Equinor ASA v Owens Lauretta

WIPO Case No. D2024-3701

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Equinor ASA v. Owens Lauretta

Case No. D2024-3701

1. The Parties

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

Sweden.

The Respondent is Owens Lauretta, United States of America (“United States”).

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2024. On September 12, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 12, 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, Privacy service provided by Withheld for privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 20, 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 September 23, 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 September 26, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 16, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2024.

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The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on October 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 company with operations in more than thirty countries around the world,
developing oil, gas, wind and solar energy. The Complainant changed its business name from Statoil ASA to

Equinor ASA in 2018 and has been using “EQUINOR” as its business name since.

Registration

Trademark Jurisdiction Date of Registration Classes

No.

Class 1, Class 2, Class
4, Class 6, Class 7,
Class 9, Class 16, Class

17, Class 19, Class 25,

EQUINOR	17900772	European Union	January 18, 2019	Class 28, Class 35, Class 36, Class 37, Class 39, Class 40, Class 41, and Class 42.
Class 1, Class 2, Class 4, Class 6, Class 7, Class 9, Class 16, Class 17, Class 19, Class 25,
EQUINOR	6,436,681	United States	August 3, 2021	Class 28, Class 35, Class 36, Class 37, Class 39, Class 40, Class 41, and Class 42.
Class 1, Class 2, Class
EQUINOR	3, Class 4, Class 6,
Class 7, Class 9, Class 16, Class 17, Class 19,
322530	Norway	June 22, 2022	Class 35, Class 36, Class 37, Class 39,
Class 40, Class 41, and Class 42.

The Complainant is the owner of more than 300 domain names, such as <equinor.com> (which resolves to
the Complainant’s official website), <equinor.co>, <equinor.org>, <equinor.info>, <equinor.international>,
<equinorasa.net>, <equinorasa.com>, among others.

The disputed domain name <equinorassa.com> was registered on August 19, 2024. At the time of writing this decision, the disputed domain name resolves to a website displaying a “Index of/” headline and a clickable folder called “cgi-bin” along with a purported date of last modification: “2024-08-19 14:42”.

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.

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Notably, the Complainant contends that:

I. Identical or Confusingly Similar

That the disputed domain name is confusingly similar to the Complainant’s EQUINOR trademark as it coincides with the string of the disputed domain name’s first seven letters. That the disputed domain name also contains the leters “assa” following the reproduction of the Complainant’s EQUINOR trademark. That the addition of the “assa” letters might be a reference to a manufacturer named Assa Abloy AB, creating the illusion of affiliation between the Complainant and said company. That the referred addition does not alter the perception of the disputed domain name being confusingly similar to the Complainant’s EQUINOR trademark because the first seven letters serve as the most distinctive element thereof, for which reason the addition of the letters “assa” does not prevent a finding of confusing similarity (and cites WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, “WIPO Overview 3.0”, section 1.8).

That, when comparing the disputed domain name to the Complainant’s EQUINOR trademark, the latter is into believing that the disputed domain name is administered by or affiliated with the Complainant.

clearly recognizable within the former. The Complainant cites WIPO Overview 3.0 Section 1.7 to argue that,
when a “domain name incorporates the entirety of a trademark, the domain name will normally be considered
confusingly similar”. That this fact supports the assumption that the Respondent targeted the Complainant’s
That the generic Top-Level Domain (“gTLD”) “.com” is not sufficient to prevent the confusing similarity
between the disputed domain name and the Complainant’s EQUINOR trademark (and cites
WIPO Overview 3.0, section 1.11.1).

That, given the widespread reputation and high degree of recognition of the Complainant’s EQUINOR trademark, and the lack of distinguishing factors between the disputed domain name and said trademark, the disputed domain name should be considered as confusingly similar to the Complainant’s EQUINOR trademark.

That an Internet user could assume that there is a connection between the disputed domain name and the domain name.

II. Rights or Legitimate Interests

That the Respondent has no rights to or legitimate interests in the disputed domain name based on the connection with a website, a domain name or any other purpose.

Complainant’s prior use of its EQUINOR trademark. That the Respondent is not affiliated or related to the

That the Respondent is not using the disputed domain name in connection with a legitimate noncommercial or fair use, that the Respondent is not generally known by the disputed domain name and has not acquired any trademark or service mark rights related to the Complainant’s EQUINOR trademark or name, and that the Complainant is not using the disputed domain name in connection with a bona fide offering of goods or services.

III. Registered and Used in Bad Faith

That the Respondent has intentionally registered and uses the disputed domain name in bad faith, given that the Respondent chose to register a domain name containing a mark that is confusingly similar to the Complainant’s EQUINOR trademark, being fully aware of the fact that the disputed domain name incorporates a well-recognized and distinctive trademark in which the Respondent has no prior rights.

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That the Respondent registered the disputed domain name on August 19, 2024, after the registration and use of the EQUINOR trademark by the Complainant, and that, therefore, the Respondent registered the disputed domain name in bad faith.

That the disputed domain name currently resolves to a website displaying “Index of/” as headline and a clickable folder under the name “cgi-bin”, which could confuse Internet users as to what is available when clicking on said folder and as to whether the site to which the disputed domain name resolves belongs to the Complainant. That the Complainant is not certain if the folder’s content is malicious, which could give rise to a risk of damage to users’ equipment or the misappropriation of user data.

That, given that the disputed domain name’s Email Exchange (“MX”) records are active, the Complainant finds it very likely that Internet users receiving an email connected to the disputed domain name could likely believe that said emails are connected to the Complainant.

That the Respondent’s contact information is not publicly available as it has been redacted for privacy, which is often considered as an indication of bad faith (and cites WIPO Overview 3.0 Section 3.6).

That the Respondent is intentionally attempting to attract Internet traffic for commercial gain by creating a likelihood of confusion between the disputed domain name and the Complainant’s EQUINOR trademark.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets out the three requirements that the Complainant must prove in order to successfully request remedies:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark to which
the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in connection to the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

Given the Respondent’s default and therefore, failure to specifically address the case merits as they relate to
the three UDRP elements, the Panel may decide this proceeding based on the Complainant’s undisputed
factual allegations under paragraphs 5(f), 14(a), and 15(a) of the Rules (see Joseph Phelps Vineyards LLC
v. NOLDC, Inc., Alternative Identity, Inc., and Kentech, WIPO Case No. D2006-0292; Encyclopaedia
Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487; see also

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 the EQUINOR trademark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The disputed domain name entirely comprises the Complainant’s EQUINOR trademark followed by the letters “assa”. The Panel finds that the Complainant’s EQUINOR trademarks are recognizable within the disputed domain name. WIPO Overview 3.0, section 1.7. It is also well established that the gTLD “.com” is

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viewed as a standard registration requirement and as such is typically disregarded under the first element
confusing similarity test. WIPO Overview 3.0, section 1.11.1.

Accordingly, the disputed domain name is confusingly similar to the Complainant’s EQUINOR trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

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 case file contains no evidence that demonstrates that the Respondent has used or have made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services (see Valentino S.p.A. v. Qiu Yufeng, Li Lianye, WIPO Case No. D2016-1747; and Associated Newspapers Limited v. Manjeet Singh, WIPO Case No. D2019-2914).

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.

The Complainant has ascertained its rights over its EQUINOR trademark. The dates of use and registration of said trademark significantly precede the date of registration of the disputed domain name. Additionally, the Panel agrees with decisions rendered by previous panels in the sense that the EQUINOR trademark is well-known (see Equinor ASA v. Service@ Equinor, equinor.com, WIPO Case No. D2024-3119, Equinor ASA v. Jnr Casper, WIPO Case No. D2024-3113 and Equinor ASA v. Gustav Witzoe, WIPO Case No. D2024-3467). Previous panels appointed under the Policy have found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can in itself create a presumption of bad faith. WIPO Overview 3.0, Section 3.1.4. This is so in the present case because the Complainant’s EQUINOR trademark is well-known and extensively used worldwide, including in the United States, the jurisdiction of residence declared by the Respondent.

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The Respondent’s bad faith registration is evidenced by the fact that (1) the EQUINOR trademark is well- known; (2) the disputed domain name is confusingly similar to the EQUINOR trademark, as it incorporates said trademark in its entirety; (3) the Complainant has submitted evidence of use and registration of its EQUINOR trademark prior to the date of registration of the disputed domain name; (4) the Respondent is in default and has not shown any rights to or legitimate interests in the disputed domain name. Therefore, it is natural to infer that the Respondent knew the Complainant and its EQUINOR trademark at the time of registration of the disputed domain name, and that the Respondent has opportunistically targeted the Complainant, its EQUINOR trademark, and its business (see section 3.2.1 of the WIPO Overview 3.0; see also L’Oréal v. Contact Privacy Inc. Customer 0149511181 / Jerry Peter, WIPO Case No. D2018-1937; and Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot, WIPO Case No. D2019-0980). On the uncontroverted evidence, the Panel finds that the Respondent registered the disputed domain name in bad faith.

In the present case, the Panel notes that the Respondent has intentionally used the disputed domain name
to attract, for commercial gain, Internet users to the website to which the disputed domain name resolves, by
creating the impression among Internet users that it is related to, associated with, or endorsed by the
Complainant, with such conduct constitutes bad faith under paragraph 4(b)(iv) of the Policy (see section
3.1.4 of the WIPO Overview 3.0; see also trivago GmbH v. Whois Agent, Whois Privacy Protection Service,
Inc. / Alberto Lopez Fernandez, Alberto Lopez, WIPO Case No. D2014-0365; and Jupiter Investment
Management Group Limited v. N/A, Robert Johnson, WIPO Case No. D2010-0260).

The Panel notes that the website to which the disputed domain name resolves shows, as the Complainant argued, what appears to be a downloadable folder titled “cgi-bin”. Therefore, it is reasonable to accept the Complainant’s undisputed argumentation that bad faith registration and use of the disputed domain name is further shown by the risk that the website to which the disputed domain name resolves may be used for

phishing or malware infection purposes (see Yahoo! Inc. v. Aman Anand, Ravi Singh, Sunil Singh, Whois
Privacy Corp., Domains By Proxy, LLC, WIPO Case No. D2016-0461 and Twitter, Inc. v. Whois Agent,

Whois Privacy Protection Service, Inc. / Domain Support, WIPO Case No. D2015-1488).

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 <equinorassa.com> be transferred to the Complainant.

/Kiyoshi Tsuru/
Kiyoshi Tsuru
Sole Panelist
Date: November 5, 2024