The Complainant is Equinor ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Domain Admin, Privacy Protect, LLC (P) of Burlington, Massachusetts, United States of America / smart sscga, Radission of New Delhi, India. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2018. On June 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 12, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 14, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 15, 2018.
The Center verified that the Complaint together with the amendment to 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 June 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2018. The Respondent submitted an email communication to the Center on June 15, 2018. The Center notified the Parties of the commencement of panel appointment process on July 13, 2018.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on July 27, 2018. 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 Equinor ASA is an international energy company with approximately 22,000 employees and extensive operations worldwide. The Complainant headquarter is located in Norway, and it has been in the business for over 40 years. Furthermore, it’s one of the leading providers of energy products and services. It is important to mention that on May 2018 the Complainant changed its company name from Statoil to “Equinor”, but the Complainant still owns all rights to the trademark STATOIL.
The Complainant is the owner of numerous registrations throughout the world for the trademark STATOIL including, among others:
- The first STATOIL trademark registration was granted in 1974, Norwegian Trademark Registration No. 90221, now ceased.
- STATOIL International Registration No. 730092 registered on March 7, 2000,
- STATOIL European Union (EU) Trademark Registration No. 3657871 registered on May 18, 2005.
The Complainant is also the owner of approximately 1,000 domain names, registered in generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”).
The Disputed Domain Name was registered on April 4, 2018.
The Disputed Domain Name is currently inactive. However, the Complainant provided evidence that the Disputed Domain Name resolved to a website with the look and feel of the Complainant’s official website with, inter alia, the contact information of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
Identical or confusingly similar
The Disputed Domain Name uses the Complainant’s trademark in its entirety with the addition of the ending “-us”.
The Complainant alleges that the additional element “-us” clearly refers to the United States of America and is therefore descriptive. The combination of the Complainant’s trademark with the hyphen and the generic term “us” will lead Internet users to believe that the Disputed Domain Name refers to a particular location of the Complainant, which in this case is theUnited States of America.
Therefore, Internet users will assume a connection to the Complainant.
In view of the foregoing, the Disputed Domain Name is visually, phonetically and conceptually confusingly similar to the Complainant’s trademark.
Rights or legitimate interests
The Complainant submits that the Respondent is not affiliated or related to the company in any way, nor has the Complainant granted any licenses or other rights to use the trademark STATOIL in the Disputed Domain Name or to register any domain name which incorporates the Complainant’s trademark.
The Respondent has no rights or legitimate interests with respect to the Disputed Domain Name.
Furthermore, the Respondent is not using the Disputed Domain Name with a bona fide offering of goods or services and is not known by the Disputed Domain Name.
Registration and use in bad faith
The Complainant alleges that the Respondent has intentionally registered and is using the Disputed Domain Name in bad faith. Furthermore, the Disputed Domain Name bears no relationship to the Respondent’s name or business as it has no other meaning than the name and trademark of the Complainant.
The Complainant states that the Disputed Domain Name is connected with the Complainant and the use of the Respondent, which has no connection with the Complainant, suggests bad faith.
The Complainant and its trademark SATATOIL is well-known worldwide and was also at the time of registration of the Disputed Domain Name (see Statoil ASA v. Daniel MacIntyre, Ethical Island,WIPO Case No. D2014-0369).
Moreover, the fact that the Respondent created a website which resembles to the Complainant’s website with, inter alia, the contact information of the Complainant, such as, street address and the name of Scoot Steiger, an employee of the Complainant, underlines the Respondent’s bad faith. B. Respondent
The Respondent reply to the Complainant’s contentions stating the following: “Please stop writing me…you have blocked all accounts. Please don’t disturb me again”. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name at issue in this case:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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 Disputed Domain Name is confusingly similar to the Complaint’s trademark STATOIL. The Disputed Domain Name wholly incorporates the Complainant’s trademark as its only distinctive element.
Furthermore, the Disputed Domain Name contains the Complainant’s STATOIL trademark in its entirety; the addition of the hyphen and the generic term “us” does not prevent a finding of confusing similarity.
Therefore, the Panel concludes that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark in the Disputed Domain Name. The Complainant has prior rights in the trademark, which precede the Respondent’s registration of the Disputed Domain Name.
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name. Moreover, he had the opportunity to demonstrate his rights or legitimate interests, but he reply to the Complainant’s contention requesting not to be disturbed again.
As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Disputed Domain Name was registered on April 4, 2018, while the Complainant trademark was granted in Norway in the year 1974.
The fact the Disputed Domain Name fully incorporates the Complainant’s trademark is clear evidence that the Respondent was well aware of the Complainant’s trademark at the time it proceeded with the registration of the disputed domain name. The Disputed Domain Name is comprised of the STATOIL trademark with “-us”. The use of “-us” can lead to an inference of being a domain name related to the Complainant’s subsidiary or business in the United States of America. In addition, many Internet users would suppose that the Disputed Domain Name had been registered by the Complainant or an affiliate of the Complainant to promote the business in the United States of America.
Moreover, the Respondent had created a website which resembles the Complainant’s webpage, using contact information of the Complainant and the name of an employee of the Complainant. This clearly shows that the Respondent was well aware of the Complainant’s trademark at the time it proceeded with the registration of the Disputed Domain Name, and that the Respondent registered and used the Disputed Domain Name in bad faith.
Therefore, the Panel concludes that Respondent has registered and used the Disputed Domain Name in bad faith.
The Disputed Domain Name is currently inactive. As it has been the case in several previous UDRP cases, the fact that the disputed domain name is currently inactive does not prevent a finding of bad faith use and does not change the Panel’s views in this respect.
Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and used 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.
Pablo A. Palazzi
Sole Panelist
Date: August 8, 2018
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