The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Ken Suzue of Tokyo, Japan. 2. The Domain Names and Registrar
The disputed domain names , and are registered with GMO Internet, Inc. d/b/a O (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 4, 2016. On May 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 6, 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 9, 2016, the Center notified the Parties in both English and Japanese that the language of the Registration Agreements for the disputed domains names was Japanese. On May 10, 2016, the Complainant requested for English to be the language of the proceedings, to which the Respondent did not reply.
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 of the Complaint, and the proceedings commenced on May 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 13, 2016.
The Center appointed Ho-Hyun Nahm as the sole panelist in this matter on June 22, 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 owns various trademark registrations for the mark STATOIL around the world, inter alia, international trademark registration number 730092 in classes 1, 4, 17, 39 and 42 registered on March 7, 2000, and European Union Trade Mark registration number 003657871 covering various classes of goods and services registered on May 18, 2005. All of the three disputed domain names were registered on December 4, 2015. 5. Parties' Contentions A. Complainant
i) The Complainant is an international energy company with 21,000 employees and extensive operations worldwide. The Complainant has been in business for over 40 years and is one of leading providers globally of energy products and services. The Complainant's mark STATOIL is a highly well-known and reputable trademark. The Complainant's trademark also enjoys thorough protection through several hundred registrations worldwide, inter alia, international trademark registration number 730092 in classes 1, 4, 17, 39 and 42 registered on March 7, 2000, and European Union Trade Mark registration number 003657871 covering various classes of goods and services registered on May 18, 2005. All of the disputed domain names are confusingly similar to the Complainant's trademark STATOIL.
ii) The Respondent is not affiliated with or related to the Complainant in any way, or licensed or otherwise authorized to use the Complainant's STATOIL mark in connection with a website or for any other 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 that name or mark. The websites to which the disputed domain names are resolved contain text being nonsense most likely automatically generated. The websites also contain links with no apparent connection to said websites or to the Complainant. The Respondent misuses the Complainant's mark for the financial gain of the Respondent through making a profit from the sponsored links or selling the disputed domain names to the Complainant or a third party. As such, the Respondent has no rights or legitimate interests in respect of the disputed domain names.
iii) The Complainant's mark was well known worldwide at the time of the disputed domain names registration. The Complainant conducts business also in Japan where the Respondent is residing. The disputed domain names bear no relationship to the Respondent's name or its business. The disputed domain names suggest opportunistic bad faith. The registration of the disputed domain names, followed by a passive holding of the disputed domain names, and collecting click-through revenues constitute use in bad faith. Taking into account in particular the combination in the disputed domain names of the well-known trademark STATOIL with the generic words "privat", "foretag" ("company" in Swedish), and "premium club", and other circumstances such as the click through scheme, 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, such as being a passing off or an infringement of the Complainant's rights under trademark law. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Preliminary Issue: Language of Proceedings
The Panel notes that the Center notified the Parties in both English and Japanese that the language of the Registration Agreements for the disputed domain names was Japanese. The Complainant requested for English to be the language of the proceedings, alternatively, that the proceedings are conducted in both languages so that a response in Japanese is accepted, to which the Respondent did not reply.
The Complainant contends that requiring the Complainant to translate the Complaint from English to Japanese would not be in keeping with the overriding principles of paragraph 10(b) and 10(c) of the Rules. The Complainant assumes that the Respondent has sufficient knowledge of the English language in that one of the disputed domain names contain the English word combinations "premium club" and it has also registered many other domain names containing English words or word combinations.
Notwithstanding that the Center formally notified the Respondent of the Complaint and the Complainant's Request for English to be the language of the proceedings in both Japanese and English, in the absence of the Respondent's reply to any of the Complaint and Request for the language of the proceedings and given the circumstances that the Complainant would be unfairly disadvantaged by being forced to translate, the Panel determines that English is the language of the proceedings under paragraph 11 of the Rules.
Paragraph 15(a) of the Rules instructs the Panel to decide "a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:
(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 Respondent provided no Response. Accordingly, the Respondent is in default. Taking into consideration of the Respondent's default, the Panel can infer that the Complainant's allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Nonetheless, the Complainant retains the burden of proving the three elements of paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
It is recognized that the Complainant's trademark STATOIL enjoys thorough protection through several hundred registrations worldwide, inter alia, international trademark registration number 730092 in classes 1, 4, 17, 39 and 42 registered on March 7, 2000 and European Union Trade Mark registration number 003657871 covering various classes of goods and services registered on May 18, 2005. The Panel finds that the Complainant's international trademark registration and the European Union Trade Mark registration suffice to demonstrate the Complainant's rights in its mark for the purposes of Policy. See Koninklijke KPN N.V. v. Telepathy Inc.,WIPO Case No. D2001-0217 (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Accordingly, the Panel finds that the Complainant has demonstrated its rights in its mark pursuant to Policy, paragraph 4(a)(i).
The Panel finds that each of the disputed domain names , and is confusingly similar to the Complainant's trademark STATOIL, in that they incorporate the Complainant's mark in its entirety. See Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240 finding "the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark."
The Panel finds that the additional words "privat", "foretag" ("company" in Swedish), and "premium club" are descriptive words, and thus they do not constitute a prominent portion in the disputed domain names in determining likelihood of confusion between the disputed domain names and the Complainant's mark. Therefore, the addition of the words "privat", "foretag", and "premium club" do not have any impact on the avoidance of confusion. See Research in Motion Limited v. Input Inc, Domain Manager, WIPO Case No. D2011-2197 finding "the additional word 'help' is an expression commonly used in the world to provide assistance. For this reasons, the Panel concludes that the word 'help' is solely descriptive. The use of the added descriptive word does not change the overall impression of the domain name as being dominated by the term ('ACCUTANE') and does not serve to distinguish the disputed domain name from Complainant's mark."
The addition of the Top-Level Domain ".org" does not have any impact on the overall impression of the dominant portion of the disputed domain names and is therefore irrelevant to determine the confusing similarity between the Complainant's trademark and the disputed domain names as well.
As such, the Panel concludes that each of the disputed domain names is confusingly similar to the Complainant's mark. B. Rights or Legitimate Interests
As it is virtually impossible for a complainant to prove the negative fact that a respondent has no rights or legitimate interests in the disputed domain name, it is well accepted that a complainant must show a prima facie case that there are no rights or legitimate interests on the part of the respondent. The burden of production will then shift to the respondent to rebut the same. If the respondent fails to do so, the complainant is considered to have satisfied paragraph 4(a)(ii) of the Policy. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Complainant contends that the Respondent is not affiliated with or related to the Complainant in any way, or licensed or otherwise authorized to use the STATOIL mark in connection with a website or for any other purpose. It further argues that 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 that name or mark. The Complainant also contends that the websites to which the disputed domain names are resolved contain nonsensical text most likely automatically generated.
In light of the Complainant's assertions above along with their supporting evidence, the Panel finds that the Complainant has established a prima facie case. In the absence of the Respondent's response to the Complainant's allegations, the Panel finds that the Complainant has satisfied its burden that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
It is recognized that i) the Complainant is an international energy company with 21,000 employees and extensive operations worldwide; ii) the Complainant has been in business for over 40 years and is one of leading providers globally of energy products and services; and iii) that the Complainant's mark STATOIL is a widely-known and reputable trademark.
In light of the status of the Complainant's mark well before the registration date of the disputed domain names and of the fact that the Complainant conducts business using the Complainant's mark in Japan where the Respondent resides, it is inferred that the Respondent registered the disputed domain names with the knowledge of the Complainant's rights in the Complainant's mark, as it is inconceivable that the Respondent was unaware of the Complainant's rights in the Complainant's STATOIL mark. This is because it is unlikely that the Respondent would have registered the disputed domain names unless it was aware of the existence of the trademark STATOIL or that the disputed domain names might be of some type of economic advantage. See, the Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113; Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517.
Registration of the disputed domain names incorporating the Complainant's mark STATOIL by an entity that has no legitimate relationship with the Complainant itself demonstrates bad faith. Telstra Corp. Ltd., v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Complainant asserts that the disputed domain names are passively held and also that collecting "click-through" revenues amount to bad faith use. However, the Panel notes that the attached evidence showed all disputed domain names resolve to similar blog-like sites with large blocks of texts relating to various topics such as management and climbing unrelated to the Complainant.
The particular circumstances of this case that the Panel has considered are:
i) The Complainant is an international energy company with 21,000 employees and extensive operations worldwide. The Complainant has been in business for over 40 years and is one of leading providers globally of energy products and services. As such, the Complainant's mark STATOIL is considered as a reputable trademark.
ii) Respondent has provided no evidence why it chose three domain names all incorporating the Complainant's mark for its websites.
iii) The STATOIL mark has no other meaning except in reference to the Complainant and its services, and the Panel cannot in the given circumstances imagine a use of the disputed domain names obviously connected to the Complainant that may be legitimate.
Taking into account all of the above, and without any explanation from the Respondent, the Panel concludes that the disputed domain names were registered and used in bad faith under Policy, paragraph 4(a)(iii).
Therefore, the Panel determines 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.
Ho-Hyun Nahm
Sole Panelist
Date: June 30, 2016
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