WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Statoil ASA (Statoil) v. Ye Zhao Long

Case No. D2018-0566

1. The Parties

The Complainant is Statoil ASA (Statoil) of Stavanger, Norway, represented by Valea AB, Sweden.

The Respondent is Ye Zhao Long of Shenzhen, Guangdong, China, self-represented.

2. The Domain Name and Registrar

The disputed domain name <statoilblockchain.com> is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2018. On March 15, 2018, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the disputed domain name. On March 16, 2018, the Registrar transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On March 20, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On March 21, 2018, the Respondent requested that Chinese be the language of the proceeding. On March 22, 2018, the Complainant submitted a request that English be the language of the proceeding.

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 English and Chinese of the Complaint, and the proceedings commenced on March 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 17, 2018. A first Response was filed with the Center on April 10, 2018, with an indication of willingness to transfer the disputed domain name through consultation. On April 12, 2018, the Center sent the Parties an e-mail regarding possible settlement. On April 12, 2018, the Respondent filed its Final Response with the Center. On April 18, 2018, the Center notified the Parties of Commencement of Panel Appointment Process. Given that the Respondent re-stated its willingness to transfer the disputed domain name through consultation in its Final Response, the Center sent a second e-mail regarding possible settlement on April 20, 2018. On April 23, 2018, the Center received a reply from the Complainant, indicating that it will not submit a request for suspension for possible settlement discussion.

The Center appointed Jonathan Agmon as the sole panelist in this matter on May 7, 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.

4. Factual Background

The Complainant is Statoil ASA, an international energy company with operations worldwide. The Complainant’s headquarters are in Norway. The Complainant has been active in the energy field for over 40 years. Among other activities, the Complainant, with others, is co-developing a blockchain-based digital platform for energy trading.

The Complainant claims it is the owner of several hundred Trademark registration, among them it is the owner of the following STATOIL Trademark Registrations: International trademark STATOIL No. 730092, dated March 7, 2000; European Union Trademark STATOIL No. 003657871, dated May 18, 2005.

The disputed domain name <statoilblochchain.com> was registered on January 22, 2018.

Currently, the disputed domain name is inactive.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s famous and registered mark STATOIL because it contains the Complainant’s mark in its entirety. It also stipulates that the addition of a descriptive element “blockchain” to the registered trademark does not negate the confusing similarity for the purpose of the UDRP, but rather that the addition adds to the confusion and that it reinforces the relationship with the trademark.

The Complainant argues that the Respondent started using the disputed domain name long after the Complainant began using its mark and did so due to the international reputation it has acquired in the mark STATOIL which has been asserted in several UDRP decisions (see Statoil ASA v.Weiwei Qui/ privacy protect.org, WIPO Case No. D2011-1752; Statoil ASA. v. STNG, WIPO Case No. D2013-2113).

The Complainant also argues that the Respondent is not known under the disputed domain name and is not authorized by the Complainant to use the disputed domain name.

The Complainant further argues that the fame it has acquired in the STATOIL marks makes it impossible for the Respondent to be unknown of the Complainant when it registered the disputed domain name.

The Complainant claims that the Respondent registered and used the disputed domain name in bad faith.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent submitted the First Response on April 10, 2018 and the Final Response on April 12, 2018.

The Respondent contends that the disputed domain name is made up of the terms “stat”, “oil” and “blockchain”, with the meaning of “the blockchain of stat oil” or “Radioactive Fuel Blockchain”; the Respondent has no knowledge of the Complainant when registering the disputed domain name; the Complainant is an energy company without relation to “blockchain”, so the disputed domain name will not cause confusion to the users; the Respondent did not infringe the Complainant’s rights by registering and using the disputed domain name in bad faith.

6. Discussion and Findings

6.1. Language of the Proceeding

Paragraph 11 of the Rules provides that:

“(a) 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 language of the Registration Agreement for the disputed domain name is Chinese, as confirmed by the Registrar in its verification e-mail to the Center of March 16, 2018.

The Complainant requested that the language of the proceeding be English.

The Respondent requested that the language of the proceeding be Chinese.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:

(i) The disputed domain name consists of Latin letters, rather than Chinese characters;

(ii) The Complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language;

(iii) The Respondent has submitted the Response which indicated that he is able to understand the merits of the Complaint in the English language.

Upon considering the above, the Panel determines that English be the language of the proceeding.

6.2. Substantive Issues

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The disputed domain name <statoilblockchain.com> integrates the Complainant’s STATOIL trademark in its entirety. The disputed domain name and the Complainant’s trademark differ in the addition of the component “blockchain” and the addition of the generic Top-Level Domain (“gTLD”) “.com”.

The additional component “blockchain” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark. The term “blockchain” is descriptive of a type of distributed ledger technology, and as mentioned above, the Complainant is currently developing a blockchain platform. Hence, Internet users could wrongly believe that the disputed domain name was registered by the Complainant to promote their products. Previous UDRP panels have ruled that the addition of a descriptive element does not necessarily serve to avoid a finding of confusing similarity between the domain name and the registered trademark (See Statoil ASA v. Domains by Proxy/ John Brendon, WIPO Case No. D2013-1074; Dr. Ing. H.c. F. Porsche AG. v. Vasiliy Terkin, WIPO Case No. 2003-0888).

The addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity (see Accor v. Noldc Inc. WIPO Case No. D2005-0016; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; L’Oréal v Tina Smith, WIPO Case No. D2013-0820; Titoni AG v Runxin Wang,WIPO Case No. D2008-0820; and Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877). Therefore, the gTLD “.com” iswithout significance in the present case since the use of a gTLD is technically required to operate a domain name.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.

In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard. In previous UDRP decisions, panels found that in the absence of any license or permission from the complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed (Groupe Auchan v. Gan Yu, WIPO Case No. D2013-0188; LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138). Due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s trademarks or a variation thereof, and the Respondent failed to bring any evidence to show why he has any rights in the disputed domain name, the Panel finds that the Respondent failed to meet the required standard of proof to rebut the prima facie case made by the Complainant.

Furthermore, as mentioned above, the disputed domain name is inactive. Passive holding of a disputed domain name which incorporates a third party registered trademark, as a rule, does not amount to a bona fide use (see CBS Broadcasting Inc. v. Edward Enterprises, WIPO Case No. D2000-0242; Statiol ASA v. IVAN RASHKOV, WIPO Case No.D2013-1583).

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the STATOIL trademark since the year 2000. In view of the evidence filed by the Complainant, it is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (see Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735). The Respondent’s explanation that the disputed domain name is made of generic words is not persuasive. The Respondent failed to bring any evidence in support of its arguments and the Panel could not find any association between the words “stat”, “oil” and “blockchain” to “radioactive fuel blockchain.”

Furthermore, the disputed domain name includes the Complainant’s trademark in its entirety with the term “blockchain”, the latter being a generic term. The Complainant’s trademark together with the word “blockchain” is an unusual combination since the Complainant is in the energy business. However, contrary to the argument made by the Respondent, shortly before the disputed domain name was registered the Complainant published that it intends to test digital technology to improve energy trading efficiency using blockchain technology. Additional publications were made just prior to the registration of the disputed domain name stating that “energy majors BP, Shell and Statoil are to co-develop a blockchain-based digital platform for energy trading”. Such publications contradict the Respondent’s unsupported arguments and are evidence of opportunistic bad faith registration by the Respondent. The Respondent did not provide a response to explain the circumstances of the registration of the disputed domain name and the Panel infers under the circumstances of the particular case that the Respondent registered the disputed domain name in bad faith.

The disputed domain name is currently not in use. UDRP panels have long found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding (see Telstra Corporation Limited v. Nuclear Marshmallows, supra; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574). UDRP panels look at the totality of circumstances of each case to determine if passive holding is an additional evidence of bad faith. In the present case, the similarity between the Complainant’s trademark to the disputed domain name, the fact that the Complainant published shortly before the registration of the disputed domain name its intention to engage in blockchain technology and the implausibility of any good faith use to which the disputed domain name may be put, lead the Panel to find that the present non-use of the disputed domain name serves as additional evidence of bad faith registration and use of the disputed domain name. This finding is supported by the Respondent’s willingness to negotiate the transfer of the disputed domain name to the Complainant

In addition, the Complainant provided a “Reverse WhoIs” search results showing dozens of domain names registered to the Respondent, including a few well-known third-party marks with a generic supplement plus a gTLD such as: <googlesafe.net>, <googleviva.net>, <harvardcenter.com>. Previous UDRP panels have found that such indications suggest that the Respondent is engaged in a pattern of targeting marks, i.e. registering domain names with intent to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name. Such action is one of the circumstances UDRP panels may take into account while considering bad faith factors (See WIPO Overview 3.0, paragraph 3.2.1; Arla Foods Amba and Mejeriforeningen Danish Dairy Board v. Mohammad Alkurdi, WIPO Case No. D2017-0391; Comerica Bank v. Eli Tomlinson, Eli’s Software Encyclopedia, WIPO Case No.D2016-0044).

Based on the evidence presented to the Panel, including the registration of the disputed domain name long after the registration of the Complainant’s marks, the confusing similarity between the disputed domain name, the evidence suggesting the Respondent was targeting the Complainant’s trademarks, the evidence submitted to show the Respondent’s pattern of targeting marks, the lack of evidence or reasonable explanation by the Respondent as to his registration and use of the disputed domain name, and the implausibility of any good faith use to which the disputed domain name may be put, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

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, <statoilblockchain.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: May 15, 2018