The Complainant is Statoil ASA (“Statoil”) of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Yu Ke Rong of Zhongshan, 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 in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2017. On June 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 4, 2017, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on July 5, 2017.
On July 4, 2017, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On July 5, 2017, 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 together with the amended 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 proceedings commenced on July 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2017.
The Center appointed Francine Tan as the sole panelist in this matter on August 4, 2017. 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 international energy company operative in 34 countries worldwide, with approximately 22,000 employees. The Complainant is headquartered in Stavanger, Norway, and has been in business for over 40 years. The Complainant states that it is a leading provider globally of energy products and services.
The trade mark STATOIL is protected through several hundred registrations worldwide including International Registration No. 1220682 (registered December 5, 2013; designations including China), and European Union Trade Mark Registration No. 003657871 (registered May 18, 2005). The first trade mark registration was secured in 1974 in Norway (Norwegian Trademark Registration No. 90221; now no longer a subsisting registration). These registrations were obtained by the Complainant before the Respondent’s registration of the disputed domain name.
The Complainant is also the owner of a large domain name portfolio throughout the world, containing approximately 1,000 domain names, all of which comprise the STATOIL trade mark.
By virtue of the Complainant’s long use of its STATOIL trade mark, the trade mark STATOIL is associated exclusively with the Complainant. STATOIL has been considered a well-known trade mark within its field of business (see, e.g., Statoil ASA v. Weiwei Qiu / PrivacyP,WIPO Case No. D2011-1752; StatoilASA v. Weiwei Qiu,WIPO Case No. D2015-0411; Statoil ASA. v. STNG,WIPO Case No.
D2013-2113 ,Statoil ASA v. Domain Admin, Privacy Protection Service Inc D/B/A PrivacyP / Nicolas Kerry,WIPO Case No. D2017-0046).
The disputed domain name was registered on May 24, 2017 and redirects to a parking page with pay-per-click (“PPC”) links. 5. Parties’ Contentions A. Complainant
(i) The disputed domain name is identical to the Complainant’s trade mark STATOIL as it contains the Complainant’s trade mark. The generic Top-Level Domain (“gTLD”) “.press” is to be excluded from consideration because such gTLDs have no legal significance. For instance, in Belo Corp. v. George Latimer,WIPO Case No. D2002-0329,, the panel held that: “it is well established that the generic
top-level domain, in this case ‘.com’ must be excluded from consideration as being a generic or functional component of the Domain Name”. The disputed domain name is identical or visually, phonetically and conceptually confusingly similar to the Complainant’s well-known trade mark STATOIL. As the disputed domain name incorporates the trade mark STATOIL followed by the gTLD “.press”, the public would be inclined to think that the disputed domain name will lead to a website related to the Complainant.
(ii) The Respondent has no rights to or legitimate interests in the disputed domain name, in view of the Complainant’s continuous and long prior use of its trade mark STATOIL. None of the situations listed in paragraph 4(c) of the Policy can be established in this case. The Complainant has not licensed or otherwise permitted the Respondent to use its trade mark. There is no relationship between the Parties which would justify the registration of the disputed domain name by the Respondent. Nothing in the record, including the WhoIs information, suggests that the Respondent is commonly known by the disputed domain name. The Respondent has no registered trade mark corresponding to the disputed domain name. Its registration occurred later than the registration of the vast majority of the Complainant’s STATOIL mark, which is at the time of filing of the Complaint, a well-known trade mark. The Respondent cannot have been ignorant of the rights held by the Complainant. Even a simple search on the Google search engine would have clearly indicated the rights of the Complainant. Since the disputed domain name is for sale at Sedo, the only intention of the domain name registration by the Respondent must have been to sell the disputed domain name to the Complainant or to a third party. The fact that the disputed domain name redirects to a Sedo parking website is creating likelihood of confusion with the Complainant’s trade mark and generating financial gain to the Respondent. This shows that the Respondent has no rights to or legitimate interests in the disputed domain name as the Respondent is not making a bona fide offering of goods or services, is not commonly known by the disputed domain name, and is not making a noncommercial or fair use of the domain name.
(iii) The disputed domain name was registered and is being used in bad faith. The Respondent must have known of the Complainant’s well-known trade mark STATOIL. The Respondent could not have chosen or subsequently used the word “statoil” in the disputed domain name for any reason other than to capitalize on the goodwill of the Complainant’s STATOIL trade mark and attract Internet traffic for commercial gain. Further, reverse WhoIs searches show that the Respondent has registered other domain names that incorporate famous trade marks of other parties and is thus engaged in a pattern of bad faith registrations of domain names. Examples include , , , , , , , , , and . It can be inferred that the Respondent knew about the Complainant and the prior use of the STATOIL trade mark when it registered the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Preliminary Issue: Language of the Proceeding
The language of the Registration Agreement in this case is Chinese. 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 Complainant requested that English be adopted as the language of the proceeding for the reason that the disputed domain name is in Latin characters. The Complainant stated its belief that the Respondent is conversant and proficient in the English language. The Complainant submitted that it is important to ensure fairness and the maintenance of an inexpensive and expeditious avenue of resolving domain name disputes, whereas requiring a translation of the Complaint and the annexes would cause substantial additional expense and delay.
The Respondent did not reply on the issue of the language of the proceeding.
The Respondent appears to be comfortable and familiar with English, as evidenced by its choice of the disputed domain name and the many other English language domain names with which it is associated. The Panel has to ensure that the administrative proceeding takes place with due expedition (per paragraph 10(c) of the Rules) and agrees, in this case, that to impose a requirement for the Complainant to translate all the documents and evidence into Chinese would delay the proceeding. The Respondent has been provided correspondence from the Center in Chinese as well as in English, as well as the opportunity to respond in Chinese. If the Respondent had any objection or concerns on the issue of the language of the proceeding, it could have raised this with the Center, but it failed to do so.
There is nothing on the face of the circumstances which show that the Respondent will be prejudiced by a decision to allow the proceeding to be in English. The Panel therefore makes a determination accordingly. 6.2 Substantive Issues A. Identical or Confusingly Similar
The Complainant has shown it has trade mark rights in the word STATOIL. The entire word has been incorporated into the disputed domain name without any differentiation. The presence of the gTLD “.press” is not a relevant factor when considering the issue of identity or confusing similarity between a domain name in dispute and a trade mark. This is a well-established principle, based on the fact that the TLD is a technical requirement of domain names.
The Complainant has therefore satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that “any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent’s] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 domain name, even if [the Respondent has] acquired no trade mark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
The Respondent did not file any response and failed to invoke any of the circumstances which could demonstrate its rights to or legitimate interests in the disputed domain name. The Complainant is, notwithstanding the Respondent’s default, still required to establish each of the elements under paragraph 4(a) of the Policy, namely a prima facie case of the Respondent’s lack of rights to or legitimate interests, in the disputed domain name.
The Panel finds that a prima facie case has been established by the Complainant, that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence that the Complainant ever granted a license or permitted the Respondent to use the Complainant’s STATOIL trade mark or to apply for any domain name which comprises the trade mark. Furthermore, there is no evidence that the Respondent is known by the disputed domain name nor any evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods and services or with a legitimate noncommercial or fair use of the disputed domain name. In the absence of evidence to the contrary, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(a)(ii) of the Policy has been satisfied by the Complainant. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”:
(i) circumstances indicating that the respondent registered or 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 trade mark 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 registered the domain name in order to prevent the owner of the trade mark 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 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 its 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 its website or location or of a product or service on its website or location.
Having considered the presented facts and circumstances of this case including the fame of the Complainant’s STATOIL mark which, the Panel notes has been recognized in earlier UDRP panel decisions to be well-known, the Panel finds that the fact that:
a) the Respondent did not file any response whatsoever in the course of the proceeding;
b) the Respondent’s apparent absence of any rights or legitimate interests in the disputed domain name;
c) there is no obvious logical explanation why the Respondent, a Chinese entity or national, came to choose the name “statoil” for its domain name other than because of the fame and reputation associated with the STATOIL mark and name;
d) the disputed domain name was registered long after the STATOIL trade mark was first used and/or registered as a trade mark; and
e) the Respondent appears to have engaged in a pattern of conduct in registering domain names incorporating well-known trade marks;
all lead to the reasonable inference and conclusion that the Respondent could not have been ignorant of the Complainant’s STATOIL mark when it registered the disputed domain name. In the absence of any evidence from the Respondent to the contrary, what one would surmise is that the Respondent deliberately targeted the Complainant’s well-known STATOIL trade mark for profit. This constitutes opportunistic bad faith. Earlier UDRP panel decisions have held that the wholesale incorporation of a well-known trade mark into a domain name tends to support a finding of bad faith registration and use. The Panel finds that the circumstances in this case correspond to what is described in paragraphs 4(b)(i), (ii) and (iv) of the Policy.
The Panel therefore concludes that paragraph 4(a)(iii) of the Policy has been established. 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.
Francine Tan
Sole Panelist
Date: August 6, 2017
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