The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is 林嘉威 (Lin Jiawei) of Zhanjiang, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2016. On May 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 23, 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 24, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On May 24, 2016, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 June 2, 2016 the Respondent informed the Center by email in Chinese that he was consulting on a detailed solution and proposal for this dispute. The Center copied this communication to the Complainant on the same day.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 8, 2016.
On June 14, 2016 the Respondent sent another email to the Center, in Chinese and English, indicating that the way to resolve the Complaint was through compensation. On the same day, the Center copied this communication to the Complainant and the Complainant replied, stating that it had no interest in a settlement and forwarding an email that it had received from the Respondent dated June 13, 2016, in Chinese and English, described in Section 5 below. On June 14, 2016, the Center acknowledged receipt of this Supplemental Filing and copied it to the Respondent.
In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2016. The Respondent did not submit any formal Response. Accordingly, the Center notified the Parties that it would proceed to Panel appointment on June 29, 2016.
The Center appointed Matthew Kennedy as the sole panelist in this matter on July 7, 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 a company that provides energy products and services. It has operations in many countries, including China. The Complainant owns multiple registrations of the trademark STATOIL, including International registration no. 730092, registered on March 7, 2000 and designating several jurisdictions, including China. This trademark registration is active and specifies goods and services in multiple classes. The Complainant has also registered multiple domain names, including which resolves to its official website.
The Respondent is an individual who registered the disputed domain name on March 15, 2016. The disputed domain name does not resolve to any active website. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is identical to its STATOIL trademark. The generic Top-Level Domain (“gTLD”) is not to be considered when comparing the disputed domain name and the trademark.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with or related to the Complainant in any way or licensed or otherwise authorized to use the STATOIL trademark. The disputed domain name does not resolve to any content.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. The STATOIL mark is well-known worldwide and the Complainant has conducted business in China since 1982. The disputed domain name bears no relationship to the Respondent or its business. The disputed domain name has no meaning other than as the Complainant’s trademark and corporate name. B. Respondent
The Respondent did not submit a formal Response to the Complaint to the Center. However, the Respondent did reply to the Complaint in an email dated June 13, 2016 sent to the Complainant and forwarded to the Center by the Complainant. In that email the Respondent alleged that the disputed domain name was registered in order to build a “free oil investment exchange site”, that a platform was being developed, that costs of 25,000 yuan had already been incurred; and that he had only just realized that the disputed domain name conflicted with the Complainant’s trademark. He offered to transfer the disputed domain name if the Complainant paid the costs. 6. Discussion and Findings 6.1 Supplemental Filing
The Complainant made an unsolicited supplemental filing on June 14, 2016. Paragraph 10(d) of the Rules provides that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Although Paragraph 12 of the Rules empowers the Panel, in its sole discretion, to request further statements or documents from either of the Parties, this does not preclude the Panel from accepting unsolicited filings. See Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447.
The Complainant’s supplemental filing annexed an email from the Respondent dated June 13, 2016 written in Chinese and English. The Panel observes that (a) the Respondent’s email is relevant to the language of the proceeding and to the substantive issues in dispute and contains allegations not found elsewhere on the record; (b) the Respondent’s email did not exist when the Complaint was filed hence the Complainant could not submit it at that time; and (c) the Respondent had ample opportunity to comment on the supplementary filing on or before June 28, 2016 but did not file any formal Response.
Therefore, the Panel considers this supplemental filing to be admissible and will take it into consideration in this decision according to its relevance, materiality and weight as part of the evidence on the record. 6.2 Language of this Proceeding
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English, or both English and Chinese so that a response can be accepted in Chinese. Its main arguments are that the Respondent has registered many other domain names in English and can be assumed to be proficient in that language and that the translation of the Complaint and annexes into Chinese would cause substantial additional expense and delay. The Respondent did not comment on the language request.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that the Complaint in this proceeding was filed in English. The Respondent has corresponded with the Complainant in both English and Chinese, from which it is reasonable to conclude that the Respondent understands both languages. The Respondent was given an opportunity in Chinese to comment on the language request but did not express any wish to do so nor to submit a formal response to the Complaint. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.3 Analysis and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(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. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the STATOIL trademark.
The disputed domain name incorporates the Complainant’s STATOIL trademark in its entirety. The only additional element is “.xin”, which is a transcription of a Chinese word meaning “trust” but merely a gTLD. A gTLD suffix generally has no capacity to distinguish a domain name from a trademark. See Lego Juris A/S v. Chen Yong,WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080. Consequently, the Complainant’s STATOIL trademark is the dominant and only distinctive element of the disputed domain name.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) [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.
The Panel has already found that the disputed domain name is confusingly similar to the Complainant’s STATOIL trademark. The Complainant submits that it has not licensed, approved or in any way consented to the Respondent’s registration and use of the trademark in the disputed domain name.
The disputed domain name does not resolve to any active website. That is not a use of the disputed domain name in connection with an offering of goods or services, nor evidence of some legitimate noncommercial or fair use, as envisaged by the first and third circumstances of paragraph 4(c) of the Policy. Further, the Respondent’s name is “林嘉威 (Lin Jiawei)” not “statoil”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.
Based on the above, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
In reply, the Respondent alleged to the Complainant that it has made preparations to use the disputed domain name in connection with a “free oil investment exchange site”. However, nothing on the record substantiates the existence of these preparations and, in any event, it is clear that the Respondent is not presently making any legitimate noncommercial or fair use of the disputed domain name. Therefore, the Panel considers that the Respondent has failed to rebut the Complainant’s prima facie case regarding this element of the Policy.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith. The first of these is as follows:
“(i) circumstances indicating that [the Respondent has] registered or [the Respondent 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.”
With respect to registration, the Panel observes that the Respondent registered a domain name that, apart from the gTLD, is identical to the Complainant’s STATOIL trademark. The Respondent registered the disputed domain name many years after the Complainant registered its trademark, including in China where the Respondent is located. The Complainant and its goods and services are the top results for the term “statoil” in the Baidu search engine. The Complainant alleges, and the Respondent does not dispute, that the Respondent was not authorized by the Complainant to register the disputed domain name. The Respondent alleges that he did not realize that the disputed domain name conflicted with the Complainant’s trademark but he does not offer any explanation as to why he chose to register that particular name besides its inclusion of the word “oil”. Therefore, on balance, the Panel finds that the Respondent deliberately chose to register the Complainant’s trademark in a domain name.
With respect to use, the Panel notes that the disputed domain name does not resolve to any active website but that the Respondent offered to sell the disputed domain name to the Complainant for a price of at least RMB 25,000 (over USD 3,500). This price allegedly represented expenses already incurred in developing a platform, including the cost of a server. Even if those expenses were considered “out-of-pocket costs”, they are not documented nor all directly related to the disputed domain name. Consequently, the Panel finds that the facts of this case fall within the circumstances set out in paragraph 4(b)(i) of the Policy.
In any case, mere passive holding of a disputed domain name does not preclude a finding of use in bad faith (see Telstra Corporation Ltd v. Nuclear Marshmallows,WIPO Case No. D2000-0003). In the present dispute, the Complainant has a strong reputation in its STATOIL trademark which is well-known in the oil industry while the Respondent claims to be preparing a website in connection with investment in that industry. The disputed domain name is identical to the Complainant’s STATOIL trademark except for the addition of a gTLD, and it is also identical to the Complainant’s official website address except for their respective gTLDs, all of which increases the likelihood of confusion of the disputed domain name with the Complainant and its goods and services. These circumstances are further evidence that the disputed domain name is being used in bad faith.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy. 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.
Matthew Kennedy
Sole Panelist
Date: July 20, 2016
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