The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Creative Domain Pty Ltd. / Christine K. Hoyer, Four Leaf Inc. of Massachusetts, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2013. On April 29, 2013, the Center transmitted by email to PDR Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On April 30, 2013, PDR Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 24, 2013.
The Center appointed Staniforth Ricketson as the sole panelist in this matter on June 4, 2013. 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 headquartered in Norway with 21,000 employees and extensive operations worldwide, including investments in Australia: Complaint, [11] and Annex 5 to Complaint. It has been in business for over 40 years and has several hundred trade mark registrations in various countries, including four composite marks registered in Australia that include the word STATOIL prominently and the first of which was registered in 1987: see Annexes 6 and 7 to Complaint. These registrations cover a wide range of goods and services, mainly relating to Complainant’s core business such as oil, gas, petrol and related goods and services, but also for services such as management of petrol stations and vehicle service station services.
According to the .au registry, auDA, the disputed domain name was registered by the Respondent on November 21, 2012: see Complaint, p 7, and Annex 10 to the Complaint. 5. Parties’ Contentions A. Complainant
The Complainant contends that all the requirements of the .au Dispute Resolution Policy are made out, namely:
1. The disputed domain name is identical to confusingly similar to a name, trademark or service mark in which it has rights: Policy, paragraph 4(a)(i). In this regard, it points in particular to its four registered Australian trade marks in which the word STATOIL features prominently, and submits that the disputed domain name is confusingly similar.
2. That the Respondent has no rights or legitimate interests in respect of the disputed domain name: Policy, paragraph 4(a)(ii). In particular, the Complainant submits that: the Respondent is not affiliated with or related to the Complainant in any way, or licensed or authorized to use the STATOIL trade mark in any way; is not using the disputed domain name for a bona fide offering of goods or services; is not generally known by the name; and has not acquired any rights of its own in that name or mark: Complaint, p 6. Further, the Complainant contends that the Respondent is earning revenue through a clickable hyperlink that sends visitors to related websites that provide other services (car rental) and is also offering the disputed domain name for sale at S: Complaint, pp 7 and 8, Annex 8 to the Complaint.
3. That the disputed domain name was registered or has been subsequently used in bad faith: Policy, paragraph 4(a)(iii). The Complainant refers here to various of the matters raised under par 4(a)(ii), arguing that the circumstances referred to in par 4(b)(i) and (iv) of the Policy therefore arise (registration for the purposes of resale and use of the disputed domain name so as to cause customer confusion). In addition, the Complainant argues that the circumstances referred to in par 4(b)(iii) (disruption of the Complainant’s business) are present, and refers further to a pattern of abusive registrations in relation to other well known trademarks; Complaint, p 8 and Annexes 11 and 12 to the Complaint (a UDRP proceeding involving the same email address as for the Respondent: see Société des Produits Nestlé S.A. (“Nestlé SA”). v. Vyacheslav Chistovich,WIPO Case No. D2012-2004). B. Respondent
The Respondent has not filed a Response in the proceeding and has been duly served with a Notification of Respondent Default by the Center (May 24, 2013). 6. Discussion and Findings
Each of the requirements in paragraph 4(a) needs to be considered in turn, noting that the Complainant must satisfy the Panel that each of them is present before an order for transfer or cancellation may be made.
Paragraph 5(e) of the Rules provides that, where no response is submitted, in the absence of exceptional circumstances, the Panel is to decide the dispute based upon the Complaint. Such default on the part of the Respondent does not relieve the Complainant from being required to establish that each of the requirements of the Policy, in particular those under paragraph 4(a), is established. At the same time, it should be noted that paragraph 14(b) of the Rules provides that:
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
Accordingly, the Panel proceeds to deal with each of the matters required to be satisfied under paragraph 4(a) of the Policy, noting that the Complainant bears the onus of proof here if it is to succeed in its Complaint. A. Identical or Confusingly Similar
Paragraph 4(a)(i) requires that the Complainant establish that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”. There are therefore two limbs of paragraph 4(a)(i) that the Complainant must satisfy: first, that it has “rights in a name, trademark or service mark” (this need not be a registered mark), and, secondly, that the disputed domain name is “identical or confusingly similar” to that mark.
As to the first of these requirements, the Complainant has provided evidence that it has registered trade and services marks in a number of countries, including Australia. In the case of Australia, the earliest of these marks was registered in 1987, and each is a composite mark in which the word STATOIL is a prominent component: see Annexes 6 and 7 to the Complaint. On the basis of this material, there is more than sufficient evidence for the Panel to conclude that this limb of paragraph 4(a)(i) is satisfied.
As to the second limb of this paragraph, the Panel has no difficulty in concluding that there is confusing similarity between the trade marks and the disputed domain name. The substantive part of the latter comprises the word STATOIL on its own, and the suffix “.” will do nothing to dispel the confusion on the part of an Internet user who will focus only on the word STATOIL, rather than on any accompanying device or image, in searching for the Complainant online. Accordingly, the Panel finds that this second limb of paragraph 4(a)(i) is made out here. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant is required to show that the Respondent has “no rights or legitimate interests in respect of the domain name”. Further assistance as to the meaning of this requirement is given in paragraph 4(c) of the Policy, which 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, is to be taken to demonstrate your [the Respondent’s] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); 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 mark at issue.”
Essentially, these are matters for a respondent to put forward for the Panel’s consideration, as they are often difficult for a complainant to disprove directly. In the present case, there is nothing on the record to suggest that the circumstances referred to in any of the above sub-paragraphs are present. In particular, there is no evidence that the Complainant has licensed or otherwise permitted the Respondent to use the word component of the STATOIL marks as the disputed domain name. Neither is there anything to suggest that the Respondent was commonly known by the name STATOIL prior to registration of the disputed domain name nor that the Respondent is using the disputed domain name for the offering of goods or services other than to provide a click through to another site offering car rental services: Annex 8 to the Complaint. Indeed, the presence of the disputed domain name on the S website indicates that the circumstances referred to in the bracketed section of paragraph 4(c)(i) arise, namely that the Respondent is in the business of offering domain names for sale or rental. Further, there is nothing in the disputed domain name or in any website linked to it to suggest that this is a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii), for example, as part of a criticism or “gripe site”.
In this regard, the Complainant also asserts that there is a commercial aspect to the Respondent’s use of the disputed domain name through the “pay per click” function which takes users from a webpage linked to the disputed domain name to other websites offering car rental services: Complaint, pp 7-8 and Annex 8 to the Complaint. The Panel has not been able to confirm this directly, as searches for the disputed domain name brought up no websites linked to this (search carried out on June 13, 2013). In addition, the page from exhibited in Annex 8 appears to be in Norwegian, which is not a language known to the Panel. Nonetheless, even if this commercial aspect of the disputed domain name cannot be fully verified, on the basis of the material before the Panel there is sufficient material to conclude that there is a lack of rights or legitimate interests on the part of the Respondent in the disputed domain name.
Accordingly, the Panel is satisfied that paragraph 4(a)(ii) of the Policy is made out. C. Registered or Subsequently Used in Bad Faith
The matters discussed in relation to paragraph 4(a)(ii) of the Policy are also relevant to paragraph 4(a)(iii), which requires the Complainant to show that the disputed domain name has been registered or has been subsequently used in bad faith.
Paragraph 4(b) of the Policy then provides 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 you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you [the Respondent] have 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; or
(iii) you [the Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location.”
It will be noted that, unlike paragraph 4(a)(iii) of the UDRP, either registration or use of the disputed domain name in bad faith will suffice under the auDRP. Further, there are some significant differences between paragraphs 4(b) of the two Policies, with the auDRP being somewhat less restrictive in relation to sub-paragraphs 4(b)(i) (may be sale, etc to “another person” rather than just to the Complainant), 4(b)(ii) (no need to show a “pattern of such conduct”) and 4(b)(iv) (“a website…” rather then “your [the Respondent’s] website…”). However, in view of the fact that these factors are stated to be non-exclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and/or in use. In this regard, it is worth noting an early decision of a UDRP panel that may still remain relevant here, to the effect that registration in bad faith, followed by a passive holding of a domain name when there is no way in which it could be used legitimately, can also amount to use in bad faith, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
In the present proceeding, the Panel is satisfied that all the circumstances referred to in paragraph 4(b) arise:
1. The presence of the disputed domain name for sale on S points clearly to the circumstances referred to in sub-paragraph 4(b)(i). Although no price is indicated on this website, the words “make offer” suggest that this is not an altruistic invitation to transfer the disputed domain name at cost.
2. The inference that this is a “blocking” registration to prevent the Complainant reflecting the trade mark in a corresponding domain name in the .au domain is a strong one (sub-paragraph 4(c)(ii)).
3. This registration must be disruptive to the business of the Complainant in Australia (sub-paragraph 4(b)(iii)). As Annex 5 to the Complaint indicates, the Complainant does have an active involvement in a number of energy projects in Australia.
4. The likelihood of confusion with the Complainant’s trade mark is clearly present (sub-paragraph 4(b)(iv)), and there is some evidence that the Respondent has been using the disputed name for commercial purposes (see the discussion above in relation to paragraph 4(a)(ii)).
In addition, there is some prima facie evidence that the Respondent has been regularly engaging in a process of abusive registrations in relation to well known marks: see p 8 and Annex 11 to the Complaint (evidence of a series of registrations linked to the same contact email address as in the present proceeding).
Accordingly, the Panel is satisfied that there was both registration and subsequent use of the disputed domain name within the meaning of par 4(a)(iii) of the auDRP. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Staniforth Ricketson
Sole Panelist
Date: June 18, 2013
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