no other meaning but to designate the Complainant’s business. The Complainant has been using the term as a trademark and service mark for well over 40 years.

The evidentiary burden therefore shifts to the Respondent to come forward with appropriate allegations and evidence demonstrating rights or legitimate interests in the disputed domain name. See, e.g., Accor v. Eren Atesmen, WIPO Case No. D2009-0701. The Respondent has failed to do so. The Respondent is not using the disputed domain name in connection with any bona fide offering of goods or for noncommercial purposes. The Respondent is not known by the disputed domain name and has failed to demonstrate the acquisition of any trademark or service mark in the name “Statoil”.

C. Registered and Used in Bad Faith

The Panel finds that the elements of paragraph 4(a)(iii) of the Policy are met.

The Respondent’s motivation to register the disputed domain name is not obvious. The Respondent has not actively used the domain name which resolves to a website without any content and the Respondent has not made any allegations.

Previous UDRP panels have nevertheless concluded bad faith registration and use in cases in which the respondent has remained passively, e.g., no active use of the disputed domain name, no attempt to sell or contact the trademark holder. Panels have relied on circumstances exceeding the non-exhaustive list of paragraph 4(b) of the Policy to determine whether the respondent was acting in bad faith. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003;Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131;Westdev Limited v. Private Data, WIPO Case No. D2007-1903;Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273.

UDRP panels have found the following circumstances, inter alia, to be indicative of bad faith when cumulatively coinciding with further elements indicating bad faith:

(i) The complainant’s trademark or service mark is well-known (Jupiters Limited v. Aaron Hall, supra; Malayan Banking Berhad v. Beauty, Success & Truth International, supra; Intel Corporation v. The Pentium Group, supra; Telstra Corporation Limited v. Nuclear Marshmallows, supra; Statoil ASA v. Daniel MacIntyre, Ethical Island, WIPO Case No. D2014-0369; Statoil ASA v. Ivan Rashkov, WIPO Case No. D2013-1583).

(ii) The domain name is a coined name which is neither descriptive nor generic and solely used to designate the complainant’s business (Statoil ASA v. Daniel MacIntyre, Ethical Island, supra; Statoil ASA v. Ivan Rashkov, supra).

(iii) The respondent knew or ought to have known of the complainant’s trademark or service mark (Jupiters Limited v. Aaron Hall, supra; Statoil ASA v. Daniel MacIntyre, Ethical Island, supra).

(iv) The respondent has failed to explain as to why the domain name was chosen (Jupiters Limited v. Aaron Hall, supra; Intel Corporation v. The Pentium Group, supra; Ladbroke Group Plc v. Sonoma International LDC, supra; Telstra Corporation Limited v. Nuclear Marshmallows, supra; Statoil ASA v. Daniel MacIntyre, Ethical Island, supra; Statoil ASA v. Ivan Rashkov, supra).

(v) The respondent has failed to submit accurate contact information and/or has concealed its identity after the initiation of a UDRP proceeding (Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696; Ladbroke Group Plc v. Sonoma International LDC, supra; Malayan Banking Berhad v. Beauty, Success & Truth International, supra; Telstra Corporation Limited v. Nuclear Marshmallows, supra; Statoil ASA v. Ivan Rashkov, supra).

The Panel finds that all of these circumstances have been met and that the presence of all of these elements sufficiently demonstrates bad faith registration and use.

The Complainant’s trademark and service mark is well-known around the globe. The Complainant has used the trademark and service mark for its business activities for more than 40 years and in various countries. A simple Internet search reveals that the Complainant is among the biggest energy providing companies in the world. The Complainant’s trademark and service mark is non-descriptive and a coined term solely used for the Complainant’s business. Additionally, previous UDRP panels have also found that the Complainant’s trademark STATOIL is well-known (e.g., Statoil ASA v. Ivan Rashkov, supra and Statoil ASA v. Daniel MacIntyre, Ethical Island, supra).

The Respondent has failed to explain why the Complainant’s trademark and service mark was chosen as a domain name. The Internet users are likely to be confused about the origin of the disputed domain name and may assure that the disputed domain name is linked to the Complainant’s business, given that it incorporates the Complainant’s mark with “NO”, the common abbreviation for Norway. The Respondent has not displayed any bona fide interest in using the disputed domain name. The domain name resolves to a website without any content.

Moreover, while a registrant may use a proxy or privacy service when registering the domain name, the registrant is required by Section 3.7.7.1 of the ICANN Registrar Accreditation Agreement (“RAA”) to provide to the registrar accurate and reliable contact details, including a correct postal address. The Panel notes that the Registrar has revealed the underlying registrant behind the proxy as “Jenny Tran” and that the Respondent has failed to provide a correct postal address.

The Panel considers that the ICANN RAA requests this information to preserve accountability for unlawful acts in the Internet, including but not limited to proceedings in cases of alleged abusive domain name registration. Furthermore, the Panel acknowledges that Section 3.7.7.2 of the ICANN RAA indicates that the lack of complete, accurate and reliable contact information may even constitute a material breach and, ultimately, may lead to the cancellation of the registered domain name.

In light of the non-exhaustive character of the examples in paragraph 4(b) of the Policy, the Panel therefore infers, from the Respondent’s failure to comply with the provision set out in Section 3.7.7.1 of the ICANN RAA coupled with the circumstances mentioned before, bad faith registration and use with respect to the disputed domain name.

7. Decision

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 <no-statoil.com> be transferred to the Complainant.

Stefan Abel
Sole Panelist
Date: November 18, 2016