The Complainants are Statoil ASA of Stavanger, Norway and Statoil Fuel & Retail AS of Oslo, Norway, represented by Valea AB, Sweden.
The Respondent is Dany Daniele of Montagnola, Switzerland, self-represented.
The disputed domain name <statoilcard.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2014. On January 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 16, 2014, 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.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2014. On January 29, 2014, the Respondent sent an email communication to the Center in English and Italian. No further communications were filed with the Center. Accordingly, the Center notified the parties of the commencement of the panel appointment process on February 11, 2014.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on February 18, 2014. 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.
The Panel determines that, pursuant to paragraph 11(a) of the Rules, the language of the proceeding is English, i.e. the language of the Registration Agreement, which the Registrar confirmed to be English.
The Complainant Statoil ASA is an international energy company headquartered in Norway with 21,000 employees and extensive operations worldwide, which has been in the business of providing energy products and services for over 40 years.
The Complainant Statoil ASA is the owner of several hundred trademark registrations worldwide, for instance the STATOIL mark, with International Registration No. 730092 registered on March 7, 2000 and the STATOIL Community Trademark Registration No. 003657871 registered on May 18, 2005 (together, “the Mark”).
The Complainant Statoil ASA is also the owner of several hundred domain names containing the Mark, and has authorized the Complainant Statoil Fuel & Retail AS to use some, such as <statoil.se> and <statoil.no>.
The Complainant Statoil Fuel & Retail AS obtained from Complainant Statoil ASA a contractual right to use the Mark for cards and card services in Scandinavia and in Eastern Europe in connection with its fuel and retail business. The Complainant Statoil Fuel & Retail AS had operations in Europe for over one century and employs about 18,500 people. It mainly operates fuel stations in which retail sales are effected.
The disputed domain name was created on October 29, 2013.
(i) The Complainants submit that the disputed domain name reproduces the Mark in which the Complainant Statoil ASA has rights, and is confusingly similar to the Mark insofar as the disputed domain name, <statoilcard.com>, contains the Mark in its entirety. The Complainants also assert that the addition of the descriptive word “card” does not serve to distinguish the disputed domain name <statoilcard.com> from the Mark and only adds to the confusion.
(ii) The Complainants contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainants contend that they never licensed or in any way authorized the Respondent to register or use the Mark in any manner. The Complainants also assert that the Respondent has never been commonly known by the disputed domain name and has never acquired any trademark or service mark rights in the disputed domain name.
(iii) The Complainants submit that the Respondent has registered and is using the disputed domain name in bad faith and has never used or made preparations to use, the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. They allege that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name but instead is using the disputed domain name in connection with a website that displays sponsored links.
(iv) The Complainants submit that by registering the disputed domain name, the Respondent sought to misleadingly divert consumers for commercial gain. Furthermore, the Complainants submit that the Respondent acted in bad faith because the Mark being famous or at least well-known due to its extensive use, it knew or should have known about the Complainants' rights in and to the Mark when registering the disputed domain name.
(v) Finally, the Complainants contend that the Respondent acted in bad faith because the Respondent’s registration and use of the disputed domain name obviously has no other intention than to sell it to the Complainants or to a third party, or to make a profit from sponsored link advertising.
(vi) The Complainants request that the disputed domain name be transferred to the Complainant Statoil ASA.
On January 29, 2014, the Respondent sent an email communication to the Center, contending that at the time he purchased the disputed domain name, the “oami.europa.eu” database which he consulted indicated that the name “statoilcard” was not registered as intellectual property in Europe, and that he was certain that he could avail himself of these property criteria.
Under paragraph 4(a) of the Policy, it is the Complainants’ burden to establish that all three of the required criteria for a transfer or cancellation of the disputed domain name have been met.
In this case, the Panel finds that in his email communication, the Respondent failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainants. In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainants' arguments that the Respondent has acted in bad faith.
In comparing the Mark with the disputed domain name <statoilcard.com>, it is evident that the latter consists solely of the Mark, followed by the descriptive word “card”.
The addition of generic or descriptive terms does not serve to distinguish a domain name from registered marks. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; Royal Bank of Canada v. Rouslan Tambiev, WIPO Case No. D2002-0672; and Allianz AG v. Marian Dinu, WIPO Case No. D2006-0318.
The Panel finds that the disputed domain name <statoilcard.com> is confusingly similar to the Mark, which it incorporates in its entirety.
Thus, the Complainants have satisfied the requirement of paragraph 4(a)(i) of the Policy.
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of a right or legitimate interest in a domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainants have made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
As previously noted, the Respondent offered no reason for selecting the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name or a corresponding name or uses a corresponding name in a business.
The website associated with the disputed domain name resolves to a website that displays a number of sponsored links to various websites unrelated to the Complainants. It also indicates that the disputed domain name is for sale for USD 99,999.00.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainants have argued that the Respondent: (i) has no rights or legitimate interests in the disputed domain name; (ii) has no connection with or authorization from the Complainants; and (iii) is not commonly known by the disputed domain name.
In the circumstances, the Panel concludes that the Complainants have established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name.
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainants’ arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainants by registering the disputed domain name confusingly similar to the Mark.
It is established in prior UDRP decisions that the registration of a domain name confusingly similar to a famous trademark by any entity that has no relationship to that trademark may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Pfizer Inc. v. NA, WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; and Research in Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492.
As recognized in Statoil ASA v. Weiwei Qiu / PrivacyProtect.org, WIPO Case No. D2011-1752 and in Statoil ASA v. David Campbell, WIPO Case No. D2013-1130, the Panel considers the Mark to be famous. Thus, it is highly unlikely that the Respondent chose to register the disputed domain name randomly with no knowledge of the Mark. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, L.L.C. v. Darmstadter Designs, WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092. Taking also into account that the Complainant Statoil Fuel & Retail AS uses the Mark for cards and card services, the Panel considers it highly likely that the Respondent had the Mark in mind when it registered the disputed domain name.
Where the Respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may also demonstrate bad faith. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.
In addition, the Panel notes that many UDRP panels have held that bad faith use of a domain name by a respondent may also result from the fact its good faith use is in no way plausible (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148), considering the specificity of the activity.
The Complainants have also argued and provided evidence that the Respondent is not making a bona fide use of the disputed domain name, and that the disputed domain name is used to divert Internet users for commercial gain.
The Panel accepts that the Respondent’s website will directly or indirectly have generated revenue for the Respondent or whoever is responsible for the uploading of third party links on the website to which the disputed domain name resolves. The fact that it might not be the Respondent who has derived the gain is irrelevant. See Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912.
Besides, it is well established that the mere passive holding of a domain name may in appropriate circumstances be evidence not only of bad faith registration, but also of bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; and Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004; Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260.
Offering the disputed domain name for sale for a consideration greatly in excess of the cost of registration is also known to be an example of bad faith registration and use, see Asprey & Garrard Limited and Garrard Holdings Limited v. www.24carat.co.uk/domainnames.html, WIPO Case No. D2001-1501.
Finally, some UDRP panels have held that in certain circumstances, persons who are registering domain names have an affirmative duty to abstain registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc v. B.B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
The Panel finds that the evidence submitted supports a finding of bad faith under paragraph 4(b)(iv) of the Policy.
The Panel concludes in these circumstances that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.
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 <statoilcard.com> be transferred to the Complainant Statoil ASA.
Louis-Bernard Buchman
Sole Panelist
Date: March 4, 2014