Equinor ASA v equ equinor, Equinor

WIPO Case No. D2022-4866

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Equinor ASA v. equ equinor, Equinor

Case No. D2022-4866

1. The Parties

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

The Respondent is equ equinor, Equinor, Nigeria.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2022. On December 19, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 2022, 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 (Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 21, 2022, 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 December 23, 2022.

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 December 28, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2023.

The Center appointed Kaya Köklü as the sole panelist in this matter on January 24, 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.

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4. Factual Background

The Complainant, before 2018 known as Statoil ASA, is an internationally active company in the energy sector. It is based in Norway and develops oil, gas, wind, and solar energy in more than 30 countries worldwide.

The Complainant is the proprietor of the EQUINOR trademark, which is registered in a large number of jurisdictions worldwide (Annex E to the Complaint), including the European Union Trademark No. 017900772, registered on January 18, 2019, for goods in class 1, 2, 4, 6, 7, 9, 16, 17, 19, 25, and 28, and for services in class 35, 36, 37, 39, 40, 41, and 42 (Annex F to the Complaint).

The Complainant is also the registrant of numerous domain names containing its EQUINOR mark, including
<equinor.com> and <energy-equinor.com> (Annex G to the Complaint).

The Respondent is reportedly located in Nigeria, despite providing information for a zip code and city that are located in the United Kingdom.

The disputed domain name was registered on December 16, 2022.

At one time, the disputed domain name resolved to a website offering crypto currency services by prominently using the EQUINOR trademark and, hence, causing the (false) impression that the website may be operated by the Complainant (Annex H to the Complaint). Also, the Respondent apparently configured and activated MX records for the disputed domain name, which enables the Respondent to send and receive emails using the disputed domain name (Annex I to the Complaint).

At the time of the decision, the disputed domain name does not resolve to an active website anymore.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain name.

The Complainant is of the opinion that the disputed domain name is confusingly similar to its EQUINOR trademark.

It further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

In addition, the Complainant is convinced that the Respondent has registered and is using the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the
Policy, the Rules and any rules and principles of law that it deems applicable.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

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(i)        the disputed domain name is identical or 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.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where
relevant, accept the provided reasonable factual allegations in the Complaint as true. See section 4.3 of the
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

For the evaluation of this case, the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views stated therein.

A. Identical or Confusingly Similar

To begin with, the Panel confirms that the Complainant has satisfied the threshold requirement of having relevant trademark rights. As evidenced in the Complaint, the Complainant is the owner of the EQUINOR trademark, which has been first used and registered in 2018.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s EQUINOR trademark. The disputed domain name fully comprises the EQUINOR trademark. As stated at section 1.8 of the WIPO Overview 3.0, where a trademark is recognizable within the disputed domain name, the addition of other terms would generally not prevent a finding of confusing similarity. In the present case, the mere addition of the dictionary term “energy”, does, in view of the Panel, not serve to avoid a finding of confusing similarity between the disputed domain name and the Complainant’s EQUINOR trademark. The Panel also notes that the applicable generic Top-Level Domain (“gTLD”) (“.online” in this case) is viewed as a standard registration requirement, and may as such be disregarded by the Panel, see in this regard the WIPO Overview 3.0, section 1.11.1.

In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph

4(a)(i) of the Policy.

B. Rights or Legitimate Interests

While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

With its Complaint, the Complainant has provided prima facie evidence that the Respondent has no rights or legitimate interests, particularly no license or alike to use the Complainant’s EQUINOR trademark in a confusingly similar way within the disputed domain name.

In the absence of a Response, the Respondent has failed to demonstrate any of the nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or provide any other evidence of a right or legitimate interest in the disputed domain name.

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There is particularly no doubt that the Respondent was well aware of the Complainant and its EQUINOR trademark before registering and using the disputed domain name. The Panel is convinced that the Respondent deliberately has chosen the disputed domain name to cause confusion with the Complainant among Internet users. Also, the Panel notes that the nature of the disputed domain name carries a significant risk of implied affiliation or association, as stated in section 2.5.1 of the WIPO Overview 3.0, considering the descriptiveness of the added term “energy” as it relates to the Complainant’s services. The Panel is even convinced that the Respondent intended such implied affiliation by using the disputed domain name to impersonate the Complainant, which results in an illicit use that can never confer rights or legitimate interests upon the Respondent. WIPO Overview 3.0, section 2.13.

Bearing all this in mind, the Panel does also not see any basis for assessing a bona fide offering of goods or services by the Respondent.

Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel believes that the Respondent deliberately attempted to create a likelihood of confusion among
Internet users for illegitimate purposes, particularly for the following reasons.

At the date of registration of the disputed domain name, the Respondent was apparently well aware of the Complainant and its EQUINOR trademark. It is obvious to the Panel, that the Respondent has deliberately chosen the disputed domain name to target and mislead Internet users. Not only is the disputed domain

name constructed of the EQUINOR trademark in its entirety, but the Respondent has also added the
descriptive term “energy” to the trademark, as well as seemingly sought to copy the Complainant’s name for
its own name and organization when registering the disputed domain name. Consequently, the Panel is
convinced that the Respondent has registered the disputed domain name in bad faith.

Additionally, the Panel finds that the Respondent is using the disputed domain name in bad faith. The Panel particularly notes that previously, the disputed domain name resolved to a website pretending to be operated by the Complainant (Annex H to the Complaint).

Also, the Panel believes that the activated MX email server for the disputed domain name creates a real or implied ongoing threat to the Complainant, since the disputed domain name, even if no longer associated to an active website, may be used by the Respondent to mislead customers looking for the Complainant in their

false belief that any email sent from the disputed domain name origins from the Complainant, probably for
fraudulent activities.

All in all, the Panel cannot conceive of any plausible and legitimate use of the inherently misleading disputed domain name that would be in good faith, except with an authorization of the Complainant.

The fact that the disputed domain name does not currently resolve to an active website does not change the Panel’s findings in this respect. Further, as mentioned above, the Respondent has seemingly provided false contact information, copying the Complainant’s name and also identifying its country of residence as Nigeria, despite listing a zip code and city that correspond to the United Kingdom.

Taking these facts of the case into consideration, the Panel believes that this is a typical cybersquatting
case, which the UDRP was designed to stop. The Panel therefore concludes that the disputed domain name
was registered and is being used in bad faith and that the Complainant consequently has satisfied the third
element of the Policy, namely, paragraph 4(a)(iii) of the Policy.

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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 <equinorenergy.online> be transferred to the Complainant.

/Kaya Köklü/ Kaya Köklü Sole Panelist Date: February 7, 2023