Equinor ASA v Anders Opedal, Loo

WIPO Case No. D2023-3434

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Equinor ASA v. Anders Opedal, Loo

Case No. D2023-3434

1. The Parties

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

Sweden.

The Respondent is Anders Opedal, Loo, United States of America (“USA”).

2. The Domain Name and Registrar

The disputed domain name <equinorsgroup.com> is registered with Squarespace Domains II LLC (the

“Registrar”)[1].

[1] The Complaint was filed identifying the Registrar as Google LLC. On October 3, 2023, Google LLC confirmed that the disputed

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2023.
On August 11, 2023, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On the same date, 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 (Contact Privacy Inc. Customer 7151571251) and contact
information in the Complaint. The Center sent an email communication to the Complainant on August 18,
2023 providing the registrant and contact information disclosed by the Registrar, and inviting the
Complainant to submit an amendment to the Complaint. The Complainant filed a simple amendment to the

Complaint on the same date.

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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 1, 2023. In accordance with the Rules, paragraph 5, the due date for Response was September 21, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2023.

The Center appointed Mladen Vukmir as the sole panelist in this matter on October 6, 2023. 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

(i) The Complainant is a Norwegian corporation with operations in more than 30 countries around the world

developing oil, gas, wind, and solar energy;

(ii) The Complainant is the owner of a worldwide portfolio of earlier registered trademarks EQUINOR, among

others:

- USA registration no. 6436681 for EQUINOR, registered on August 3, 2021,

- European Union registration no. 017900772 for EQUINOR, registered on January 18, 2019,

- International registration no. 1444675 for EQUINOR registered on July 4, 2018
(“EQUINOR trademark”);

(iii) The Complainant is the registrant of more than 100 domain names incorporating EQUINOR trademark, such as <equinor.com>, <equinor.ventures>, <equinor.store>, <equinor.global>, and <equinors.com>; and

(iv) The disputed domain name was registered on August 9, 2023, and it resolves to an inactive web page.

5. Parties’ Contentions

A. Complainant

The Complainant, essentially, asserts the following:

(i) it was founded as the Norwegian State Oil Company (Statoil) in 1972, and the Norwegian State holds 67 EQUINOR trademark inherited the famous status of STATOIL trademark and became known to everyone who knew Statoil before, due to the widely published name change. In parallel to the official name change, an adequate intellectual property portfolio has been created, and EQUINOR trademark applications have been filed worldwide;

% of the shares. The Complainant was formerly known as Statoil. In 2018 it decided to change its name
from Statoil ASA to Equinor ASA shifting focus from oil and gas to renewable energy sources such as wind
and solar power. The name change was announced on March 15, 2018, and the news was shared and
commented worldwide on different media platforms. By virtue of the Complainant’s long use and the renown
of the Statoil name, the reputation associated with STATOIL trademark is excellent by virtue of the
(ii) the disputed domain name is confusingly similar to the Complainant’s EQUINOR trademark, as the
disputed domain name incorporates the entire EQUINOR trademark;

(iii) the Respondent has no rights to or legitimate interests in respect of the disputed domain name based on the Complainant’s prior use of its EQUINOR trademark, and company name EQUINOR. The Respondent is not affiliated with or related to the Complainant in any way, or licensed or otherwise authorized to use

EQUINOR trademark in connection with a website, a domain name, or any other purpose. The Respondent is not using the disputed domain name in connection with any legitimate noncommercial or fair use without

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intent for commercial gain, is not generally known by the disputed domain name and has not acquired any trademark or service mark rights in that name or mark. The Respondent is not using the disputed domain name in connection with bona fide offering of goods or services; and

(iv) the Respondent has intentionally registered and is using the disputed domain name in bad faith. The that it incorporated a well known and distinctive trademark in which he had no rights. The registration of the disputed domain name took place 5 years after the announced name change of the Complainant. The disputed domain name resolves to an inactive page. The Mail Exchange (“MX”) records appears to be activated for the disputed domain name, and the Complainant believes that a receiver of an email sent from “[…]@equinorsgroup.com” could be mistaken in to believing that the email has been sent by the Complainant.

B. Respondent

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

6. Discussion and Findings

The Panel now proceeds to consider this matter on the merits in light of the Complaint, the lack of the
Response, the Policy, the Rules, the Supplemental Rules, and any rules and principles of law that it deems
applicable pursuant to paragraph 15(a) of the Rules. Paragraph 4(a) of the Policy provides that the

Complainant must prove, with respect to the disputed domain name, each of the following:

(i) the disputed domain name is confusingly similar to a trademark 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

As provided in section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), it is generally accepted that ownership of a registered trademark by a complainant is sufficient to satisfy the threshold requirement of having the trademark rights for purposes of standing to file a UDPR case.

The Complainant has submitted evidence to show that it is the holder of a number of EQUINOR trademarks
registered before the competent authorities worldwide. As such, these trademarks provide to the
Complainant all the exclusive rights that are granted with such trademark registrations.

It is well established that the threshold test for confusing similarity under the UDRP involves a reasoned but relatively straightforward comparison between the textual components of the relevant trademark and the disputed domain name. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing (see section 1.7 of the WIPO Overview 3.0).

After performing a side-by side comparison of the disputed domain name and the Complainant’s EQUINOR trademark, it is evident to this Panel that the disputed domain name incorporates the Complainant’s EQUINOR trademark in its entirety, and that the Complainant’s EQUINOR trademark is clearly recognizable as such within the disputed domain name. The difference between the disputed domain name and the Complainant’s EQUINOR trademark is the addition of letter “s” and term “group” which follow term “equinor” in the disputed domain name.

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Prior UDRP Panels have found that where the trademark in question is recognizable within the disputed domain name, the addition of other terms (whether descriptive, etc.) does not prevent a finding of confusing similarity between the disputed domain name and trademark in question (section 1.8 of WIPO Overview 3.0). In this particular case, and following earlier UDRP panels decisions, added letter “s” and term “group” do not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s EQUINOR trademark.

Regarding the generic Top-Level Domain (“gTLD”), “.com” in the disputed domain name, as a standard
registration requirement, should be disregarded under the confusing similarity test (section 1.11.1 of

WIPO Overview 3.0).

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s

EQUINOR trademark under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for the Respondent to demonstrate that it has the rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

“(i) Before any notice to [the respondent] of the dispute, [use by the respondent] of, or demonstrable
preparations to use, the domain name or a name corresponding to the domain name in connection

with a bona fide offering of goods or services; or

(ii) [Where the respondent] (as an individual, business, or other organization) [has] been commonly known
by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [Where the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

As noted by the previous UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, and as summarized in section 2.1 of the WIPO Overview 3.0: “[…] While 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 often impossible 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

In the present case, the Complainant has made a prima facie case that the Respondent lacks rights or
legitimate interests in the disputed domain name, with the Respondent failing to provide any response to the
Complaint which would prove his rights or legitimate interests in the disputed domain name.

Namely, the Complainant has established that it is the owner of a number of EQUINOR trademarks in various jurisdictions. The Panel concludes that there is neither any relation, disclosed to the Panel, nor otherwise apparent from the records, between the Respondent and the Complainant, nor does it arise that the Complainant has ever licensed or otherwise permitted the Respondent to use its EQUINOR trademarks or to apply for or use any domain name incorporating the same trademarks.

Furthermore, there is no evidence that the Respondent has been commonly known by the disputed domain name. There is no evidence that the Respondent has been using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the

disputed domain name.

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The Respondent has failed to provide any reply to the Complaint and accordingly failed to rebut the domain name.

Accordingly, the Panel finds that the requirements set forth in paragraph 4(a)(ii) of the Policy have been fulfilled by the Complainant’s making the prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and by the Respondent’s failing to produce any arguments or

evidence to the contrary.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular, but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:

“(i) circumstances indicating that the holder 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 holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder 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 holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a

competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet
users to the holder’s website or other online location, by creating a likelihood of confusion with the
complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or
location or of a product or service on the holder’s website or location.”

The Panel accepts the Complainant’s arguments that the Respondent has registered and used the disputed domain name in bad faith. The Complainant operates in more than 30 countries, its name change has been publicly announced in media in 2018. The disputed domain name was registered 5 years after the

Complainant’s first EQUINOR trademark was registered in 2018. The EQUINOR trademarks are registered with competent authorities worldwide, and in this Panel’s view they are highly distinctive. As determined in earlier UDRP cases, the Complainant’s EQUINOR trademarks are well known (see Equinor ASA, v. Randall

Attwood, Adam Bukowsky, WIPO Case No. D2023-3280). Considering all the facts in the present case, the Panel finds that it is highly unlikely that the Respondent was unaware of the Complainant and its trademarks when he registered the disputed domain name.

The disputed domain name resolves to an inactive website. The Panel considers the passive holding of the disputed domain name in light of provisions of section 3.3 of the WIPO Overview 3.0. Namely, in earlier UDRP cases panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. The panels should look at the totality of the circumstances in each case. Accordingly, this Panel has considered the relevant factors as the degree of distinctiveness and reputation of the Complainant’s mark, the failure of the Respondent to provide any evidence of actual or contemplated good-faith use, and the implausibility of any good faith use to which the disputed domain name may be put.

The Complainant stated in the Complaint that the Respondent has configured MX records for the disputed domain name. The Panel accepts the Complainant’s argument that such the Respondent’s action suggests its intention to use the disputed domain name.

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Given the above, the Panel hereby concludes that the disputed domain name has been registered and is being used in bad faith, and confirms that the Complainant has fulfilled the third element 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 <equinorsgroup.com> be transferred to the Complainant.

/Mladen Vukmir/
Mladen Vukmir
Sole Panelist
Date: October 20, 2023

domain name is registered with Squarespace Domains II following a purchase agreement. Google LLC has confirmed both Registrars’
compliance with the UDRP and the implementation of the decision by either Registrar.