Equinor ASA v John West, Equi Asd
WIPO Case No. D2023-4757
•08-02-2024
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Equinor ASA v. John West, Equi Asd
Case No. D2023-4757
1. The Parties
The Complainant is Equinor ASA, Norway, represented by Rouse AB (Valea AB trading as Rouse AB),
Sweden.
The Respondents are John West, United Kingdom, and Equi Asd, United Kingdom.
2. The Domain Names and Registrar
The disputed domain names <equinor-stellar.com> and <stellar-equinor.com> are registered with
NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 21, 2023. On November 23, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the additional disputed domain name. On November 23, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the additional disputed domain name which differed from the named Respondent (Redacted for Privacy, Privacy Service Provided by Withheld for Privacy ehf) and contact information in the Complaint.
2023. On November 15, 2023, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name <equinor-stellar.com>. On November 15, 2023,
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,
Privacy Service Provided by Withheld for Privacy ehf) and contact information in the Complaint. The
The Center sent an email communication to the Complainant on November 29, 2023, with the registrant and
contact information of nominally multiple underlying registrants revealed by the Registrar, requesting the
Complainant to either file a separate complaint for the disputed domain name associated with a different
underlying registrant or alternatively, demonstrate that the underlying registrants are in fact the same entity.
The Complainant filed an amended Complaint on November 30, 2023.
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
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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 Respondents of the Complaint, and the proceedings commenced on December 8, 2023. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2023. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on January 10, 2024.
The Center appointed Kathryn Lee as the sole panelist in this matter on January 22, 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 7.
4. Factual Background
The Complainant is a Norwegian corporation and a broad international energy company with operations in
more than 30 countries around the world developing oil, gas, wind, and solar energy. It was founded as the
Norwegian State Oil Company in 1972 and changed its name to Equinor in 2018. It owns trademark
registrations for EQUINOR in a number of jurisdictions including in Norway (Trademark Registration Number
298813, registered on June 12, 2018), United Kingdom (Trademark Registration Number UK00917900772,
registered on January 18, 2019), and in Kuwait (Trademark Registration Number 1610405, registered on
July 4, 2018).
The Respondents appear to be individuals with an address in the United Kingdom.
The disputed domain name <equinor-stellar.com> was registered on November 10, 2023, and redirected to
the Complainant’s official website at the time of filing of the Complainant. The disputed domain name
<stellar-equinor.com> was registered on November 16, 2023 and does not point to any active 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 names.
Notably, the Complainant contends that the disputed domain names are confusingly similar to the mark in which the Complainant has rights. The Complainant states that the disputed domain names contain the Complainant’s exact mark, and the additional word “stellar” which is descriptive does not prevent a finding of confusing similarity.
The Complainant also contends that the Respondents have no rights or legitimate interests in the disputed domain names and confirms that it has not authorized or licensed rights to the Respondents in any respect.
Finally, the Complainant contends that the disputed domain names were registered and used in bad faith. The Complainant contends that the disputed domain name <equinor-stellar.com> at one point redirected to the Complainant’s official website, which is likely to increase the likelihood of confusion concerning the disputed domain name and made visitors believe that the Complainant was somehow affiliated with the disputed domain name. The Complainant contends that the disputed domain name <stellar-equinor.com> is not linked to any active website, but that non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding.
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B. Respondent
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Consolidation: Multiple Respondents
The amended Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. The Complainant requests the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules.
The disputed domain name registrants did not comment on the Complainant’s request.
Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.
In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or
corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable
to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”), section 4.11.2.
As regards common control, first, the Panel notes that the disputed domain names are both composed of the same two words, the Complainant’s mark EQUINOR and the term “stellar” in reverse order separated by a hyphen. Secondly, both disputed domain names were registered within days of each other (<equinor-stellar.com> on November 10, 2023 and <stellar-equinor.com> on November 16, 2023). Not only that, the email addresses of the registrants (“equinor1001@[...].com” for the registrant of <equinor-stellar.com> and “equinor101@[...].com” for the registrant of <stellar-equinor.com>) are extremely similar to be mere coincidence. Therefore, the Panel is of the opinion that the two disputed domain names are subject to common control.
As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.
Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding.
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 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 entirety of the mark is reproduced within the disputed domain names. Specifically, the disputed domain names consist of the Complainant’s mark EQUINOR in its entirety along with the term “stellar” separated by a hyphen in reverse order. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
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Although the addition of other terms here, “stellar” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain names 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 names. 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 names such as those enumerated in the Policy or otherwise.
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 notes that the Respondent likely knew of the Complainant and the difficult to conceive of a situation in which the Respondent registered the disputed domain names simply by chance. Further, a simple Internet search would have yielded numerous results on the Complainant. Besides, the Respondent have not provided any explanation for having registered the disputed domain names, and with no response to claim otherwise, the Panel finds that it is more probable that the Respondent learned of the availability of the disputed domain names and registered them as an intentional attempt to attract, likely for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark.
Complainant’s trademark when registering the disputed domain names. Given the well-known status of the
As for the disputed domain name <equinor-stellar.com>, the Complainant has submitted evidence showing that it at one point redirected to the Complainant’s official website. Panels have found that redirecting a domain name to the complainant’s website can establish bad faith as the respondent retains control over the domain name and therefore creates a real or implied ongoing threat to the complainant (WIPO Overview 3.0, section 3.1.4).
There is no evidence that the disputed domain name <stellar-equinor.com> was ever used. But 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. Having reviewed the available record, the Panel finds the non-use of the disputed domain
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name does not prevent a finding of bad faith in the circumstances of this proceeding. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s
| contemplated good-faith use, and (iii) the respondent’s concealing its identity or use of false contact details | mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or identity, 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. |
| 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 names <equinor-stellar.com> and <stellar-equinor.com> be transferred to the Complainant. | |
| /Kathryn Lee/ Kathryn Lee Sole Panelist Date: February 8, 2024 |
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