The Complainant is Statoil ASA (“Statoil”) of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Oneandone Private Registration, 1&1 Internet Inc. of Chesterbrook, Pennsylvania, United States of America (“United States”) / Elizabeth Grippe of Tarrytown, New York, United States.
The disputed domain name <statoill.org> (“Disputed Domain Name”) is registered with 1&1 Internet SE (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2017. On November 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 17, 2017, 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 November 24, 2017 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 November 27, 2017.
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 November 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 17, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2017.
The Center appointed Nicholas Weston as the sole panelist in this matter on January 4, 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.
The Complainant operates a NYSE listed oil, gas and energy business with more than 22,000 employees and revenue exceeding EUR94 billion in 2010. The Complainant holds registrations for the trademark STATOIL in numerous countries which it uses to designate a range of goods and services from petrochemical products to transportation of oil to oil and gas exploration services. International Trademark Registration No. 730092, for example, shows an application and priority date of February 25, 2000 and registered on March 7, 2000.
The Complainant owns approximately 1,000 domain names comprising or containing the STATOIL trademark and has operated an active website using the domain name <statoil.com> since at least December 1998.1
The Respondent registered the Disputed Domain Name <statoill.org> on October 18, 2017. The Disputed Domain Name resolves to a website that resembles the Complainant’s website artwork.
The Complainant cites its Norwegian trademark registrations including No. 90221 approved in 1974 but now ceased, No. 730092 and numerous other registrations around the world, including in the United States, for the mark STATOIL as prima facie evidence of ownership.
The Complainant submits that the mark STATOIL is well-known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name <statoill.org> by 43 years. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the STATOIL trademark and that the similarity is not removed by the additional letter “l” or the addition of the generic Top-Level Domain (“gTLD”) “.org”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it resolves to a website that resembles its own, and contends that such a respondent has no rights or legitimate interests in the Disputed Domain Name.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the fame and long standing prior use of the Complainant’s trademarks. The Complainant cites a number of previous UDRP decisions involving the Complainant and also submits evidence showing that the Respondent’s website “is an essentially (sic) exact copy of the Complainant’s official website”.
The Respondent did not reply to the Complainant’s contentions.
Having regard to the remedy sought in the Complaint, and having regard to paragraph 10(b) of the Rules, the Panel must be satisfied that any orders made will address the appropriate Respondent.
Paragraph 1 of the Rules defines “Respondent” as “the holder of a domain name registration against which a complaint is initiated”. The Complainant has named and proceeded against a domain name registration privacy service listed as the registrant of the Disputed Domain Name in the WhoIs prior to the filing of the Complaint.
The use of a privacy service raises three issues for determination by the Panel. First, the Panel must identify the appropriate Respondent. Second, the Panel must determine the applicable mutual jurisdiction. Third, the Panel must determine whether the Center has adequately discharged its responsibility to contact the Respondent by reasonable means.
Given the underlying registrant information disclosed following enquiries differs from the respondent named in the initial Complaint, this Panel is satisfied it is appropriate to add the disclosed underlying registrant to the amended Complaint as a co-respondent and finds that in light of the record the named Oneandone Private Registration, 1&1 Internet Inc. of Chesterbrook, Pennsylvania, United States / Elizabeth Grippe of Tarrytown, New York, United States is the proper Respondent (jointly and severally, “Respondent”) (see WIPO Overview 3.0, section 4.4.2).
As noted having regard to the Complainant’s submissions and the location of the principal office of the Registrar, 1&1 Internet Inc., it appears that the applicable mutual jurisdiction2 is Pennsylvania in the United States.
Finally, the Panel has reviewed the record and finds that the Center has adequately discharged its responsibility to contact the Respondent by reasonable means. The words “calculated to achieve actual notice” in paragraph 2 of the Rules do not demand proof of service.
Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark STATOIL in numerous countries including the United States. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the STATOIL trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark STATOIL; (b) followed by the letter “L”; (c) followed by the gTLD “.org”.
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “statoill”.
It is also well-established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the use of a different gTLD suffix (see: Wal-Mart Stores, Inc. v. WalMart Careers, Inc., WIPO Case No. D2012-0285; Statoil ASA v. Weiwei Qiu / PrivacyProtect.org, WIPO Case No. D2011-1752; Statoil ASA v. Domain Admin/ Management SO Hkg, WIPO Case No. D2012-2392).
Numerous previous UDRP panels have found that confusing similarity can result from the practice of “typosquatting”, which arises where the domain name is a slight alphabetical variation from a famous mark (see LouisVuitton v. Net-Promotion, WIPO Case No. D2000-0430; Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314; Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201) or a deliberate misspelling of a trademark (see Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc. WIPO Case No. D2000-0587).
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or a legitimate interest in the disputed domain name. The Policy also places the burden on the complainant to establish the absence of respondent’s rights or legitimate interest in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview 3.0, section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because there is no evidence of the Respondents’ use, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods and services, noting that the evidence is it resolves to a website that is an unauthorized “copy of [Complainant’s] official website, statoil.com”, also inconsistent with respondent rights or legitimate interests.
This Panel accepts that the Complainant has made out a prima facie case that the Respondents lack rights or legitimate interests in the Disputed Domain Name and, in the absence of a reply by the Respondents, the Panel finds for the Complainant on paragraph 4(a)(ii) of the Policy.
The third element of the Policy that the complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondents registered and have used the Disputed Domain Name in bad faith.
On the issue of registration, the trademark STATOIL is such a famous mark for oil and gas related products and services that it would be inconceivable that the Respondents might have registered the mark without knowing of it (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Statoil ASA v. Magne Espelund, WIPO Case No. D2003-0097 (“undoubtedly is a famous mark within Norway”); Statoil ASA v. Weiwei Qiu / PrivacyProtect.org, supra (“The STATOIL trademark is registered worldwide and is well known”); Statoil ASA v. Domain Admin/ Management SO Hkg, supra (“the well-known STATOIL trademark”); Statoil ASA v. Daniel MacIntyre, Ethical Island, WIPO Case No. D2014-0369 (“a well-known mark”); and Statoil ASA (Statoil) v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / patrick ubong, WIPO Case No. D2016-1792 (“the Complainant’s STATOIL trademark is well-known within its field of business”).
The diversion of Internet users is also a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).
Further, a gap of ten years between registration of a complainant’s trademarks and a respondent’s registration of the disputed domain name (containing the trademark) could constitute in certain circumstances additional evidence of bad faith (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name forty-three years after the Complainant first established trademark rights in the STATOIL mark.
On the issue of use, the evidence that the Disputed Domain Name resolves to an unauthorized copy of the Complainant’s main website is evidence of bad faith use in accordance with paragraph 4(b)(i) of the Policy.
Further, the Panel notes an email from the courier service used by the Center to serve the materials in this case on the Respondents sent on November 30, 2017 indicates the Respondents provided wrong/incomplete contact information when registering the Disputed Domain Name. This Panel therefore infers that the Respondents have used a privacy service in combination with provision of incomplete contact information to conceal the identity of the ‘true’ or ‘underlying’ registrant and accepts this as further evidence of bad faith (See WIPO Overview 3.0, section 3.2).
In this case, the Complainant has a well-known trademark, the Disputed Domain Name resolves to a copy of the Complainant’s website and it hid behind a privacy service supplied with wrong/incomplete contact information. This Panel regards such conduct as prima facie evidence of bad faith use in the absence of a response.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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, <statoill.org> be transferred to the Complainant.
Nicholas Weston
Sole Panelist
Date: January 7, 2018
1 Active domain name information obtained by Panel from The Wayback Machine (“www.archive.org”); see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.8.
2 In general, having regard to the definition of “mutual jurisdiction” in the Rules, it would either be that of the registrant’s address as identified in the registrar’s WhoIs at the time of the filing of the complaint with the Provider or the principal office of the registrar, see Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320. In this case, the Complainant has elected the jurisdiction of the courts at the location of the principal office of the Registrar (i.e. State of Pennsylvania in the United States).