The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Zhan Reng of Jinan, Shandong, China. 2. The Domain Name and Registrar
The disputed domain name is 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 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 3, 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 3, 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 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 30, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 31, 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 name on November 12, 2015. The disputed domain name currently resolves to a website advertising an herbal breast enhancement program. 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 name is identical or highly similar to the Complainant's mark STATOIL. Adding the term "wear" to the Complainant's mark does not eliminate the identity or similarity. The descriptive term is insufficient to avoid confusing similarity. 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 part "wear" will not impact the overall impression of the disputed domain name because it cannot be considered the dominant part of the disputed domain name. See Statoil ASA v. Domain Admin / Management SO Hkg, supra.
The Respondent has no rights or legitimate interests in the disputed domain name. 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 name in connection with any bona fide offering of goods or services, is not generally known by the disputed domain name, and has not acquired any trademark or service mark rights in the disputed domain name or the STATOIL mark.
Use of a domain name to post parking and lading pages or pay-per-click links does not itself confer rights or legitimate interests arising from a bona fide offering of goods or services. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.6. The disputed domain name is clearly not used for any bona fide offering for goods or services, aside from the misuse of the Complainant's trademark for financial gain. The website to which the disputed domain name resolves advertises an herbal breast enhancement program. The STATOIL mark is not used on the website—only in the disputed domain name. Therefore, it is obvious that the Respondent has no legitimate interest in respect to the disputed domain name. Instead, the Respondent is only using the disputed domain name to draw traffic to its website for financial gain by passing off on the Complainant's famous STATOIL mark.
The Respondent registered and uses the disputed domain name in bad faith. The STATOIL mark is well known worldwide and was so at the time of registration of the disputed domain name. The Complainant conducts business in China, where the Respondent is located and has done so since 1982. The disputed domain name bears no relationship to the Respondent's name or business. The disputed domain name has 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 Group 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. Here, there is no way in which the disputed domain name could be used by the Respondent legitimately.
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 name by the Respondent that would not be illegitimate.
The Complainant requests that the disputed domain name 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 name if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:
(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.
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 name currently points to a website that includes 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 name. The Panel accepts that the Complainant's marks are internationally known.
The Panel finds that the disputed domain name is confusingly similar to the Complainant's mark. The "statoil" portion of the disputed domain name is the dominant portion. See Statoil ASA v. Domain Admin / Management SO Hkg, supra. The addition of the generic term "wear" 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. This additional term does not impact the overall impression of the disputed domain name.
Therefore, the Panel finds that the disputed domain name is 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 name.
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.
In this case, the disputed domain name resolves to a website advertising an herbal breast enhancement product, but such use without any explanation from the Respondent does not demonstrate any legitimate interests in the disputed domain name 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 name. 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 name. The words "statoil wear" bear no obvious relationship to the Respondent's activities in connection with the disputed domain name. The words are not used on the associated website itself, only in 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 website unless 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 name unless it was 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 name. D. Registered and Used in Bad Faith
The Panel finds that the Respondent registered and is using the disputed domain name 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 name. 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 name. Additionally, the Complainant owns many trademark registrations around the globe, including in China, where the Respondent is located. 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 name 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 name in bad faith.
Given that the disputed domain name is 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 name and resolving website 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 name to advertise an herbal breast enhancement product. 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 website 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 website. 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 name 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 name in bad faith.
In light of the above, the Panel finds that the Respondent registered and is using the disputed domain name 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 name be transferred to the Complainant.
Kimberley Chen Nobles
Sole Panelist
Date: June 15, 2016
Full & Egal Universal Law Academy