Equinor ASA v Abdul Hakim

WIPO Case No. D2024-0390

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Equinor ASA v. Abdul Hakim

Case No. D2024-0390

1. The Parties

The Complainant is Equinor ASA, Norway, represented by Rouse AB (Valea AB trading as Rouse AB),

Sweden.

The Respondent is Abdul Hakim, Bangladesh.

2. The Domain Name and Registrar

The disputed domain name <equinorr.pro> is registered with Dynadot Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2024. On January 29, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 30, 2024, 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 (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 30, 2024, 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 January 31, 2024.

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 February 2, 2024. In accordance with the Rules, paragraph
5, the due date for Response was February 22, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 28, 2024.

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The Center appointed Mireille Buydens as the sole panelist in this matter on March 5, 2024. 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 a Norwegian corporation, formerly known as Statoil ASA. The Complainant is a broad international energy company with operations in more than 30 countries around the world developing oil, gas, wind, and solar energy.

The Complainant was founded as The Norwegian State Oil Company (Statoil) in 1972 and the Norwegian State holds 67% of the shares. By virtue of the Complainant’s long use and the renown of the Statoil name, the STATOIL became a well-known trademark within its field of business. The Complainant changed its name to Equinor in 2018. The name change was announced on March 15, 2018, and the news were shared and commented worldwide on different media platforms.

In parallel to the official name change, an adequate IP portfolio has been created. The Complainant has registered the EQUINOR trademark (“the Trademark”) in numerous jurisdictions, including:

- The European Union trademark registration for EQUINOR (word- and figurative) no. 017900772,
registered on January 18, 2019, for various products and services, notably related to energy;

- The Norwegian trademark registration for EQUINOR (word- and figurative), no. 298811, registered
on June 12, 2018 for products and services related to energy;

- The International trademark registration for EQUINOR (wordmark) no.1444675, registered on July 4,
2018, for various products and services, notably related to energy;

- The United States trademark registration for EQUINOR (wordmark) no. 6.436.681, registered on
August 3, 2021, for various products and services, notably related to energy;

Furthermore, the Complainant is the owner of more than 100 domain name registrations throughout the
world containing the Trademark distributed among generic Top-Level Domains (“gTLDs”) and country code
Top-Level Domains (“ccTLDs”).

The disputed domain name was registered on January 27, 2024. The Complainant has documented that the disputed domain name resolved to a website first displaying a “Verifying that you are not a robot”-box site. Thereafter, a log-in site was displayed where Internet users were asked to fill out their username and password. There was no clear information concerning who was behind the site and no further indication was provided when clicking on “create an account”. MX-records have been activated for the disputed domain name.

On the date of this decision, the disputed domain name resolves to an error page.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

First, the Complainant contends that it owns prior rights in the Trademark. The Complainant notes that the disputed domain name contains the Trademark plus an additional “r” at the very end of the disputed domain name. Accordingly, the Complainant finds that the disputed domain name is confusingly similar to

the Trademark. Considering the brand awareness of the Trademark worldwide, an Internet user would most probably assume a connection with the Complainant and its business when seeking information on a website

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or receiving an email with the disputed domain name. The gTLD “.pro” is not sufficient to prevent the
confusing similarity as the Top-Level Domain is viewed as a standard registration requirement and as such is
disregarded under the confusing similarity test.

Second, the Complainant asserts that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the Trademark in connection with a website, a domain name or for any other

purpose. The Respondent is not using the domain name in connection with any legitimate noncommercial or fair use without intent for commercial gain, is not generally known by the disputed domain name and has not acquired any trademark rights in that name or trademark. The Complainant further submits that the

Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services.

Third, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. The Complainant contends that the Respondent chose to register a domain name that is highly similar to the Complainant’s Trademark. The Respondent was fully aware of the fact that it incorporated a well-known and distinctive trademark in which the Respondent had no prior rights. The Respondent’s registration and use of the disputed domain name, incorporating the Complainant’s Trademark, indicates that the Respondent has

intentionally attempted to attract Internet traffic, for commercial gain, by creating a likelihood of confusion of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual registrant can be considered as an additional indication of bad faith.
with the Complainant’s Trademark. This is the more so that the disputed domain name resolved to a website
not mentioning who was behind the site (the only indication being the Trademark in the disputed domain
name). Besides, as the MX-record has been activated, the Complainant believes that a recipient of a

potential email sent from the disputed domain name is likely to believe that the sender is the Complainant.

The Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements to succeed in its Complaint:

(i)           the disputed 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 disputed domain name; and

(iii)         the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

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. A domain name which

The Panel finds the Trademark is recognizable within the disputed domain nameadditional “r” at the end of the Trademark EQUINOR. Such difference would remain unnoticed from Internet users and is a clear case of typo-squatting. Accordingly, the disputed domain name is confusingly similar to the Trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be
confusingly similar to the relevant mark for purposes of the first element. WIPO Overview 3.0, section 1.9.

The gTLD “.pro” is a standard registration requirement. WIPO Overview 3.0, section 1.11.1.

Based on the available record, the Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Respondent is not licensed by or affiliated with the Complainant in any way. There is no evidence that the Respondent would be commonly known under the disputed domain name, nor is there any evidence of use or demonstrable plans to use the disputed domain name for a bona fide offering of goods or services. There is no evidence of legitimate non-commercial or fair use of the disputed domain name, either.

The composition of the disputed domain name, which only differs from the Trademark by the addition of an additional “r” at the end of the Trademark EQUINOR, which is an obvious case of typosquatting, affirms the Respondent’s intention of taking unfair advantage of the likelihood of confusion between the disputed

domain name and the Complainant’s Trademark. This confirms that there is no use, nor preparations to use,
of the disputed domain name in connection with a bona fide offering of goods or services, and thus no

legitimate interest in the disputed domain name.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

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Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

In the present case, the Panel notes that the disputed domain name is confusingly similar to the the registration of the disputed domain name. WIPO Overview 3.0 section 3.2.2.

Complainant’s Trademark, which predates the registration of the disputed domain name and is a widely
known trademark as shown by the Complainant in the annexes to the Complaint. The disputed domain
name reproduces the Trademark with the single difference that it adds a second letter “r” after the Trademark
EQUINOR. This typo would obviously go unnoticed by the Internet users and cannot be the result of chance.

At the date of this decision, it appears that the disputed domain name is passively held. Panels have found Complainant’s Trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive
holding. Having reviewed the available record, the Panel finds the non-use of the disputed domain name
does not prevent a finding of bad faith in the circumstances of this proceeding. Although panelists will look at
the totality of the circumstances in each case, factors that have been considered relevant in applying the
passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii)
the failure of the respondent to provide any evidence of actual or contemplated good-faith use.

The Panel finds that the Complainant has established the third element 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 <equinorr.pro> be transferred to the Complainant.

/Mireille Buydens/
Mireille Buydens
Sole Panelist
Date: March 14, 2024