Equinor ASA v Doe Candino

WIPO Case No. D2024-0998

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Equinor ASA v. Doe Candino

Case No. D2024-0998

1. The Parties

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

Sweden.

The Respondent is Doe Candino, United States of America (“United States”).

2. The Domain Name and Registrar

The Disputed Domain Name <partnerwithequinor.com> is registered with Atak Domain Hosting Internet ve

Bilgi Teknolojileri Limited Sirketi d/b/a Atak Teknoloji (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2024.
On March 7, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Disputed Domain Name. On March 8, 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 March 11, 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 March 12, 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 March 15, 2024. In accordance with the Rules, paragraph
5, the due date for Response was April 4, 2024. The Respondent did not submit any response. Accordingly,
the Center notified the Respondent’s default on April 11, 2024.

The Center appointed Tommaso La Scala as the sole panelist in this matter on April 15, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration

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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 energy company with operations in more than 30 countries around the world developing oil, gas, wind and solar energy, which owns the EQUINOR trademark registered in many jurisdictions worldwide.

The EQUINOR trademark has been registered in several jurisdictions, including in the United States (where
the Respondent is domiciled), under Registration No. 6436681 filed on June 12, 2018, and granted on
August 3, 2021.

The Complainant also owns, among others, the domain name <equinor.com>, registered in 2011 and connected to the Complainant’s official website.

The Disputed Domain Name was registered on February 28, 2024, and was linked to a website impersonating the Complainant’s official website. At the time of the Decision, it resolves to an inactive website.

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.

The Complainant is the owner of several trademark registrations in different jurisdictions worldwide that consist of the mark EQUINOR. The Disputed Domain Name fully incorporates such trademark with the mere addition of the words “partner with” and is therefore confusingly similar to the Complainant’s mark.

The Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant confirms it has never assigned, granted, licensed, sold, transferred, or in any way authorized the Respondent to register or use the EQUINOR trademark in any manner. The Disputed

Domain Name was registered and is being used in bad faith, since the attempt of impersonating the

Complainant carried out by the Respondent for illegitimate purposes cannot be in good faith.

B. Respondent

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

6. Discussion and Findings
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 established rights to the EQUINOR mark, as demonstrated by its registrations and widespread continued use. The Disputed Domain Name is confusingly similar to the Complainant’s mark because it contains the entirety of the Complainant’s marks with the addition of the terms “partner with”,

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which surely does not prevent a finding of confusing similarity between the Disputed Domain Name and the
Complainant’s registered trademark.

Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the entirety of the mark is reproduced within the Disputed Domain Name. Accordingly, the Disputed Domain Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

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.

The Complainant has shown that the Respondent is not making a legitimate noncommercial or fair use of the
Disputed Domain Name without intent for commercial gain. Rather, the Respondent was trying to
impersonate the Complainant by reproducing in the website to which the Disputed Domain Name resolved,
the Complainant’s website layout, colors, etc. and pictures of employees of the Complainant. Panels have
categorically held that the use of a domain name for illegal activity (e.g., impersonation/passing off) can
never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.
The Panel also finds that the composition of the Disputed Domain Name, with the additional terms “partner”
and “with”, cannot constitute fair use as it effectively impersonates or suggests affiliation with the
Complainant.

The Respondent did not reply to the Complainant’s allegations; therefore, the Respondent failed to establish rights or legitimate interests under the Policy.

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.

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

C. Registered and Used in Bad Faith

The Disputed Domain Name was registered after the Complainant first started using its EQUINOR trademark and the Complainant’s evidence establishes extensive use of its mark at the date of registration of the Disputed Domain Name. Given the confusing similarity between the latter and the Complainant’s mark, it is clear that the Respondent was aware of the Complainant and its EQUINOR mark at the date of registration of the Disputed Domain Name and registered it in order to take unfair advantage of it.

The website to which the Disputed Domain Name resolved - that is impersonating the Complainant’s website, is using both the word and figurative EQUINOR trademarks and is reproducing the Complainant’s

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website layout, colors, etc. - was clear evidence of the Respondent’s knowledge and awareness of the
Complainant.

Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out in paragraph 4(b)(iv) of the Policy is if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. Based on the evidence presented, the Panel finds that the Respondent’s use of the disputed domain name constitutes bad faith under Policy, paragraph 4(b)(iv).

Furthermore, UDRP panels have categorically held that the use of a domain name for illegal activity (here, impersonation/passing off) constitutes bad faith (see WIPO Overview 3.0, section 3.1.4). Having reviewed the record, the Panel finds the Respondent’s registration and use of the Disputed Domain Name constitutes bad faith under the Policy. Noting the circumstances of the case, the current non-use of the Disputed

Domain Name does not change the Panel’s finding on bad faith (see WIPO Overview 3.0, section 3.3).

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

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 <partnerwithequinor.com> be transferred to the Complainant.

/Tommaso La Scala/
Tommaso La Scala
Sole Panelist
Date: April 29, 2024