Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
Respondent is Julio Lopez Fernandez of Malaga, Spain. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 26, 2015. On November 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 26, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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").
On December 7, 2015 the Center transmitted by email a communication to the parties requesting their comments regarding the language of the proceeding as the Complaint was submitted in English and the language of the registration agreement for the disputed domain name was Spanish. On December 8, 2015 Complainant submitted the request for the proceedings to be in English. On December 8, 2015 Respondent submitted the request for the proceedings to be in Spanish.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 10, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2015. The Center did not receive any communication from Respondent different to the request of Spanish to be the language of the proceeding received on December 8, 2015. Accordingly, the Center notified Respondent that the proceeding continues with the panel appointment.
The Center appointed Francisco Castillo-Chacón as the sole panelist in this matter on January 12, 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.
Complainant requested that the procedure be conducted in English and submits it may be assumed that Respondent had basic knowledge of English as the disputed domain name includes a term in English. Additionally, Complainant is not able to communicate in Spanish, and it argues there is a risk of "phising" as an email account is activated for the disputed domain name, finally it is submitted that a translation of the Complaint may lead to a delay of the proceeding. Respondent has requested the procedure to be conducted in Spanish. The Center has sent all communications and notifications to Respondent both in Spanish and English, however, Respondent chose not to respond to any further communications. This Panel agrees with previous decisions which found that the spirit of paragraph 11of the Rules is to guarantee fairness in the selection of language and to provide the parties with an adequate chance of defense. Factors like expenses, delays in the procedure and other relevant factors are to be considered when choosing a language different from the language of the registration. In this case the fact that Respondent chose not to respond to any but one of the Center's communications, the fact that the domain in question is being used as a parking page containing English material and the content of the answer provided by the Respondent to the Center regarding the language of proceedings, have all been taken into account when deciding that the language of the procedure will be English. 4. Factual Background
- Complainant is the owner of the trademark STATOIL in several jurisdictions. Complainant uses this trademark around the world and is well-known in its industry. Complainant first used the trademark STATOIL on or around 1974, and has since obtained a registration for the trademark STATOIL in several countries. Complainant is also the owner of several hundred domain names containing the trademark STATOIL, including . Complainant has worldwide operations.
- Complainant's trademark has become well-known in its industry worldwide, and widely known in Europe.
- Respondent is apparently domiciled in Spain and registered the disputed domain name on or around September 12, 2015, well after Complainant had registered its trademark. 5. Parties' Contentions A. Complainant
Complainant has rights in Statoil by reason inter alia of its multiple registered trademarks for the Statoil marks dating well before registration of the disputed domain name. The disputed domain name is confusingly similar to this trademark. The addition of the generic word "home" does nothing to diminish that confusion.
Complainant has been using the trademark around the world for a number of years, having used the trademark since 1974. The disputed domain name is confusingly similar to Complainant's trademark Statoil.
Respondent registered the disputed domain name long after Complainant had well established rights in the STATOIL trademark, and operates the website "www.". Respondent registered the disputed domain name on September 12, 2015, without Complainant's authorization; and the disputed domain name currently displays a landing page.
Given the worldwide presence of Statoil, and the fact that Respondents' domain name is identical or confusingly similar to Complainant's trademark, the disputed domain name will lead consumers and internet users to confusion, which includes likelihood of association. It is clear that the disputed domain was registered and used in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
There is a consensus that a respondent's default does not automatically result in a decision in favor of Complainant, Complainant must still establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") para. 2.2). Notwithstanding this, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
Respondent has not submitted a Response and the Panel therefore infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation,WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact,WIPO Case No. D2003-0994.
With that being said, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that derive from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; RX America, LLC. v. Matthew Smith,WIPO Case No. D2005-0540. A. Identical or Confusingly Similar
Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Even though not conclusive under the first element of the UDRP, the Panel notes that Respondent registered the disputed domain name well after Complainant established rights in its STATOIL trademark, (see, e.g., Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent,WIPO Case No. D2009-1033). Complainant has clearly demonstrated that it had registered in several countries including the European Union the trademark STATOIL well before 2015 when the disputed domain name was registered. Complainant further evidenced its rights over the domain name .
Previous UDRP panels have held that when a domain name wholly incorporates a complainant's registered trademark, this is sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation Limited v. Barry Cheng Kwok Chu,WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd.,WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S.r.l.,WIPO Case No. D2001-1206; Utensilerie Associate S.p.A. v. C & M,WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd.,WIPO Case No. D2007-0282. In the Panel's view, if this is true as a general principle, it is even more so, when the disputed domain name wholly incorporates a well-known trademark in a particular industry such as STATOIL. The Panel has found no facts or arguments that could justify a dissent from the consensus view, therefore in consent with previous panels, this Panel finds that the mere addition of a generic word "home" does not eliminate the confusing similarity between the two.
Therefore the Panel finds that the disputed domain name is confusingly similar to Complainant's STATOIL trademark. B. Rights or Legitimate Interests
Complainant has made its prima facie case that Respondent lacks any rights or legitimate interests in the disputed domain name. Respondent failed to respond or to offer any evidence to demonstrate that Complainant has ever authorized them to use the STATOIL trademark.
The Panel concurs with prior UDRP decisions holding that, in circumstances similar to this, there is no bona fide offering of goods or services where the disputed domain name incorporates a trademark which is not owned by Respondent, nor has Respondent been known by the name Statoil. See Barclays Bank PLC v. Stanislaw Krzenszczynski, WIPO Case No. D2012-1458; Photographic Solutions, Inc. v. Fariborz R-Dehghan,WIPO Case No. D2008-0333.
Similarly, the panel in Gene Kelly Image Trust v. BWI Domain Manager,WIPO Case No. D2008-0342, found that "[t]he existence of sponsored links on the website also clearly demonstrates that the Respondent is not using the disputed domain name as a legitimate noncommercial fan site. On the contrary, it appears plain that the Respondent is using the disputed domain name to make a commercial gain."
It is the view of this Panel that Complainant has satisfied its burden and provided the Panel with sufficient evidence to meet the prima facie requirement showing that Respondent has no rights to or legitimate interests in the disputed domain name. Respondent has not provided the Panel with any evidence to demonstrate rights or legitimate interests in the disputed domain name as set forth in paragraph 4(c) of the Policy. Therefore the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465. This holding is consistent with paragraph 2.1 of the WIPO Overview 2.0, pursuant to which "once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP."
For all of these reasons, the Panel finds that para 4(a)(ii) of the Policy has been satisfied by Complainant. C. Registered and Used in Bad Faith
Complainant contents that Respondent is aware of the existence of the trademark STATOIL. Respondent registered and is using the Domain Name in bad faith by incorporating Complainant's registered STATOIL trademark intentionally to attract for commercial gain Internet users to Respondent's website by creating a likelihood of confusion as to Complainant acting as the source, sponsor, affiliate or endorser of Respondent's website in violation of the Policy.
The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, paragraph 4(b)):
(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.
It is clear to this Panel that Respondent is using the disputed domain name to attract, for commercial gain, Internet users by creating a likelihood of confusion and association with Complainant's mark.
Absent some exceptional justification from Respondent, it is reasonable to infer that Respondent registered the disputed domain name with the primary intention of either confusing visitors as to the source of the disputed domain name or simply benefiting from Complainant's well established trademark. This Panel believes that the circumstances of this case constitute bad faith within the meaning of paragraph 4(b)(ii) of the Policy.
In this case Respondent is using the entire trademark owned by Complainant without a plausible good faith explanation.
The Panel also concurs with previous UDRP decisions holding that registration of a well-known trademark as a domain name may be a further evidence of bad faith. See PepsiCo, Inc. v. "null", aka Alexander Zhavoronkov,WIPO Case No. D2002-0562; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Pepsico, Inc. v. Domain Admin,WIPO Case No. D2006-0435. 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.
Francisco Castillo-Chacón
Sole Panelist
Date: February 2, 2016
Full & Egal Universal Law Academy