The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Agungpamungkaslaksono of Jakarta, Indonesia.
The disputed domain name <statoilpremiumclub.net> is registered with Dynadot, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 29, 2016. On April 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 1, 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.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 May 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 30, 2016.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on June 6, 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.
The Complainant is a leading provider of energy products and services globally. The Complainant is incorporated in Norway, but is an international company operating in 37 countries worldwide. The Complainant has established multiple offices in Indonesia and has operated in that jurisdiction since 2007. The Complainant has used the STATOIL mark since the 1960s. It owns many registrations for STATOIL marks throughout the world, including in Norway, the European Union, Argentina, Brazil, Chile, Egypt, Kuwait, Mexico, Nigeria, the Russian Federation, Saudi Arabia, South Africa, Thailand, the United Arab Emirates, the United States of America, and the Bolivarian Republic of Venezuela, among several other jurisdictions. The Complainant owns at least five registrations in Indonesia applied-for in 2009 for its STATOIL and design mark (Indonesian Reg. Nos. IDM000387890, IDM000290866, IDM000306105, IDM000306104, and IDM000306103). The Complainant owns approximately 1,000 domain names comprising the STATOIL mark distributed among generic and country code Top Level Domains.
The Complainant offers credit card services under the name "Statoil premiumclub" in some jurisdictions. The Complainant previously used the disputed domain name.
The Respondent registered the disputed domain name on December 3, 2015. The disputed domain name resolves to a website featuring information about the game of poker and other casino gambling games and featuring links to several third-party online gambling websites.
The Complainant states that it is a leading international energy company operative in 37 countries and having 22,000 employees. It has been in business and using the STATOIL marks for over 40 years. The STATOIL mark is renowned and is a well-known mark within the Complainant's field of business. Prior UDRP cases have found STATOIL to be a famous mark. See, e.g., Statoil ASA v. Weiwei Qiu, WIPO Case No. D2015-0411; Statoil ASA v. VistaPrint Technologies Ltd, WIPO Case No. D2014-0511; Statoil ASA v. Allan, WIPO Case No. D2013-2123; Statoil ASA v. Domain Admin/Management SO Hkg, WIPO Case No. D2012-2392; Statoil ASA v. Weiwei Qiu / PrivacyProtect.org, WIPO Case No. D2011-1752. By virtue of the Complainant's long use and the renown of the STATOIL mark, the mark is associated exclusively with the Complainant.
The disputed domain name is highly similar to the Complainant's mark STATOIL. The disputed domain name contains the Complainant's mark STATOIL. The addition of the generic Top-Level Domain ("gTLD") ".net" to the disputed domain name must be excluded because it has no legal significance in the analysis. It is a generic or functional component of the disputed domain name. See Belo Corp. v. George Latimer, WCM, Inc., WIPO Case No. D2002-0329. Additionally, the inclusion of the generic term "premiumclub" does not impact the overall impression of the dominant part of the disputed domain name STATOIL. The addition of a generic term to a famous mark does not sufficiently distinguish a disputed domain name from a complainant's mark in the mind of consumers. See, e.g., LEGO Juris A/S v. kang zheng, WIPO Case No. D2010-1924; Compagnie Générale des Establissements Michelin-Michelin & Cie v. Tgifactory, WIPO Case No. D2000-1414.
Given (a) the widespread reputation and high degree of recognition of the STATOIL marks and (b) the lack of distinguishing factors between the disputed domain name and the Complainant's mark, the disputed domain name should be considered confusingly similar to the STATOIL mark. Because of the worldwide brand awareness of the STATOIL marks, an Internet user would most likely assume that a website associated with the disputed domain name would be connected with the Complainant and its credit card "Statoil premiumclub". The public likely would believe that the disputed domain name will lead to a website related to the Complainant and its business of that an email using the disputed domain name originates from the Complainant.
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use the Complainant's mark. There is no relationship between the Complainant and the Respondent that would justify the registration of the disputed domain name by the Respondent. Nothing in the record suggests that the Respondent is commonly known by the disputed domain name. The Respondent has no registered trademarks or trade names corresponding to the disputed domain name. Registration of the disputed domain name occurred later than the registration of a vast majority of the Complainant's STATOIL marks. Registration of the disputed domain name occurred at a time when the STATOIL marks had already gained international status as well-known marks.
The Respondent could not have been ignorant of the rights held by the Complainant in the STATOIL mark. The Complainant and the STATOIL mark enjoy a worldwide reputation dating back to the late 1960s. A simple Internet search would have clearly indicated the Complainant's rights in the STATOIL mark. Therefore, the STATOIL mark is not one that traders could legitimately adopt other than for the purpose of creating the impression of an association with the Complainant. This is particularly so in this case where the Respondent added a generic term used by the Complainant in offering its services and in domain names previously used by the Complainant. Therefore, the Respondent's intention is to attract Internet users to the Respondent's website, a poker site, for commercial gain by creating a likelihood of confusion with the Complainant's mark.
Because 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 noncommercial fair use of the disputed domain name, the Respondent has no rights to or legitimate interests in the disputed domain name.
The Respondent registered and is using the domain name in bad faith. Respondent must have known about the Complainant's well-known STATOIL mark. Therefore, the Respondent could not have chosen or subsequently used the word "statoil" in its domain name for any reason other than to trade off of the goodwill and reputation of the Complainant's mark or otherwise to create the false impression of association, sponsorship or endorsement with or by the Complainant. A domain name that is confusingly similar to a famous trademark by an entity that has no relationship to that mark is itself sufficient evidence of bad faith use and registration. See, e.g., Ebay Inc. v. Wangming, WIPO Case No. D2006-1107.
The Complainant states that it must reasonably be inferred that the Respondent knew about the Complainant and the prior use of the domain name when the Respondent registered the disputed domain name and created a poker website. It is common for third parties to register domain names that have lapsed for the reason of creating similarity and hence misuse the trademark and attract visitors.
The Complainant requests that the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant's contentions.
The Policy provides for transfer or cancellation of the domain name if the Complainant establishes each of the following elements set out in Paragraph 4(a):
(i) The Respondent's 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant has met this burden.
The Complainant has rights in the STATOIL mark. The Complainant has established that it is the registered owner of various international trademark registrations for STATOIL marks, registered long before the Respondent registered the disputed domain name. The Panel accepts that the Complainant's marks are internationally well-known.
The Panel finds that the disputed domain name is confusingly similar to the Complainant's mark. The gTLD ".net" extension being a technical part of the domain name does not affect the assessment of whether the disputed domain name is similar to the Complainant's STATOIL mark. Additionally, the Panel finds that the term "premiumclub" is generic. The addition of a generic term to a famous mark is not sufficient to avoid confusion. Compagnie Générale des Establissements Michelin-Michelin & Cie v. Tgifactory, supra.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
Under paragraph 4(c) of the Policy, a respondent may demonstrate rights or legitimate interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:
(i) The respondent's use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the respondent of the dispute; or
(ii) The respondent 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.
Although the disputed domain name resolves to a website featuring information about poker and casino games, such use does not demonstrate any legitimate interests in the disputed domain name as contemplated under paragraph 4(c) of the Policy. There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain name. The Complainant's STATOIL mark is long-established and widely known around the world, including in Indonesia, the location of the Respondent. In the absence of any evidence to the contrary, knowledge of the Complainant's rights in the STATOIL mark may be imputed to the Respondent at the time of registration of the disputed domain name. The words "Statoil premiumclub" bear no obvious relationship to the Respondent's activities in connection with the disputed domain name. "The inevitable conclusion is that these words are not ones that the Respondent would legitimately choose in the context of provision of goods, services or information via a website unless seeking to create an impression of an association with the Complainant". See Harvey Norman Retailing Pty Ltd v. gghome.com Pty Ltd, WIPO Case No. D2000-0945. No rights or legitimate interests can be created where the Respondent would not have chosen the disputed domain name unless seeking to create an impression of association with the Complainant. See Drexel University v. David Brouda, WIPO Case No. D2001-0067. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or 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; or
(ii) The Respondent has 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, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has 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 the Respondent's web site 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 such web site or location or of a product or service on such web site or location.
The Panel finds that the Respondent was likely aware of the Complainant and its marks at the time of registration of the disputed domain name. The Complainant is well-known throughout the world as are the STATOIL marks. The STATOIL service marks have been in use in commerce for decades prior to the registration of the disputed domain name. Additionally, the Complainant owns many trademark registrations around the globe, including in Indonesia, where the Respondent is located. Although the Respondent may not be under an obligation to conduct an exhaustive trademark search before acquiring a domain name, a simple Internet search for "statoil" would have yielded many obvious references to the Complainant and the Complainant's use of STATOIL marks. The Panel finds it very unlikely that the Respondent was not aware of the Complainant and its interests in the STATOIL marks. Bad faith can be inferred from the Respondent's registration of a domain name incorporating a well-known mark of which the Respondent must have been aware, without any evident right to do so. See Hurriyet Gazetecilik ve Maatbaacilik Anonim Sirketi v. Onuno L.L.C., WIPO Case No. D2015-1504; AXA S.A. v. P.A. van der Wees, WIPO Case No. D2009-0206; BHP Billiton Innovation v. Ravindra Bala, WIPO Case No. D2008-1059; Ebay Inc. v. Wangming, supra. Therefore, the Panel finds that the Respondent registered the disputed domain name in bad faith.
Given that the disputed domain name is confusing similar to the Complainant's extensively used and well-known service mark, the Panel finds that the Respondent must have been aware that Internet users may reasonably believe that the disputed domain name and resolving website would be owned, controlled, established or otherwise associated with the Complainant. See AXA S.A. v. P.A. van der Wees, supra. In the absence of a response by the Respondent, the Panel can only conclude that the Respondent must be deriving commercial benefit for providing links to third-party gambling websites on the Respondent's website. See Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Rohit Katoch, WIPO Case No. D2011-0402 ("[W]hy would the Respondent provide those links if he were not getting some return for so doing?"). The Respondent has intentionally attempted to attract Internet users to the Respondent's website for commercial gain by creating a likelihood of confusion with the Complainant's STATOIL mark as to the source, sponsorship, affiliation, or endorsement of such website. These activities fall within those described in paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the Respondent is using the disputed domain name in bad faith.
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, <statoilpremiumclub.net>, be transferred to the Complainant.
Kimberley Chen Nobles
Sole Panelist
Date: June 20, 2016