The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Domain Admin of Nobby Beach, Australia/ Management SO Hkg of Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2012. On December 5, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 6, 2012, 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 December 7, 2012, 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 amended Complaint on December 10, 2012 date of receipt by the Center.
The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on December 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2013.
The Center appointed Eva Fiammenghi as the sole panelist in this matter on January 11, 2013. 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 21,000 employees and it has been in business for 40 years and is well-known for its oil products and services.
The Complainant is the owner of the trademark STATOIL, which has been registered by the Complainant as trademarks in numerous countries all over the world, before the Respondent's registration of the disputed 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
The Complainant is also the owner of the domain name apparently registered on April 21, 1995. 5. Parties’ Contentions A. The Complainant
The disputed domain name is confusingly similar to the STATOIL trademark.
The disputed domain name consists of the Complainant’s STATOIL trademark with the addition of the word “careers” and the gTLD “.com”. The trademark STATOIL is the distinctive element of the disputed domain name. Then, the addition of the word “careers” which can be consider as a descriptive part of the disputed domain name is not sufficient to escape from the similarity.
The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name . In fact there is no connection between the Complainant and the Respondent who is not using the disputed domain name for a bona fide offering of goods or services nor is acquiring any trademark or service mark rights in that name or mark.
Thus, the Respondent is not authorized to use the Complainant’s trademark STATOIL as a domain name.
The Complainant states that the website reproducing the disputed domain name is currently without content.
This situation could constitute a presumption of the Respondent’s intention of selling the domain name to the Complainant, or to use it otherwise for financial gain, for example by attracting Internet users to the website who assumes that the disputed domain name is owned by or affiliated with the Complainant.
Furthermore, the Complainant argues that the fact that the Respondent chose to hide his identity while registering the disputed domain name is another evidence of presumption for a bad faith use of the same. B. The Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the panel shall decide the complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable. A. Identical or Confusingly Similar
The disputed domain name incorporates the well-known STATOIL trademark in its entirety and the generic word “careers”. The fact that the disputed domain name consists of a combination of a registered trademark and a generic word is not enough to distinguish the domain name from the trademark.
The addition of the word “careers” is not relevant and will not have any impact on the overall impression as well as the wording “careers” can not be considered as a dominant part of the disputed domain name.
It is evident that the Respondent registering of the disputed domain name has created confusing similarity between the disputed domain name and the trademarks of the Complainant.
As numerous prior UDRP panels have held, it is crystal clear that the disputed domain name is confusingly similar to the Complainant's trademark STATOIL, as the Panel already found in the case regarding the domain name (See Wal-Mart Stores, Inc. v. WalMart Careers, Inc.,WIPO Case No. D2012-0285).
Thus, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and concludes that the first element of the Policy has been met. B. Rights or Legitimate Interests
The Respondent registered the disputed domain name on October 9, 2012 but the “mere registration of a domain name does not establish rights or legitimate interests in the disputed domain name” (Pharmacia & Upjohn Company v. Moreonline,WIPO Case No. D2000-0134).
The Complainant contends that it has not given any license or any kind of authorization to the Respondent to use the STATOIL trademark.
The Respondent has not provided the Complainant with any evidence demonstrating that the Respondent might be commonly known by the disputed domain name, or that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name.
The Panel concludes that the Respondent lacks of any rights or legitimate interests in the disputed domain name.
The second element of the Policy has, therefore, been met. C. Registered and Used in Bad Faith
Complainant argues that the website associated to the disputed domain name is without content and this fact can be assumed as the Respondent’s intention for registering the domain name has been either sell to the Complainant, or to use it otherwise for financial gain.
The Panel is of the opinion that the lack of use of the disputed domain name by the Respondent since the registration, does not in itself constitute bad faith.
The Panel examined all the circumstances of the case to determine whether the Respondent was in bad faith considering the following points:
- the confusingly similar nature of the disputed domain name to the Complainant's trademark STATOIL that it has no other meaning except for being the trademark of the Complainant;
- the choice of the Respondent to hide his identity when registering the disputed domain name;
- the lack of response by the Respondent to the Complaint;
Taking into account all of the above, there is no plausible explanation as to why the Respondent would register the disputed domain name other than to trade on the goodwill associated with the Complainant’s trademark STATOIL, in particular associated with the word “careers”.
Therefore, the Panel claims that inactivity of the website associated with other conditions can be equated to passive use of the domain name, by preventing another, such as the Complainant herein, from registering the disputed domain name.
The Panel therefore finds that the disputed domain name has been registered and used in bad faith and that the third element of the Policy has, therefore, been met. 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 be transferred to the Complainant.
Eva Fiammenghi
Sole Panelist
Date: January 25, 2013
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