Equinor ASA v Sophia

WIPO Case No. DCC2024-0024

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Equinor ASA v. Sophia

Case No. DCC2024-0024

1. The Parties

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

Sweden.

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

2. The Domain Names and Registrar

The disputed domain names <eqnr.cc>, <eqnrmall.cc>, <equinor-mall.cc>, <equinor-vip.cc> and <vip- equinor.cc> are registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2024, in relation to disputed domain name <equinor-vip.cc>. On August 20, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 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 and contact information in the Complaint. On August 23, 2024, the Complainant requested the addition of the disputed domain name and <vip-equinor.cc> and on August 29, 2024, the addition of the disputed domain name

<eqnr.cc>. On August 30, 2024, the Registrar transmitted by email to the Center its verification response the second amendment to the Complaint on September 4, 2024.

disclosing registrant and contact information for the disputed domain names and <vip-equinor.cc> and
<eqnr.cc>. The Center sent an email communication to the Complainant on August 30, 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 the first amendment to the Complaint on August 30,
2024. On September 2, 2024, the Complainant requested the addition of the disputed domain names
<eqnrmall.cc> and <equinor-mall.cc> to the Complaint. The Center sent an email communication to the
Complainant on September 3, 2024, providing the registrant and contact information disclosed by the

The Center verified that the Complaint together with the amendments to the 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 Respondent of the Complaint, and the proceedings commenced on September 6, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2024.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on October 4, 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, formerly known as Statoil ASA, is a Norwegian corporation with operations in more than

30 countries around the world, developing oil, gas, wind, and solar energy.

The Complainant is the owner, amongst hundreds of others, of the following trademark registrations:

- European Union Trade Mark No. 017900772, for the word mark EQUINOR, registered on January 18, 2019, in classes 1, 2, 4, 6, 7, 9, 16, 17, 19, 25, 28, 35, 36, 37, 39, 40, 41 and 42;

- Norwegian Trademark Registration No. 298811, for the word and device mark EQUINOR, filed on March 14, 2018, registered on June 12, 2018, in classes 4, 40 and 42;
- Norwegian Trademark Registration No. 298813, for the word mark EQUINOR, filed on March 14, 2018, registered on June 12, 2018, in classes 4, 40 and 42;
- International Trademark Registration No. 1 444 675, for the word mark EQUINOR, registered on July 4, 2018, in classes 1, 2, 4, 6, 7, 9, 16, 17, 19, 25, 28, 35, 36, 37, 39, 40, 41 and 42; and

- United States Registration No. 6,436,681, for the word mark EQUINOR, registered on August 3, 2021, in classes 1, 2, 4, 6, 7, 9, 16, 17, 19, 25, 28, 35, 36, 37, 39, 40, 41 and 42.

The disputed domain names are:

Disputed domain name	Registration Date	Present use
<eqnr.cc>	August 25, 2024	No active website
<eqnrmall.cc>	September 1, 2024	No active website
<equinor-mall.cc>	August 31, 2024	No active website
<equinor-vip.cc>	August 17, 2024	No active website
<vip-equinor.cc>	August 22, 2024	No 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.

The Complainant asserts to have changed its name and trademark to EQUINOR in 2018 in view of the shift of its focus from oil and gas to renewable energy sources such as wind and solar power, having its new trademark inherited the famous status of its prior STATOIL mark and name.

Notably, the Complainant contends that the disputed domain names are confusingly similar to the
Complainant’s EQUINOR trademark.

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The Complainant further asserts that the Respondent has no rights to or legitimate interests in respect of the disputed domain names given: (i) the Complainant’s prior use of its trademark EQUINOR and company name Equinor; (ii) also not being the Respondent affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the EQUINOR mark in connection with a website, a domain name or for any other purpose; (iii) the Respondent is not using the disputed domain names in connection with any legitimate noncommercial or fair use without intent for commercial gain; and (iv) the Respondent is not generally known by the disputed domain names and has not acquired any trademark rights corresponding to the disputed domain names.

Lastly, the Complainant contends that the Respondent was fully aware of the Complainant when registering the disputed domain names given that EQUINOR is a well-recognized and distinctive trademark in which the Respondent has no prior right. Furthermore, the Complainant argues that the Respondent has used the

disputed domain names <equinor-vip.cc>, <vip-equinor.cc>, and <eqnr.cc> in connection with a website that
displayed a crypto currency using the EQUINOR trademark and several images of the Complainant’s office
displaying the EQUINOR trademarks as if the Complainant would be endorsing the investments being
offered by the Respondent. In addition to that, the Respondent has set up mail servers in connection with
the disputed domain name <equinor-vip.cc>, which could be used in a further attempt to associate the

disputed domain name with the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain names to the Complainant:

(i) the disputed domain names are 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 disputed domain names; and

(iii)      the disputed domain names have been registered and are being used in bad faith.

The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain names.

In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

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.

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The Panel finds the mark is reproduced within the disputed domain names <equinor-mall.cc>, <equinor- vip.cc> and <vip-equinor.cc>, and recognizable within the disputed domain names <eqnr.cc> and <eqnrmall.cc>. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, sections 1.7 and 1.9.

Although the addition of other terms, here, “vip” and “mall” (whether or not accompanied by a hyphen), 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.

The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to or legitimate interests in the disputed domain names. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.

In that sense, the Complainant indeed states that it has not authorized the Respondent to use or register the disputed domain names, the Respondent not having any connection or affiliation with the Complainant, as well as the Respondent not having received any license or consent, express or implied, to use the EQUINOR trademark in a domain name or in any other manner, and there is no affiliation between the Respondent and the Complainant.

Also, the lack of evidence that the Respondent is commonly known by the disputed domain names and the absence of any trademarks registered by the Respondent corresponding to the disputed domain names, corroborates with the indication of the absence of a right or legitimate interest in the disputed domain names.

Neither the prior use of three of the disputed domain names to display the Complainant’s trademark and headquarters while offering cryptocurrency, nor the current passive holding of all of the disputed domain names amounts to a bona fide offering of goods or services, or a legitimate noncommercial or fair use.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain names.

The second element of the Policy has therefore been established.

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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 registration and use of the disputed domain names in bad faith can be found in the present case in view of the following circumstances:

(i) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the

disputed domain names;

(ii) the past use of at least three of the disputed domain names in connection with a webpage displaying

images of the Complainant’s headquarters and trademark while offering cryptocurrency;

(iii) the well-known status of the Complainant’s trademark and the composition of the disputed domain

names; and

(iv) the present inactive use of the disputed domain names.

For the reasons as those stated above, the Panel finds that the disputed domain names were registered and are being used in bad faith pursuant to paragraph 4(b)(i) 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 <eqnr.cc>, <eqnrmall.cc>, <equinor-mall.cc>, <equinor-vip.cc>, and

<vip-equinor.cc> be transferred to the Complainant.

/Wilson Pinheiro Jabur/
Wilson Pinheiro Jabur
Sole Panelist
Date: October 18, 2024