The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Wei Fang of Guangzhou, Guangdong, China. 2. The Domain Names and Registrar
The disputed domain names and are registered with Chengdu West Dimension Digital Technology Co., Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 28, 2016. On April 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 29, 2016, 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.
On May 2, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in both Chinese and English of the Complaint, and the proceeding commenced on May 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 29, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 30, 2016.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on June 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 an energy company incorporated in Norway, but is an international company operating in several countries. It has been in business for over 40 years and is a global leading provider of energy products and services. The Complainant operates in China and has since 1982. The Complainant owns many registrations for STATOIL marks throughout the world, including in Norway, the European Community, Argentina, Brazil, Chile, Egypt, Kuwait, Mexico, Nigeria, the Russian Federation, Saudi Arabia, South Africa, Thailand, the United Arab Emirates, the United States of America, and Venezuela, among several other jurisdictions. The Complainant owns at least the following three International Trademark Registrations for STATOIL marks, which designate China: Registration Nos. 730092, 753531 and 1011976. The Complainant owns several hundred domain names comprising the STATOIL mark.
The Respondent registered the disputed domain names on November 25, 2015. The disputed domain name currently resolves to a website advertising for sale a weight loss product. The disputed domain name currently resolves to a website advertising for sale a beauty product, namely eye cream. 5. Parties' Contentions A. Complainant
The Complainant states that it is a leading international energy company having 21,000 employees. It has been in business and using the STATOIL marks for over 40 years. The STATOIL mark is a highly
well-known and reputable trademark. Prior UDRP cases have found STATOIL to be a famous mark. See, e.g., Statoil ASA v. Domain Admin / Management SO Hkg,WIPO Case No. D2012-2392; Statoil ASA v. Weiwei Qiu / PrivacyP,WIPO Case No. D2011-1752.
The disputed domain names are identical or highly similar to the Complainant's mark STATOIL. Adding the terms "Monaco" and "nations" to the Complainant's mark does not eliminate the identity or similarity. The term "nations" is a common English word and "Monaco" is a geographic designation. Domain names are generally considered identical or confusingly similar for purposes of the Policy "when the domain name includes the trademarks, or a confusingly similar approximation, regardless of the other terms in the domain name." Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a/ For Sale,WIPO Case No. D2000-0662; see also Barclay's Bank PLC v. Bruce Change,WIPO Case No. D2012-0512. The parts "nations" and "Monaco" do not impact the overall impression of the disputed domain names because they are not the dominant parts of the respective disputed domain names. See Statoil ASA v. Domain Admin / Management SO Hkg, supra.
The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not affiliated with or related to the Complainant in any way. The Respondent is not licensed or otherwise authorized to use the STATOIL mark for any purpose. The Respondent is not using the disputed domain names in connection with any bona fide offering of goods or services, is not generally known by the disputed domain names, and has not acquired any trademark or service mark rights in the disputed domain names or the STATOIL mark. Rights or legitimate interests cannot be created where the user of the disputed domain names would not choose such a name unless seeking to create an impression of association with the Complainant. See The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050. The STATOIL mark is not used on the websites associated with the disputed domain names in connection with the advertised products or for any meaningful purpose. Therefore, it is obvious that the Respondent has no legitimate interests in respect of the disputed domain names but is only using them to draw traffic to its websites for financial gain.
The disputed domain names were registered and are being used in bad faith. The STATOIL mark is well known worldwide and was so at the time of registration of the disputed domain names. The Complainant conducts business in China, where the Respondent is located and has done so since 1982. The disputed domain names bear no relationship to the Respondent's name or the Respondent's business. The disputed domain names have no other meaning other than as the name and trademark of the Complainant.
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. See, e.g., Legacy Health System v. Nijat Hassanov,WIPO Case No. D2008-1708; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Groupl Co.,WIPO Case No. D2000-0163. Registration of a domain name followed by passive holding when there is no way in which the domain name could be legitimately used can amount to bad faith use of a disputed domain name. See Statoil ASA v. Creative Domain Pty Ltd. / Christine K. Hoyer,WIPO Case No. DAU2013-0012; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Additionally, previous UDRP panels have considered the Complainant's extensive and global promotion of the STATOIL mark sufficient to conclude that the respondents must have been aware of the existence of the Complainant and its rights in the STATOIL mark, and, therefore, had registered the domain names in bad faith. See, e.g., Statoil ASA v. Daniel MacIntyre, Ethical Island,WIPO Case No. D2014-0369.
Taking into account all of the circumstances, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain names by the Respondent that would not be illegitimate.
The Complainant requests that the disputed domain names be transferred to it. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Policy provides for transfer or cancellation of the disputed domain names if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:
(i) The disputed domain names are 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 names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
The Panel finds that the Complainant has met this burden. A. Language of the Proceeding
As an initial matter, paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. The Rules also provide that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant requested the proceeding be in English and the Respondent did not object or submit any request. Although the language of the Registration Agreement is Chinese and the Respondent is located in China, the Respondent's conduct suggests the Respondent understands English. The Respondent owns hundreds of domain names including English words and the disputed domain names currently point to websites that include some English language terms and phrases. Therefore, the Panel determines English as the language of the proceeding. B. Identical or Confusingly Similar
The Complainant has rights in the STATOIL mark. The Complainant has established that it is the registered owner of various international trademark registrations for STATOIL marks, registered long before the Respondent registered the disputed domain names. The Panel accepts that the Complainant's marks are internationally known.
The Panel finds that the disputed domain names are confusingly similar to the Complainant's mark. The addition of the generic term "nations" and the geographically descriptive term "Monaco" to the STATOIL mark does not avoid a finding of confusing similarity. See Compagnie Générale des Establissements Michelin-Michelin & Cie v. Tgifactory,WIPO Case No. D2000-1414. These additional terms do not impact the overall impression of the disputed domain names. The "statoil" portion of the disputed domain names is the dominant portion. See Statoil ASA v. Domain Admin / Management SO Hkg, supra. Similarly, the ".xyz" generic Top-Level Domain extension, being a technical part of the disputed domain names, does not affect the assessment of whether the disputed domain names are confusingly similar to the STATOIL mark. Because the "statoil", identical to the Complainant's STATOIL mark, is the dominant portion of the disputed domain names, and the additional descriptive elements do not change the impression of the disputed domain names.
Therefore, the Panel finds that the disputed domain names and are confusingly similar to the Complainant's mark. C. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
Under paragraph 4(c) of the Policy, a respondent may demonstrate rights or legitimate interests in a disputed domain name by showing any of the following circumstances, in particular but without limitation:
(i) The respondent's use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the respondent of the dispute; or
(ii) The respondent has been commonly known by the disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
disputed domain names resolve to websites advertising beauty products and weight loss products, but such use without any explanation from the Respondent does not demonstrate any legitimate interests in the disputed domain names as contemplated under paragraph 4(c) of the Policy. There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain names. The Complainant's STATOIL mark is long-established and widely known around the world, including in China, the location of the Respondent. In the absence of any evidence to the contrary, knowledge of the Complainant's rights in the STATOIL mark may be imputed to the Respondent at the time of registration of the disputed domain names. The words "monaco statoil" bear no obvious relationship to the Respondent's activities in connection with the disputed domain name . The words "nations statoil" bear no obvious relationship to the Respondent's activities in connection with the disputed domain name . "The inevitable conclusion is that these words are not ones that the Respondent would legitimately choose in the context of provision of goods, services or information via a web site unless it was seeking to create an impression of an association with the Complainant." See Harvey Norman Retailing Pty Ltd v. Pty Ltd,WIPO Case No. D2000-0945. No rights or legitimate interests can be created where the Respondent would not have chosen the disputed domain names unless seeking to create an impression of association with the Complainant. See Drexel University v. David Brouda,WIPO Case No. D2001-0067.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. D. Registered and Used in Bad Faith
The Panel finds that the Respondent registered and is using the disputed domain names in bad faith.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that the respondent has registered or has 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 the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent has 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 the Respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's 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 such website or location or of a product or service on such website or location.
The Panel finds that the Respondent was likely aware of the Complainant and its marks at the time of registration of the disputed domain names. The Complainant is widely known throughout the world as are the STATOIL marks. The STATOIL service marks have been in use in commerce for decades prior to the registration of the disputed domain names. Additionally, the Complainant owns many trademark registrations around the globe, including in China, where the Respondent is located. Although the Respondent may not be under an obligation to conduct an exhaustive trademark search before acquiring a domain name, a simple Internet search for Statoil would have yielded many obvious references to the Complainant and the Complainant's use of STATOIL marks. The Panel finds it very unlikely that the Respondent was not aware of the Complainant and its interests in the STATOIL marks. Bad faith can be inferred from the Respondent's registration of the disputed domain names incorporating a widely-known mark of which the Respondent must have been aware, without any evident right to do so. See Hurruyet Gazetecilik ve Maatbaacilik Anonim Sirketi v. Onuno L.L.C.,WIPO Case No. D2015-1504; AXA S.A. v. P.A. van der Wees,WIPO Case No. D2009-0206; BHP Billiton Innovation Pty Ltd v. Ravindra Bala,WIPO Case No. D2008-1059. Therefore, the Panel finds that the Respondent registered the disputed domain names in bad faith.
Given that the disputed domain names are confusingly similar to the Complainant's extensively used and widely-known service mark, the Panel finds that the Respondent must have been aware that Internet users may reasonably believe that the disputed domain names and resolving websites would be owned, controlled, established or otherwise associated with the Complainant. See AXA, S.A. v. P.A. van der Wees, supra. In the absence of a response by the Respondent, the Panel can only conclude that the Respondent must be deriving commercial benefit from using the disputed domain names to advertise beauty and weight loss products. See Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Rohit Katoch,WIPO Case No. D2011-0402. The Respondent has intentionally attempted to attract Internet users to the Respondent's websites for commercial gain by creating a likelihood of confusion with the Complainant's STATOIL mark as to the source, sponsorship, affiliation, or endorsement of such websites. These activities fall within those described in Paragraph 4(b)(iv) of the Policy. Additionally, on the present case record, the Panel finds that there is no plausible way in which the disputed domain names could be used by the Respondent legitimately for purposes other than to unjustly benefit from the Complainant's trademark. Therefore, the Panel finds that the Respondent is using the disputed domain names in bad faith.
In light of the above, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith. 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 names and be transferred to the Complainant.
Kimberley Chen Nobles
Sole Panelist
Date: June 15, 2016
Full & Egal Universal Law Academy