Westmore · UDRP DecisionStatoil.store
The Panel ordered transfer of <statoil.store>. It found the domain identical to the Complainant’s registered STATOIL mark after disregarding the “.store” gTLD, found no rights or legitimate interests because the Complainant’s prima facie case was unrebutted, and found bad faith registration and use under the passive-holding doctrine. The bad-faith finding rested cumulatively on the mark’s well-known status, the Complainant’s longstanding business in China, the absence of any actual or intended good-faith use, the Respondent’s failure to respond, and apparently invalid WhoIs contact information.
The timeline behind statoil.store
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind statoil.store — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
This decision illustrates how an exact-match domain under a retail-oriented new gTLD can satisfy all three UDRP elements even without an active website. The outcome depended on the cumulative circumstances surrounding passive holding rather than on proof of active misuse: a well-known mark, longstanding use in the Respondent’s country, no plausible evidenced good-faith use, default, and apparently invalid contact information.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Statoil ASA v. Jie Yu / Yu Jie Case No. D2016-1628 1. The Parties The Complainant is Statoil ASA of Stavanger, Norway, represented by Valea AB, Sweden. The Respondent is Jie Yu / Yu Jie of Beijing, China. 2. The Domain Name and Registrar The disputed domain name <statoil.store> (“Disputed Domain Name”) is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2016. On August 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 15, 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. On August 18, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date. 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 and 4, the Center formally notified the Respondent in both Chinese and English of the Complaint, and the proceedings commenced on August 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2016. The Center appointed Kar Liang Soh as the sole panelist in this matter on September 28, 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. 4. Factual Background The Complainant, founded in 1972, is a leading global provider of oil and gas products and services. It has grown from a small Norwegian state owned company into a publicly listed company with 21,000 employees and extensive operations worldwide. The Complainant uses the trademark STATOIL in relation to its operations, products and services. The Complainant has been conducting business under the trademark STATOIL in China since 1982. The trademark STATOIL has been held to be a well-known mark by the UDRP panel of Statoil ASA v. Weiwei Qiu / PrivacyProtect.org , WIPO Case No. D2011-1752 and Statoil ASA v. Domain Admin/ Management SO Hkg , WIPO Case No. D2012-2392 . The Complainant is the registered proprietor of trademark registrations incorporating STATOIL in many jurisdictions, including the following: Jurisdiction Trademark No. Registration Date Norway 202960 May 18, 2000 Norway 273476 December 5, 2013 European Union 003657871 May 18, 2005 International 730092 March 7, 2000 International 753531 March 15, 2001 International 1220682 December 5, 2013 International registrations No. 730092 for STATOIL and No. 753531 for STATOIL – THE ENERY SOURCE have been granted protection in China. The Complainant is also the registrant of multiple domain names incorporating the trademark STATOIL, including <statoil.com>. The Complainant has also been involved in past UDRP panel decisions ( e.g ., 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 ; Statoil ASA v. David Campbell , WIPO Case No. D2013-1130 ; Statoil ASA v. IVAN RASHKOV , WIPO Case No. D2013-1583 ). The Respondent appears to be an individual based in Beijing, China. Beyond the WhoIs information of the Disputed Domain Name and the registrar verification in this proceeding, little information about the Respondent is known. Attempts to deliver the Written Notice of the commencement of administrative proceeding to the Respondent via the physical address and facsimile details of the Respondent in the WhoIs information failed. The Disputed Domain Name was registered on August 3, 2016, and did not resolve to a website as of the date of the Complaint. 5. Parties’ Contentions A. Complainant The Complainant contends that: (a) The Disputed Domain Name is identical or confusingly similar to the trademark STATOIL in which the Complainant has rights. The Disputed Domain Name incorporates the trademark STATOIL in its entirety. As the generic Top-Level Domain (“gTLD”) suffix “.store” in the domain name is disregarded under the confusing similarity test, the Disputed Domain Name is identical to the Complainant’s trademark STATOIL. Even if the gTLD suffix were to be taken into consideration, the Disputed Domain Name remains confusingly similar to the Complainant’s trademark STATOIL; (b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is not generally known as “statoil”. The Respondent’s name is “Jie Yu / Yu Jie”. The Respondent is not affiliated or related in any way to the Complainant, does not carry out any activity for, and does not have any business with the Complainant. The trademark STATOIL has not been licensed or authorized to the Respondent for use or for registration as a domain name. The Disputed Domain Name does not resolve to a website, demonstrating a lack of legitimate interests in the Disputed Domain Name; and (c) The Disputed Domain Name was registered and is being used in bad faith. The trademark STATOIL is well known worldwide and the Complainant has been conducting business in China under the same since 1982. As such, the Respondent must have been aware of the Complainant’s rights at the time of registration of the Disputed Domain Name. Moreover, the Disputed Domain Name has no other meaning except for being the name and trademark of the Complainant. There is therefore no plausible actual or contemplated use of the Disputed Domain Name that could be legitimate, and the Respondent’s passive holding the Disputed Domain Name amounted to registration and use in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The Registrar has affirmed that the language of the Registration Agreement for the Disputed Domain Name is Chinese. The Complainant filed the Complaint in English and has requested that English be adopted as the language of the proceeding. The Panel notes the Complainant’s allegation that the Respondent has registered many other domain names which contain English words and word combinations such as <chiropractors-in-nyc.com> and <mustang-girls.com>. The Panel is not convinced that these domain names were in fact registered by the Respondent. Having considered the circumstances, the Panel allows the Complainant’s request, having taken into account the following factors: (a) The Complainant is based in Norway where Chinese is not an official language; (b) The Disputed Domain Name is registered in Latin characters; (c) The Complaint has already been filed in English, to which the Respondent did not respond despite the Center’s indicating that it would accept a response in either language; (d) Requiring that the Complaint be translated into Chinese would place an unnecessary burden on the Complainant; (e) The Respondent, having been notified of the Complaint in both Chinese and English and having been given a fair chance to object, has not filed any response or commented on the Complainant’s request that English be adopted as the language of the proceeding; and (f) Requiring a Chinese translation of the Complaint will lead to unnecessary delay in the proceeding. 6.2. Substantive Matters In order to succeed in this proceeding, the following limbs of paragraph 4(a) of the Policy must be established: (i) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; (ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) The Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar Based on the trademark registrations in the evidence tendered, the Panel is satisfied that the Complainant owns rights in the trademark STATOIL. The Disputed Domain Name adopts the trademark STATOIL in its entirety. In accordance with the consensus view of prior UDRP panels, as outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions , Second Edition (“WIPO Overview 2.0”), the gTLD is generally disregarded when comparing a domain name with a trademark. The Panel does not see any reason to depart from this consensus opinion in the circumstances. Bearing this in mind, the gTLD, which in this case is “.store”, may be disregarded. The Disputed Domain Name is as a result identical to the trademark STATOIL. The first limb of paragraph 4(a) of the Policy is accordingly established. B. Rights or Legitimate Interests The consensus view among UDRP panels is that the Complainant is only required to establish a prima facie case that the Respondent lacks rights to or legitimate interests in the Disputed Domain Name. Once a prima facie case is made out, the burden shifts to the Respondent to show otherwise. The Complainant has maintained that the Respondent was never authorized, licensed or otherwise allowed by the Complainant to use the trademark STATOIL or to register a domain name incorporating the same. The Complainant has asserted that the Respondent is not affiliated with the Complainant in any way. There is no evidence to suggest otherwise. The Respondent’s name and the Disputed Domain Name bear no similarity with each other. There is no evidence before the Panel that the Respondent is commonly known by the Disputed Domain Name. Given that the Disputed Domain Name does not resolve to a website, the Panel also finds no indication in the evidence tendered that the Respondent used the Disputed Domain Name in connection with a bona fide offering of goods and services, or for a legitimate non-commercial or fair use. As such, the Panel is of the view that the Complainant has established a prima facie case that the Respondent lacks rights to or legitimate interests in the Disputed Domain Name. The Respondent has not filed any response to deny or refute the Complainant’s contentions. In the absence of any evidence or explanation to the contrary, the prima facie case has not been rebutted. The Panel holds that the second limb of paragraph 4(a) of the Policy is also established. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out circumstances which, if fulfilled, constitute evidence of bad faith registration and use of a domain name. However, the Panel notes that the circumstances in paragraph 4(b) of the Policy are not exhaustive, and bad faith registration and use of a domain name may be founded on other grounds. In particular, the case of Telstra Corporation Limited v. Nuclear Marshmallows , WIPO Case No. D2000-0003 , has long established that passive holding of a domain name entirely incorporating a trademark having a strong reputation may amount to bad faith registration. The Panel notes that the Complainant has effectively raised the same ground for a finding of bad faith. In determining whether a respondent is acting in bad faith, prior UDRP decisions make it clear that all the circumstances surrounding the registration and use of the domain name must be considered. These decisions have contributed to the current consensus view in WIPO Overview 2.0 that circumstances which may cumulatively be indicative of bad faith include “the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity.” Applying the principles above, the Panel concludes that the passive holding of the Disputed Domain Name by the Respondent amounts to registration and use of the Disputed Domain Name in bad faith for the following reasons: (a) It is apparent from the evidence that the Disputed Domain Name does not resolve to a website. There is also no evidence of use or intended use of the Disputed Domain Name by the Respondent; (b) The Panel accepts on the evidence that the Complainant’s trademark STATOIL is a well-known mark. Moreover, the Complainant’s evidence that it has been conducting business in China under the same trademark since 1982, and of its strong partnerships and presence prior to the registration date of the Disputed Domain Name, have not been refuted by the Respondent; (c) It is not foreseeable to the Panel that the Respondent could have devised and adopted the Disputed Domain Name without prior knowledge of the trademark STATOIL; (d) The Respondent appears to have provided invalid contact information in the WhoIs for the Disputed Domain Name. Taking into account all of the above reasons, the Panel is not convinced on the balance of probabilities that there was any actual or contemplated good faith use of the Disputed Domain Name by the Respondent and concludes that the Respondent’s passive holding of the Disputed Domain Name satisfies the requirement of paragraph 4(a)(iii). 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 <statoil.store> be transferred to the Complainant. Kar Liang Soh Sole Panelist Date: October 21, 2016
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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