Equinor ASA v Domain Synergy

WIPO Case No. D2022-3957

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Equinor ASA v. Domain Synergy

Case No. D2022-3957

1. The Parties

The Complainant is Equinor ASA, Norway, represented by Valea AB, Sweden.

The Respondent is Domain Synergy, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <equinorewish.xyz> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2022. connection with the disputed domain name. On October 24, 2022, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and its contact details. The Center sent an email communication to the Complainant on October 26, 2022, inviting the Complainant to rectify certain information in the Complaint. The Complainant filed an amended Complaint on October 27, 2022.

The Center verified that the Complaint together with the amended 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 November 8, 2022. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 2, 2022.

The Center appointed Anne-Virginie La Spada as the sole panelist in this matter December 19, 2022. 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.

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4. Factual Background

The Complainant is a Norwegian company developing oil, gas, wind and solar energy.

Among other registrations, the Complainant owns the following trademark registrations for EQUINOR:

- European Union trademark registration No 017900772, registered on January 18, 2019, in Classes 1, 2,
4, 6, 7, 9, 16, 17, 19, 25, 28, 35, 36, 37, 39, 40, 41, 42;

- United Kingdom trademark registration No UK00917900772, registered on January 18, 2019, in Classes
1, 2, 4, 6, 7, 9, 16, 17, 19, 25, 28, 35, 36, 37, 39, 40, 41, 42.

The Complainant also states that it is the owner of more than 100 domain names containing the trademark
EQUINOR.

The disputed domain name was registered on March 12, 2022. The disputed domain name redirects Internet users to the website connected to the domain name <kittymail.co.uk>, an online email service.

The MX records (i.e. the mail exchanger records specifying the mail server responsible for accepting email messages) for the disputed domain name suggest that it can be used for email communication.

5. Parties’ Contentions

A. Complainant

According to the Complainant, the disputed domain name is confusingly similar to its EQUINOR registered trademark as it reproduces its trademark with the mere adjunction of the letter “e” and the term “wish”, the generic Top-Level Domain (“gTLD”) “.xyz” being disregarded due to its purely technical function.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name, as the Respondent is not authorized by the Complainant to use its trademark in connection with the disputed domain name, and there is no indication that the Respondent is known under the disputed

domain name. The Respondent has not used the disputed domain name in connection with any bona fide
offering of goods or services, nor is the Respondent making any legitimate noncommercial or fair use of the
disputed domain name.

Finally, according to the Complainant, the Respondent has registered and is using the disputed domain name in bad faith. The Complainant further asserts that the Respondent took unfair advantage of the reputation of the Complainant’s EQUINOR mark to redirect Internet users to the domain name <kittymail.co.uk>.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:

(i) the domain name registered by the respondent 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 domain name; and
(iii) the domain name registered by the respondent has been registered and is being used in bad faith.

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A. Identical or Confusingly Similar

The disputed domain name reproduces the Complainant’s trademark EQUINOR in its entirety with no alteration and combines this trademark with the letter “e” and the term “wish”.

UDRP panels consider that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element of paragraph 4(a) of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

In the present case, the trademark EQUINOR is clearly recognizable in the disputed domain name. The mere addition of the term “wish” and the letter “e” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.

UDRP panels accept that a gTLD, such as “.xyz”, may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (see WIPO Overview 3.0, section 1.11).

The Complainant has satisfied the condition set forth in paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Based on the information submitted by the Complainant, the Respondent does not appear to have rights or legitimate interests in respect of the disputed domain name, nor has the Complainant granted to the Respondent an authorization to use its trademark in the disputed domain name. Moreover, there is no evidence indicating that the Respondent is commonly known by the disputed domain name.

In addition, based on the evidence provided by the Complainant, the Respondent uses the confusingly similar disputed domain name to redirect Internet users to a website operated under a different domain name, purporteldy offering the creation of e-mail addresses. This does not appear to be a legitimate

noncommercial purpose.

Furthermore, the composition of the disputed domain name carries a risk of implied affiliation (see WIPO

Overview 3.0, section 2.5.1).

Finally, the Respondent did not file a response to the Complaint. The Panel may draw from the lack of a
Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b).

prima facie prima facie case.

In view of the above, the Panel finds that the Complainant has established a case that the silence corroborates such

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Considering the distinctiveness of the Complainant’s EQUINOR trademark, the Panel accepts that the name.

Furthermore, the Respondent used the disputed domain name to redirect Internet users to a third party website purportedly offering the creation of email addresses.

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UDRP panels have found that redirecting a domain name to third party websites may support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark, a behavior which amounts to bad faith according to paragraph 4(b)(iv) of the Policy (see WIPO Overview 3.0, section 3.1.4).

Finally, the MX records relating to the disputed domain name suggest that it might be or have been used for email communication, possibly for phishing purposes. UDRP panels have inferred a bad faith behavior from the activation of MX servers, which can be used to create email addresses for phishing purposes (see

Kingfisher Investissements v. Brico Depot, Brico Depot, WIPO Case No. D2020-2702 and Robertet SA v.
Marie Claude Holler, WIPO Case No. D2018-1878).

For the reasons set out above, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith, and that the Complainant has satisfied the condition set forth in 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, <equinorewish.xyz>, be transferred to the Complainant.

/Anne-Virginie La Spada /
Anne-Virginie La Spada
Sole Panelist
Date: December 29, 2022