WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Statoil ASA v. Intdomain, Apexed
Case No. D2017-0293
1. The Parties
The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Intdomain, Apexed of Burgenland, Austria.
2. The Domain Name and Registrar
The disputed domain name <statoilaviation.info> (the “Domain Name”) is 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 February 14, 2017. On February 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 15, 2017, 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” 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 February 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 9, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 10, 2017.
The Center appointed Geert Glas as the sole panelist in this matter on March 16, 2017. 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
Based on the Complainant’s assertions, supported by the documents enclosed as annexes to the Complaint, and undisputed by the Respondent because of its default, the Panel finds the following:
The Complainant is Statoil ASA, a corporation established under Norwegian law, and headquartered in Stavanger, Norway. The Complainant is an international energy company providing energy products and services globally, employing around 22,000 employees and having operations in 37 countries around the world.
The Complainant is the owner of hundreds of trademark registrations in several jurisdictions for the word STATOIL in connection with numerous goods and services such as petrochemical products, petroleum, transportation of crude oil, and exploration services for oil and gas. The STATOIL trademark has been registered before the Respondent’s registration of the Domain Name, namely, among others:
- Trademark STATOIL International Registration No. 730092 registered on March 7, 2000
- Trademark STATOIL Community Registration No. 003657871 registered on May 18, 2005
Also, the very first registrations of the STATOIL trademark were approved in 1974 in Norway.
The Complainant is also the owner of several hundred domain names containing the trademark STATOIL, such as <statoil.com>, <statoil.net>, <statoil.company>, and <statoil.biz>, all registered before the Respondent’s registration of the Domain Name.
According to the Registrar’s WhoIs, the Respondent has registered the Domain Name <statoilaviation.info> on December 26, 2016. From the Panel’s own research it is apparent that the Domain Name resolves to a parking website redirecting the users to advertising links.
5. Parties’ Contentions
The Complainant requests that the Domain Name be transferred to the Complainant on the following grounds:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Domain Name <statoilaviation.info> is confusingly similar to the Complainant’s trademark and trade name STATOIL as the Domain Name consists of the Complainant’s trademark and trade name STATOIL and the word “aviation”. The latter word being a descriptive term broadly relating to aircrafts and the operation of aircraft, the combination of “aviation” with the trademark and trade name STATOIL confers the message that the Domain Name relates to products and/or services provided by the Complainant and intended for use within aviation or to aircrafts operated by the Complainant. The addition of the word “aviation” thus does not impact the overall impression of the dominant part of the name “statoil”.
Moreover, considering the brand awareness of the trademark STATOIL worldwide, an Internet user will assume a connection to the Complainant in general and more specifically a connection to the Complainant’s business related to aviation.
(i) The Respondent has no rights or legitimate interests in respect of the Domain Name
The Complainant contends that (i) the Respondent is not using the Domain Name in connection with any bona fide offering of goods or services, (ii) the Respondent is not generally known by the Domain Name and
(ii) the Respondent has not acquired any trademark or service mark rights in that name or mark.
Furthermore, the Complainant affirms that the Respondent is not affiliated or related to the Complainant in any way, nor licensed or otherwise authorized to use the STATOIL mark in connection with a website or for any other purpose.
(iii) The Domain Name was registered and used in bad faith
The mark STATOIL is well-known worldwide, and was also so at the time of registration of the Domain Name. Also, the Domain Name bears no relationship to the Respondent’s name or its business.
The Complainant contends that, given the renown of the mark STATOIL, the Respondent should have been aware of the Complainant and its right in the mark STATOIL, which shows that the Respondent registered the Domain Name in bad faith. The Complainant also contends that the Respondent used the Domain Name in bad faith by adopting a passive holding following the registration and because there is no way in which the Respondent could have used the Domain Name legitimately. In addition, the Complainant claims that the Respondent has a history of registering well-known trademarks as domain names, which shows the Respondent is involved in a pattern of conduct involving abusive domain name registration for the purposes of opportunistic financial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4() of the Policy requires that the Complainant proves each and all of the following three elements in order to be successful in these proceedings:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it is the owner of numerous registered STATOIL trademarks across several jurisdictions.
First of all, the Domain Name <statoilaviation.info> incorporates the Complainant’s STATOIL trademark in its entirety and differs from the STATOIL trademark only in that the suffix “aviation” has been added. The addition of the word “aviation” in the Domain Name <statoilaviation.info> does not alleviate any confusing similarity as the term “aviation” is descriptive. It is well-established that adding a generic, descriptive or dictionary term to a registered trademark does not prevent the domain name from being confusingly similar to that registered trademark (see, e.g., Microsoft Corporation v. J. Holiday Co, WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 and Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694).
Furthermore, the addition of the generic Top-Level Domain (“gTLD) “.info” is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the Complainants’ trademarks and the Domain Name, because the gTLDs are a required element of every domain name (see, e.g., Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; and Qantas Airways Limited v. Minh Huynh, WIPO Case No. D2008-1382).
Accordingly, the Panel finds that the first element under paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, the consensus view is that, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see e.g. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Dow Jones & Company, Inc., (First Complainant) and Dow Jones LP (Second Complainant) v. The Hephzibah Intro-Net Project Limited (Respondent), WIPO Case No. D2000-0704 and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1).
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names.
Indeed, based on the evidence submitted by the Complainant, the Panel finds that there is no evidence that the Respondent has been commonly known by the Domain Name (see, e.g., Harrah’s License company, LLC v. WHOIS IF Theft Protection, WIPO Case No. D2006-1435). Further, the Complainant has never authorized the Respondent to utilize any of the Complainant’s STATOIL trademarks nor does the Complainant apparently have any relationship or association whatsoever with the Respondent.
Furthermore, the Complainant has provided evidence that the Domain Name <statoilaviation.info> resolves to a website holding “pay-per-click” content.
Moreover, the Respondent has failed to respond to the Complaint and has therefore failed to provide any evidence of its rights or legitimate interests in the Domain Name (see, e.g., The Great Eastern Life Assurance Company Limited v. Unasi Inc, WIPO Case No. D2005-1218; Stanworth Development Limited v. Mike Morgan (290436), WIPO Case No. D2006-0230).
Finally, pursuant to paragraph 10(a) of the Rules, the Panel considers itself competent to independently visit the Internet in order to obtain additional information in a default proceeding (see InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076 and Cortefiel, S.A. v. Javier García Quintas, WIPO Case No. D2000-0141). On March 21, 2017, the Panel visited the “www.statoilaviation.info” website of the Respondent in order to investigate whether any evidence could be found as to the Respondent’s rights or the legitimacy of the interest of the Respondent in the Domain Name. The Panel did not find any such evidence. To the contrary, from the Panel’s own research it is apparent that the Domain Name gives access to a parking website containing sponsored links redirecting the users to commercial sites.
In view of the above, the Panel finds that the use made by the Respondent of the Domain Name clearly indicates that the Respondent’s primary intention is to unfairly exploit the goodwill of the Complainant’s STATOIL trademark, and that such use cannot be considered to be a “legitimate and non-commercial or fair use of the domain name” in accordance with paragraph 4(a)(ii).
Based on the evidence provided by the Complainant, the Panel finds that the second element under paragraph 4(a)(ii) of the Policy has been established.
C. Registered and Used in Bad Faith
The Panel turns to the question of whether the Respondent’s Domain Name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy describes some circumstances which, if found to exist, will be evidence of the registration and use of the domain name in bad faith. They are presented in the alternative and consist of a not exhaustive list of indicia of 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 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 web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
a) Registered in Bad Faith
Given that the STATOIL trademark is widely used, the Panel is of the view that it is highly unlikely that the Respondent did not know of the Complainant’s trademark at the time the Domain Name was registered. Indeed, according to the registrar’s WhoIs, the Respondent has registered the Domain Name <statoilaviation.info> on December 26, 2016, more than 40 years after the Complainant’s first STATOIL trademark registrations. Moreover, previous UDRP panels have already determined that the STATOIL trademark is well-known (see e.g., 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).
Therefore, under these circumstances, the Panel is of the opinion that the Respondent could not have been unaware of the Complainant’s rights in the STATOIL trademark and could not have been unaware of the STATOIL trademark at the time of registering the Domain Name (see Statoil ASA v. Daniel MacIntyre, Ethical Island, WIPO Case No. D2014-0369; Lego Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494).
Several UDRP panels have ruled that bad faith is established where a complainant’s trademark has been shown to be well-known or in wide use at the time of registering a domain name (see e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113; Caesar World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; and Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435).
Consequently, the Panel finds that the Respondent registered the Domain Name in bad faith.
b) Used in Bad Faith
Firstly, the Domain Name bears no relationship whatsoever to the Respondent’s name or business and in fact has no other meaning except for being a link to the name and the trademark of the Complainant. In this regard, previous UDRP panels have found that where a domain name is so obviously connected with a complainant, its very use by someone with no connection with said complainant suggests opportunistic bad faith (see e.g. Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Legacy Health System v. Nijat Hassanov, WIPO Case No. D2008-1708).
As the Domain Name is “parked free” and used to generate sponsored links or “related searches”, the Panel finds that the Respondent attempts to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s trademark. Previous panels have recognized that the use of a third party’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith as a classic illustration of the conduct condemned by paragraph 4(b)(iv) of the Policy above (see Volvo Trademark Holding AB v. Unais, Inc., WIPO Case No. D2005-0556). It does not matter whether the Respondent is the beneficiary of these commercial gains or whether the commercial gains accrue elsewhere. It is sufficient that a third party stands to reap the profits of the Respondent’s wrongful conduct (see Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912).
The above elements lead the Panel to conclude that, by using the Domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s STATOIL mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
Finally, the Respondent’s failure to respond to the Complainant’s contentions and, as a result, to provide any evidence whatsoever of any good faith registration or use of the Domain Name is an additional indication of bad faith (News Group Newspapers Limited and News Network Limited v. Momm Amed la, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598; America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460).
In light of the above, the Panel concludes that the Domain Name was registered and is being used in bad faith.
Accordingly, the Panel finds that the third element under paragraph 4(a)(iii) of the Policy has been established.
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 <statoilaviation.info> be transferred to the Complainant.
Date: March 30, 2017