WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Statoil ASA (Statoil) v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Fredrik Rasmussen

Case No. D2016-2240

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, DomainsByProxy.com of Scottsdale Arizona, United States of America / Fredrik Rasmussen of Dagenham, Essex, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

2. The Domain Name and Registrar

The disputed domain name <statoilco.org> 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 November 3, 2016. On November 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 2016, 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 Complainant filed an amendment to the Complaint on November 7, 2016. The Center sent an email communication to the Complainant on November 7, 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 a second amendment to the Complaint on November 8, 2016.

The Center verified that the Complaint together with the amendments to the Complaint (hereinafter referred altogether as 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 November 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 1, 2016.

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on December 6, 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 Statoil ASA. Statoil is an international energy company with approximately 22,000 employees and extensive operations worldwide. It has been in business for 40 years and is one of the leading providers globally of energy products and services.

The Complainant submitted evidence that it holds trademark rights for STATOIL. The trademark rights were granted for both word and figurative trademarks, in several classes and in numerous jurisdictions all over the world, including the United Kingdom (where the Respondent has his address). The rights include international trademarks and European Union Trademarks, (among others Trademark STATOIL International Trademark Registration No. 730092, registered on March 7, 2000, and Trademark STATOIL European Union Trademark Registration No. 003657871, registered on May 18, 2005 (the “Trademarks”)).

The Complainant indicates it is an owner of several hundred domain names containing the term “statoil”.

The Complainant also brings to the Panel’s attention that it has been established in previous UDRP decisions, e.g. Statoil ASA v. Weiwei Qiu / PrivacyProtect.org., WIPO Case No. D2011-1752 (<statoilpetroleum.com>) and Statoil ASA v. Domain Admin/ Management SO Hkg, WIPO Case No. D2012-2392 (<statoilcareers.com>), that STATOIL is considered a well-known trademark.

The Respondent registered the disputed domain name <statoilco.org> on May 1, 2016, well after the Complainant secured rights in the Trademarks. The evidence presented by the Complainant as well as the Panel’s own research show that the disputed domain name <statoilco.org> does not currently resolve to an active website or other online presence.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant contends that the disputed domain name <statoilco.org> is highly similar to the Trademarks, since it directly and entirely incorporates the word element “statoil” used in the Trademarks. The Complainant also contends that the addition of the term “co” (English abbreviation of the world “company”) is descriptive in relation to the Complainant who is a company, and the domain name will be understood by the users as referring to the Complainant’s business.

The Complainant further contends that confusing similarity exists when well-known trademarks are paired with different kinds of prefixes and suffixes, quoting UDRP decision in Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488 in support of this statement. The Complainant also refers to other UDRP decisions where the transfer of domain names incorporating trademarks and generic words was ordered.

The Complainant also indicates that the generic Top-Level Domain (“gTLD”) “.org” should not be taken into account when assessing the similarity of the domain name and the trademark right.

Finally, the Complainant contends that the addition of the word element “co” does not increase distinctiveness of the disputed domain name, and could not serve to distinguish the disputed domain name from the Complainant’s Trademarks and trade name. In result, according to the Complainant, the disputed domain name must be considered as confusingly similar to the Trademarks.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant asserts that it has rights in the name and Trademarks STATOIL and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant also affirms that the Respondent has not been licensed, permitted or authorized by the Complainant to use its Trademarks, or to seek registration of any domain name incorporating said Trademarks.

In addition, the Complainant contends that the disputed domain name <statoilco.org> does not correspond to the name of the Respondent, and that, to the best knowledge of the Complainant, the Respondent is not commonly known as “statoilco”.

Finally, the Complainant claims that it did not find any fair or legitimate noncommercial use of the disputed domain name <statoilco.org>.

(c) The disputed domain name was registered and is being used in bad faith.

The Complainant submits that the disputed domain name was registered and used in bad faith by the Respondent.

The Complainant contends that the Trademarks are well-known worldwide and predate the registration of the disputed domain name. Therefore, the Complainant believes that the Respondent must have been aware of the Trademarks at the time of registration of the disputed domain name.

The Complainant explains that according to UDRP decisions (in particular Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (<veuveclicquot.org>) and Legacy Health System v. Nijat Hassanov, WIPO Case No. D2008-1708 (<legacyhealthsystem.com>)) bad faith exists where a domain name is so obviously connected with the complainant that its very use by someone with no connections with the complainant suggests opportunistic bad faith.

The Complainant also indicates that already the registration of the domain name, followed by its passive holding when there is no way in which it could be used legitimately, can amount to bad faith (quoting e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).

First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to STATOIL, including international trademarks.

Secondly, the Panel finds that the disputed domain name <statoilco.org> fully incorporates the word element of the Complainant’s STATOIL Trademarks, in which the Complainant has exclusive rights. The Panel also finds that inserting the addition “co“ in the disputed domain name does not impact the similarity between the disputed domain name and the word element used in the Trademarks. The Panel also notes that the gTLD “.org” is typically disregarded under the first element of confusing similarity test.

On the basis of the foregoing findings, in accordance with paragraph 4(a)(i) of the Policy, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s Trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent is commonly known by the name “statoilco” or is in any way affiliated with the Complainant or authorized or licensed to use the Trademarks or to seek registration of any domain name incorporating the Trademarks.

After having examined the website operating under the disputed domain name, as evidenced by the Complainant and the Panel’s own research and findings, this Panel finds that the website currently does not show any activities.

Therefore, and in view of the evidence of the Complainant, this Panel finds that there is no evidence showing that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services.

For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith”.

First of all, with regard to the Respondent’s registration of the disputed domain name, after reviewing the evidence presented by the Complainant, this Panel believes that the Respondent must have known and been aware of the Complainant’s rights on the prior STATOIL Trademarks and the associated products and services at the time of registration of the disputed domain name. Similar approach was also adopted in the previous UDRP decisions concerning the STATOIL Trademarks (e.g. Statoil ASA v. Daniel MacIntyre, Ethical Island, WIPO Case No. D2014-0369 (<statoil.holdings>)).

Furthermore, this Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s use of the disputed domain name.

After having examined the website operating under the disputed domain name, as evidenced by the Complainant and the Panel’s own research and findings, the Panel finds that the website currently does not show any activities. The Panel has therefore considered whether, in the circumstances of this particular case, as set out under Section 5(A)(c) above, whether the passive holding of the disputed domain name by the Respondent amounts to the Respondent acting in bad faith. The Panel concludes that it does. The Panel agrees with the approach adopted in earlier UDRP decisions (e.g. Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (<veuveclicquot.org>) 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.

In light of the foregoing, this Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith under paragraph 4(a)(iii) of the Policy.

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 <statoilco.org> be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelist
Date: December 12, 2016