Equinor ASA v Jnr Casper

WIPO Case No. D2024-3113

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Equinor ASA v. Jnr Casper

Case No. D2024-3113

1. The Parties

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

Sweden.

The Respondent is Jnr Casper, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <equinoroilandgas.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 July 30, 2024. On
July 30, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On July 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 July 31, 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 August 1, 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 August 12, 2024. In accordance with the Rules, paragraph
5, the due date for Response was September 1, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on September 4, 2024.

The Center appointed Áron László as the sole panelist in this matter on September 12, 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

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4. Factual Background

The Complainant is Equinor ASA, an international energy company founded in Norway in 1972 and formerly known as The Norwegian State Oil Company (Statoil ASA).

Statoil ASA has grown with the development of the Norwegian oil and gas industry since the late 1960s, and has grown into a broad international energy company with operations in more than 30 countries around the world, developing oil, gas, wind and solar energy. The Norwegian state is the largest shareholder with 67% of the shares. In March 2018, Statoil ASA became Equinor ASA. The name change is explained by the evolution of the energy sector from oil and gas to renewable energy, such as wind and solar power.

The Complainant is the owner of numerous trade mark registrations for EQUINOR in various jurisdictions

(the “Trademark”), including the following:

- European Union trademark EQUINOR (word) No. 017900772, registered on January 18, 2019;

- Norwegian trademark EQUINOR (word) No. 298811, registered on July 12, 2018;

- International Registration EQUINOR (word) No. 1,444,675, registered on July 4, 2018;

- United States trademark EQUINOR (word) No. 6,436,681, registered on August 3, 2021.

In addition, the Complainant is the owner of more than 100 domain name registrations throughout the world containing the EQUINOR mark, distributed among generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”), including the main domain name <equinor.com>.

The disputed domain name was registered on July 20, 2024. The Respondent is an individual with address in the United States. There is no actual content on the website available through the disputed domain name, the disputed domain name is parked.

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.

Notably, the Complainant contends that the disputed domain name is confusingly similar to the Trademark. The Complainant notes that “equinor” is the most distinctive element in the disputed domain name. The additional words “gas”, “and”, “oil” cannot prevent the finding of confusingly similarity. Given the global recognition of the EQUINOR trademark, it is likely that Internet users will assume a connection between the trademark and the Complainant when searching for information on a website or receiving an email with the disputed domain name.

Regarding the second element, the Complainant sets forth that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no affiliation or relation to the Complainant, nor has it been licensed or otherwise authorised to use the EQUINOR mark in connection with a website, a domain name, or for any other purpose. The Respondent is not using the disputed domain name in connection with any legitimate non-commercial or fair use without intent for commercial gain. The Respondent is not generally known by the disputed domain name. The Complainant also submits that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. It can therefore be concluded that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Regarding the third element, the Complainant contends that the Respondent has registered and is using the
disputed domain name in bad faith. The composition of the disputed domain name indicates that the
Respondent chose to register a domain name that contains a mark identical to the Complainant's
Trademark. The Respondent was aware that it incorporated a well-recognised and distinctive trademark in

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the disputed domain name in which the Respondent had no prior rights. The registration of the disputed
domain name was made six years after the Complainant announced its name change in March 2018. As the
disputed domain name was registered on July 20, 2024, the Complainant finds that the Respondent has
registered the disputed domain name in bad faith.

The disputed domain name is parked at a service provider. “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 3.3.

Previous UDRP Panels have found that the EQUINOR trademark is well-known and distinctive. See Equinor
ASA v. Danielle Torres, WIPO Case No. D2022-4889 “The Panel finds that the disputed domain name is
confusingly similar to the Complainant’s EQUINOR mark, a distinctive and well-known mark in which the
Complainant has established rights through registration and considerable use.”

The MX record has been activated for the disputed domain name. The Complainant believes that a recipient of a potential email sent from “@equinoroilandgas.xyz” is likely to assume that the email has been sent in connection with the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

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 has been registered and is being used in bad faith.

In view of the Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.

The Panel is entitled to accept all reasonable allegations set forth in a complaint. However, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. WIPO Overview 3.0, section 4.3.

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 3.0, section 1.7.

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.

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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.

Although the addition of other terms, here, “oil”, “and” and “gas” may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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 simple parking of the disputed domain name does not confer any rights or legitimate interests to the

Respondent.

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.

In the present case, the Panel believer that the Respondent intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark (paragraph 4(b)(iv) of the Policy.

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.

Panels have found that the non-use of a domain name (including a blank page provided automatically by the domain parking service provider) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the 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.

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The composition of the disputed domain name indicates that the Respondent selected a name that contains a mark identical to the Complainant’s trademark. It is unlikely that the choice of the element “equinor” is mere coincidence, particularly given that it is followed by “oilandgas”, which points to the main businesses of the Complainant. Conversely, the inclusion of “oilandgas” indicates that the Respondent selected the disputed domain name with knowledge of the Complainant's trademark. Furthermore, the trademark was registered six years prior to the disputed domain name.

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 <equinoroilandgas.xyz> be transferred to the Complainant.

/Áron László/ Áron László Sole Panelist Date: September 26, 2024