Equinor ASA v Marilyn A Dunn

WIPO Case No. D2023-5265

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Equinor ASA v. MARILYN A DUNN

Case No. D2023-5265

1. The Parties

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

Sweden.

The Respondent is MARILYN A DUNN, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <equinoroilandgass.site> (“the Domain Name”) 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, 2023. On December 19, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 19, 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) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 20, 2023, 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 21, 2023.

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 27, 2023. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 23, 2024.

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The Center appointed Dawn Osborne as the sole panelist in this matter on January 24, 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 an international energy company that owns a large number of trade mark registrations
for EQUINOR for energy related goods and services including International Registration no 1,444,675 since
2018 and Registration no 6,436,681 in the United States where the Respondent is based since 2019.

The Domain Name registered in 2023 resolves to a holding page and is not in active use, although it has been configured for email use with MX servers. In a prior UDRP case, Equinor ASA v. Dollz James, WIPO Case D2023-3026, another domain <equinoroilandgas.site> was pointed to the same holding page and MX servers.

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 Domain Name.

Notably, the Complainant contends that:

The Domain Name is confusingly similar to the Complainant’s EQUINOR trade mark, containing it in its entirety and adding only ‘oilandgass’ and the generic Top-Level Domain (“gTLD”) “.site” which do not prevent the Complainant’s EQUINOR mark being recognizable in the Domain Name.

The Respondent has no rights or legitimate interests in the Domain Name. The Complainant has not authorised the Respondent and the Respondent is not commonly known by the Domain Name. Pointing the Domain Name to a holding page is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.

The Respondent has not answered the Complaint or explained why it has registered the Complainant’s
distinctive mark as part of a Domain Name including the words ‘oil and gass’ (sic) and so clearly targeting the
Complainant and its area of business. In a previous UDRP case involving a very similar domain name
<equinoroilandgas.site>, that domain name pointed to the same holding page and MX servers. The

Complainant is concerned about possible phishing.

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 Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

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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 Domain Name. Accordingly, the 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 ‘oilandgass’ 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 Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The gTLD “.site” is typically disregarded for the purposes of the confusing similarity test.

WIPO Overview 3.0, section 1.11.1.

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 disputed 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 Domain Name which is pointing to a holding page and so is not being actively used. The Respondent is not authorised by the Complainant, is not

commonly known by the Domain Name and has not rebutted the Complainant’s prima facie showing, not
coming forward with any relevant evidence demonstrating rights or legitimate interests in the Domain Name

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.

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 holding page) 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 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 mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent’s concealing its identity or

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use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section
3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the
Complainant’s trademark, the composition of the Domain Name including the terms ‘oil’ and ‘gas’ referring to
the Complainant’s field of activity and finds that in the circumstances of this case the passive holding of the

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 name, <equinoroilandgass.site>, be transferred to the Complainant.

/Dawn Osborne/
Dawn Osborne
Sole Panelist
Date: January 29, 2024