WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd.

Case No. D2014-0637

1. The Parties

The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.

The Respondent is Giovanni Laporta of Toddington, United Kingdom of Great Britain and Northern Ireland ("UK"), Yoyo.Email Ltd. of Dunstable, UK.

2. The Domain Name and Registrar

The disputed domain name <statoil.email> 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 April 16, 2014. On April 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2014, 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 12, 2014. In accordance with paragraph 5(a) of the Rules, the due date for the response was June 1, 2014. The Center granted the Respondent an extension until June 10, 2014 to file any response. An initial response was filed with the Center on May 31, 2014. A second response was filed on June 9, 2014. Furthermore, the Respondent filed supplemental submissions with the Center on July 7, 2014 and July 12, 2014.

The Center appointed Brigitte Joppich, Linda Chang and David E. Sorkin as panelists in this matter on July 4, 2014. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.

4. Factual Background

The Complainant was established more than 40 years ago and is an international energy company with 21,000 employees, operating in 34 countries worldwide.

The Complainant is the registered owner of several hundred trademark registrations for STATOIL, inter alia European Community trademark registration no. 3657871 for STATOIL, registered on May 18, 2005 in classes 1, 4, 17, 35, 37, 39, 40, and 42; and International Trademark registration no. 730092 for STATOIL, registered on March 7, 2000 in classes 1, 4, 17, 39, and 42 (hereinafter referred to as the "STATOIL Marks"). The STATOIL Marks have already been found to be "well-known" by previous panels in proceedings under the UDRP (Statoil ASA v. Weiwei Qiu / PrivacyProtect.org, WIPO Case No. D2011-1752 (<statoilpetroleum.com>); Statoil ASA v. Domain Admin/ Management SO Hkg, WIPO Case No. D2012-2392 (<statoilcareers.com>); Statoil ASA. v. Allan, WIPO Case No. D2013-2123 (<statoilmailling.com> et al.)). Furthermore, the Complainant is the owner of a domain name portfolio containing approximately 1,000 domain names comprising the STATOIL Marks.

The disputed domain name was registered on March 29, 2014 and has not been used in connection with an active website so far.

5. Parties' Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.

(1) The disputed domain name is identical or highly similar to the STATOIL Marks and trade name STATOIL since the domain name contains the Complainant's trademark and trade name STATOIL, while the generic Top-Level Domain (gTLD) ".email" is irrelevant due to its lack of legal significance.

(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name, as he is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the STATOIL Marks in connection with a website or for any other purpose, as he is not using the disputed domain name in connection with any bona fide offering of goods or services, as it is not generally known by the disputed domain name, as he has not acquired any trademark or service mark rights in that name or mark, and as he is not commonly known by the disputed domain name and is not making a noncommercial or fair use of the disputed domain name.

(3) The disputed domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant contends that the registration of the disputed domain name occurred later than the registration of the vast majority of the Complainant's STATOIL Marks, at a time when those had already become well known internationally, and that the Respondent must have known of the rights held by the Complainant. The Complainant further assumes that the Respondent's intention at the time of the registration of the disputed domain name was to either sell the disputed domain name to the Complainant, or to use it otherwise for financial gain, for example by attracting Internet users to the Respondent's website, or to misleadingly communicate with the public. Furthermore, the Complainant states that the Respondent could not have chosen or subsequently used the word "statoil" in the disputed domain name for any reason other than to free-ride on the goodwill and reputation of the Complainant's trademark or to otherwise create a false association with the Complainant, and that the Respondent's registration of the disputed domain name amounts to "opportunistic bad faith". Finally, the Complainant argues that the present non-use of the disputed domain name does not hinder a finding of bad faith use under the Policy, as the relevant issue is not whether or not the Respondent is undertaking a positive action or use of the disputed domain name in bad faith, but whether, considering all circumstances of the case, it can be said that the Respondent is acting in bad faith, inaction being within the concept of bad faith.

B. Respondent

The Respondent states that the proper Respondent in this administrative proceeding is Yoyo.Email Ltd., a company incorporated under the laws of the UK, and that the authorized representative of Yoyo.Email Ltd. is Giovanni Laporta.

The Respondent states that he is an honest businessman in England, currently working on the establishment of Yoyo.Email, a unique service which offers a new and different way of providing evidence that emails were sent when claimed by the sender to have been sent and received by the recipient. The Respondent points out that, above all, his mission is to provide a serious solution to a long standing commercial problem, namely the lack of an independent viable system of confirming or recording the sending and receipt of emails. The Respondent states that, to achieve that objective, it is necessary to build up an email directory and to provide a hosting service that will route emails to their correct destination passing through Yoyo.Email's email servers. The Respondent states that he is therefore in the process of collecting domain names of potential users of the system in the same way that a telephone or mail directory collects telephone numbers and physical postal addresses, so that users may direct their communications to the right place. In this context, the Respondent argues that a telephone or mail directory lists business names (which are often the same as the company's trademark) but that the directory is not collecting them or using them as trademarks but as names only, and likewise, the Respondent's proposed email directory will collect names of companies for his new directory. The Respondent argues that it is necessary for the purpose of his business to build up a directory of contact names/email addresses which includes registering a considerable number of domain names in the ".email" gTLD which correspond to names of companies, who would value having access to this system and who, in case of joining the Respondent's service, would be given an email address (the domain name) for free. The Respondent states that he will not sell any of the domain names as they are needed for the recorded email service and claims that his service is also a fair use, as the Complainant's name is not being used as a trademark as it is not being used to sell or promote goods and services, but only as part of an address and as a technical link or interface to link the sending and receiving email servers.

The Respondent further contends to have spent about GBP 78,000.00 to date in the project and in the employment of staff and the design of operational systems. The Respondent claims to have rights or legitimate interests in the disputed domain name based on his planned use in connection with the service Yoyo.Email and that he has not registered the disputed domain name with the intention to sell it, to mislead the public, or to otherwise create a false connection with the Complainant. Furthermore, the Respondent states that he already made demonstrable preparations to use the disputed domain name in connection with the Yoyo.Email service, by registering domain names, by having 4 staff members working on the project, by setting up the domain name <yoyo.email>, the company's office and the website user interface, and by designing logos and a web page available at "www.yoyo.email". The Respondent states that he started building his business immediately after the general availability of second level registrations under the TLD ".email".

In his Response, he states that he intends to make money with the service by

"1. the value of having large numbers of active users, people linked to the service.

2. social media engagement through web flow; a charge could be levied here.

3. advertising, a charge could be levied here."

Moreover, the Respondent states that the disputed domain name is not identical to the STATOIL Marks as the gTLD name is not to be ignored in all cases. The Respondent argues that - given the virtually unlimited number of gTLDs under ICANN's new program - all elements of a disputed domain name, including the TLD, must be compared to the trademark.

The Respondent further states that the disputed domain name is not confusingly similar to the STATOIL Marks either. The Respondent argues that Internet users would expect the disputed domain name to refer to an email service by the Complainant (which it would actually be under the Respondent's envisaged business model), and that the disputed domain name does not claim to originate from the Complainant or to be the only way of communicating with the Complainant by email.

Finally, the Respondent states that the Complainant did not make use of its exclusive opportunity to acquire the disputed domain name during ICANN's Sunrise Period for the <.email> gTLD.

6. Discussion and Findings

The first point to be dealt with is the identity of the Respondent. Even though the WhoIs information of the disputed domain name does not refer to Yoyo.Email Ltd, but to Mr. Giovanni Laporta only, the Response refers to Yoyo.Email Ltd as the proper Respondent in this proceeding. Therefore, the Panel will treat both Yoyo.Email Ltd and Mr. Giovanni Laporta as Respondent for the purpose of this proceeding.

The second point to be dealt with is the admissibility of the Respondent's supplemental submissions, which were filed on July 7, 2014 and July 12, 2014. The Rules do not allow the parties to file supplemental submissions on their own volition, and paragraph 12 of the Rules provides that a panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admission of additional arguments or evidence. Grounds justifying new submissions are generally those regarding the existence of new pertinent facts that did not arise until after the complaint was filed. The Respondent states that he provided the supplementary document "in response to recent URS/UDRP decisions" because he "feels that any adverse case outcome would have been different if the Panel members had clearer facts presented." The Respondent does not refer to any new pertinent facts but only to the existence of recent URS/UDRP decisions dealing with his business model. Under these circumstances, the Panel elects not to accept the Respondent's supplemental submissions and not to rely on them in reaching this Decision. In any event, had the Panel accepted and considered these submissions they would not have affected the outcome of this case.

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(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 has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name fully incorporates the Complainant's STATOIL Marks and is identical to such marks. It is well established that the specific TLD is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant's trademark and the disputed domain name (cf. 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; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374). The Panel finds that the present case does not give reason to digress from this principle. Morevover, the TLD ".email" is comprised of a generic term, which might well be used by the respective trademark owner itself and therefore is not sufficient to hinder a finding of identity. Additionally, the Panel wishes to point out that it is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words (cf. Statoil ASA v. Bassey Berney, Koucha Inc, WIPO Case No. D2014-0423, finding <statoil-mail.com> confusingly similar to STATOIL). The Panel finds that a similar approach may apply in the combination of a trademark as second level of a domain name together with a generic term on the first level.

Therefore, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:

(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

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

Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent's rights or legitimate interests in the domain name will then shift to the respondent.

The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.

However, the Respondent claims rights or legitimate interests in the disputed domain name based on his intended use in connection with the above described email service.

The Panel is aware that the Respondent's business model has already been subject to a number of decisions under the UDRP and URS, most of which assumed the Respondent's business model to be in breach of such provisions. In Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / yoyo.email, WIPO Case No. D2014-0686 (<sheraton.email> et al.), the Panel stated:

"The essence of this matter lies in the contention of the Respondent that he is entitled to register the disputed domain names notwithstanding the fact that they include the Complainant's SHERATON trademark, because he intends to establish a purportedly legitimate email recorded delivery service. The Respondent submits that this is required, along with the acquisition of many other analogous registered ".email" domain names, because otherwise it is not possible to establish the service he intends to operate. […] The main weakness in the Respondent's argument is that nothing the Respondent has put before the Panel either explains or justifies why the Respondent actually has to register and own the disputed domain names for this purpose. The analogy with a directory does not hold: any person may indeed be free to compile a directory of domain names, or telephones or addresses or similar, but need not for that purpose actually own any related domain names, by registration or otherwise. To compile a list or directory of trademarks, or company names, or business or trading names, the compiler need not acquire any rights whatsoever in those names. […] For the Panel to hold otherwise i.e. that the Respondent's interests vest on mere registration of a domain name incorporating a third-party trademark would render the Policy ineffective based on his mere indications of intention, which cannot be permitted to occur.

Further, the Respondent asserts that it has registered many similar domain names, and the evidence before the Panel establishes that these registered domain names commonly incorporate other high profile trademarks. The Respondent submits that without a very large portfolio of such domain names its service cannot be viable. However, this reinforces the fact that the Respondent seeks to be in a position where the trademark owner is deterred from refusing its recorded delivery services, based partly on the Respondent's prior possession of domain names incorporating that very party's own trademark."

In McDermott Will & Emery LLP v. yoyo.email et al., NAF Claim No. 1564796 (<mwe.email>), the Panel expressly states:

"To register another's trademark as a domain name and using that domain name connecting to a web service with the specific goal to earn money from active users and advertising connected to the use of the trademark related web service, cannot be considered as legitimate interest."

Even on assuming that the Respondent met his burden of proving demonstrable preparations under paragraph 4(c)(i) of the Policy, the Panel finds the Respondent's business model not to result in any rights or legitimate interests under paragraphs 4(a)(ii) and 4(c)(i) of the Policy for the following reasons:

First of all, the Respondent does not necessarily have to register the disputed domain name and other domain names consisting of well established trademarks to establish his service. An email address such as "recipient_statoil@yoyo.email" would work just as well as "recipient@statoil.email". Under such circumstances, the use of the disputed domain name would probably create a false impression of sponsorship or endorsement by the Complainant.

Furthermore, the Respondent does not clearly state how he intends to monetize the disputed domain name, while it is to be expected that he will try to make money with his service. As already found in various cases dealing with the business model of vanity email addresses, the use of a third party trademark in connection with such service is only legitimate if the respective respondent focuses on such service without giving reason to assume that the trademark concerned will be affected by any kind of advertising for third parties' trademarks, such as pay per click advertising. The Respondent statement that "naturally, there will be some commercialization of the website, but it will be within the Rules", is an unacceptable threat towards the Complainant.

Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which can be evidence of the registration and use of the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:

(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out of pocket costs directly related to the disputed domain name; or

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

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent's website or location or of a product or service on its website or location.

The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the STATOIL Marks as it is part of his business model to register domain names "of potential users of the system", such as the Complainant.

As to bad faith use, this is not a classic case of passive holding, as first referred to in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003: The Respondent is not only holding the disputed domain name without using it but intends to use it in connection with his email service. Therefore, the question of bad faith use in the present case depends on whether or not the Respondent's (commercial) business model is legitimate under paragraph 4(c)(i) of the Policy. In the Panel's opinion, the Respondent registered the disputed domain name, which corresponds to the Complainant's well-known STATOIL Marks, to oblige the Complainant to join its system and therefore to benefit from the Complainant by the preemptive registration. Furthermore, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy. The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith.

Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of 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 <statoil.email> be transferred to the Complainant.

Brigitte Joppich
Presiding Panelist

Linda Chang
Panelist

David E. Sorkin
Panelist (Concurring)
Date: July 16, 2014

CONCURRING OPINION

I concur in the opinion of the Panel. For the sake of completeness I write separately to address a point raised in the Respondent's supplemental submissions, which the Panel has (correctly) decided not to consider. In particular, the Respondent asserts that his use of the Complainant's mark may be permitted as a nominative or descriptive fair use.

Although there does not appear to be any reason to apply US law here, the Respondent cites a Wikipedia entry that describes the Ninth Circuit US Court of Appeals test for nominative fair use. As the Panel's Decision notes, however, the Respondent's service can be readily identified without using the Complainant's mark as a domain name, and such use would likely create a false impression of sponsorship or endorsement by the Complainant. Both of these considerations preclude the Respondent from asserting nominative fair use.

The Respondent also cites an article (also apparently based upon US law) that sets forth a two-part test for descriptive fair use, but omits a critical limitation stated in the article: that the mark must be used within a sentence or paragraph of text and may not be set apart from the other words. Of course, that limitation would preclude the Respondent from asserting fair use under this theory. Nor would his contemplated use qualify as descriptive fair use under the Lanham Act, 15 U.S.C. § 1115(b)(4), which requires that the mark be "used fairly and in good faith only to describe the goods or services of such party." The Respondent is not using the mark to describe his services, but rather to create a false impression that they are somehow associated with the Complainant.

The European Court of Justice has interpreted the Trade Marks Directive (Directive 2008/95/EC) in a similar manner. A third party may use a trademark "in accordance with honest practices in industrial or commercial matters" (article 6[1]). One has "a duty to act fairly in relation to the legitimate interests of the trade mark owner" (Case C-100/02 Gerolsteiner Brunnen GmbH & Co. v. Putsch GmbH, [2004] E.C.R. I-691 at [24]), and violates this duty if the use "may give the impression that there is a commercial connection between the [user] and the trade mark proprietor" (Gillette Co. v. LA-Laboratories Ltd Oy [2005] ECR I-2337 at [42]). As stated above, the Respondent's contemplated use is likely to give such an impression. Furthermore, in light of the scale of the Respondent's undertaking, I think it is reasonable to infer that he was aware of this likelihood, and that he knew or should have known that his planned use of the Complainant's and others' marks would not be defensible.

David E. Sorkin
Panelist (Concurring)
Date: July 16, 2014

ADDENDUM TO ADMINISTRATIVE PANEL DECISION

Subsequent to the notification of the decision in this matter, the Respondent contacted the Center by email dated July 27, 2014 complaining that he did not state in its Response that he intends to make money with the service by

"1. the value of having large numbers of active users, people linked to the service.

2. social media engagement through web flow; a charge could be levied here.

3. advertising, a charge could be levied here."

Such statement was included in the Respondent's original Response, which he in fact asked to be disregarded and which he supplemented with three additional filings.

However, the consideration of the statement in question is not critical to the outcome of the proceeding. As already found in the decision, the Respondent does not clearly state how he intends to monetize the disputed domain name but states that "naturally, there will be some commercialization of the website, but it will be within the Rules". It is therefore beyond dispute that the Respondent's business model is commercial and the Panel found that such business model does not result in rights or legitimate interests under the Policy.

Furthermore, neither the Center nor the Panel permitted the Respondent to withdraw his original Response. The Respondent requested that his original submissions be disregarded "as they were rushed and incomplete," and the Center appropriately treated his subsequent submissions as additional filings, forwarding them to the Panel with his original Response. The Panel considers the admissions contained in the original Response to be probative of Respondent's intent regarding commercial use of the disputed domain name.

The Panel reaffirms its decision.