Equinor ASA v Sophia

WIPO Case No. D2024-3616

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Equinor ASA v. Sophia

Case No. D2024-3616

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.

2. The Domain Name and Registrar

The disputed domain names <eqnr-usdt.com>, <eqnr-usdt.net> and <equinor-mall.org> are registered with

Dominet (HK) Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6,

2024. On September 6, 2024, the Center transmitted by email to the Registrar a request for registrar

verification in connection with the disputed domain names. On September 9, 2024, the Registrar transmitted

by email to the Center its verification response disclosing registrant and contact information for the disputed

domain names 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 September 10, 2024,

providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to

submit an amendment to the Complaint.

On September 16, 2024, the Complainant asked the Center to include an additional domain name to the

Complaint. On September 20, 2024, the Center transmitted by email to the Registrar a request for registrar

verification in connection with the additional disputed domain names. The registrar confirmed that it is the

same registrant and contact information previously disclosed. The Center sent an email communication to

the Complainant on September 23, 2024, providing the registrant and contact information disclosed by the

Registrar, and inviting the Complainant to submit an amendment to the Complaint. The same day, the

Complainant filed an amendment to the Complaint.

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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 24, 2024. In accordance with the Rules,

paragraph 5, the due date for Response was October 14, 2024. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on October 15, 2024.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on October 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 a Norwegian corporation, formerly known as Statoil ASA, originally founded in 1972.

The Complainant is a broad international energy company with operations in more than 30 countries around

the world developing oil, gas, wind and solar energy. Statoil ASA had grown up along with the emergence of

the Norwegian oil and gas industry dating back to the late 1960s. Statoil ASA decided to change their name

to Equinor in 2018. The name change was announced on the March 15, 2018, and the news was shared

and commented worldwide on different media platforms.

According to the evidence submitted, the Complainant owns multiple registrations for the trademark

EQUINOR, including, but not limited to European Union Trade Mark No. 017900772, registered on January

18, 2019; EQUINOR, International trademark registration No. 1444675 registered on July 4, 2018; and

EQUINOR, United States Registration No. 6436681 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 (“gTLD”) and country code Top-Level

Domains (“ccTLDs”), including the domain name <equinor.com> which is used to resolve to its official

website.

The disputed domain names were registered on the following dates: <eqnr-usdt.com> and <eqnr-usdt.net>

both registered on September 4, 2024; and <equinor-mall.org> registered on September 6, 2024, and are

therefore of a later date than the abovementioned trademark registrations of the Complainant. At the time of

the Decision, the disputed domain names do not resolve to an active website. According to the

Complainant’s evidence, previously the disputed domain names redirected to various cryptocurrency-related

platforms, clearly and prominently displaying the Complainant’s EQUINOR trademarks at several locations

on those websites.

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 it is the owner of a number of registered trademarks consisting of

EQUINOR and that it has a strong reputation for the products under this trademark. The Complainant

asserts that the disputed domain names are confusingly similar to the abovementioned trademarks since

they each incorporate such trademarks or since at least the trademarks remain recognizable within the

disputed domain names, with the mere addition of generic terms. The Complainant also argues that the

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Respondent used the disputed domain names to direct internet users to a number of cryptocurrency-related

platforms where the Complainant’s trademarks were prominently displayed. The Complainant essentially

contends that the Respondent has intentionally attracted Internet users for commercial gain to the

Respondent’s websites, by creating consumer confusion between the websites associated with the disputed

domain names and the Complainant’s trademarks. The Complainant alleges that the Respondent has no

rights or legitimate interests in the disputed domain names, which, it argues, were registered and are used in

bad faith.

The Complainant requests the transfer of the disputed domain names.

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 disputed domain names. WIPO Overview 3.0, section 1.7.

Based on the available record, the Panel finds 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.

For disputed domain name <equinor-mall.org>, the entirety of the mark is reproduced within the disputed

domain name. Accordingly, this disputed domain name is confusingly similar to the mark for the purposes of

the Policy. WIPO Overview 3.0, section 1.7.

For the disputed domain names <eqnr-usdt.com> and <eqnr-usdt.net>, the Panel finds the mark EQUINOR

remains easily recognizable within the disputed domain names. This finding is also reinforced by the fact

that the Complainant uses the “EQNR” acronym on the New York Stock Exchange (NYSE) for the

Complainant’s shares and therefore has a stable connection to the Complainant and its marks. Accordingly,

these disputed domain names are 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, respectively “-mall” and “-usdt”, 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 names and the mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.8.

Based on the available record, 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 disputed domain names.

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 domain names 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

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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.

Moreover, upon review of the facts and evidence, the Panel notes that the Respondent has not provided any

evidence of the use of, or demonstrable preparations to use, the disputed domain names in connection with

a bona fide offering of goods or services. Instead, upon review of the facts and the evidence submitted in

this proceeding, the Panel notes that the disputed domain names directed to various cryptocurrency-related

platforms, clearly and prominently displaying the Complainant’s EQUINOR trademarks at several locations of

those websites. The websites also did not display any accurate and prominent disclaimers regarding the

lack of relationship between the Complainant and the Respondent. It is clear to the Panel from the foregoing

elements that the Respondent could not be considered a good faith provider of goods or services under the

disputed domain names, see also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Given

the abovementioned elements, the Panel concludes that the Respondent’s use does not constitute a bona

fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain names.

However, the Panel notes that on the date of this Decision, the disputed domain names direct to inactive

webpages. In this regard, the Panel finds that holding domain names passively, without making any use of

them, also does not confer any rights or legitimate interests in the disputed domain names on the

Respondent in the circumstances of this case (see in this regard earlier UDRP decisions such as Bollore SE

v. 赵竹飞 (Zhao Zhu Fei), WIPO Case No. D2020-0691; and Vente-Privee.Com and Vente-Privee.com IP

S.à.r.l. v. 崔郡 (jun cui), WIPO Case No. D2021-1685).

Based on the available record, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

Given the intensive use, fame, and distinctiveness of the Complainant’s prior registered trademarks, the

Panel finds that the subsequent registration of the disputed domain names, which are confusingly similar to

such marks, clearly and consciously targeted the Complainant’s prior registered trademarks. The Panel also

notes that these trademarks have been considered well-known by other panels applying the Policy (see for

instance Equinor ASA v. Name Redacted, WIPO Case No. D2024-0258). The Panel therefore deduces from

the Respondent’s efforts to consciously target the Complainant’s well-known prior trademarks that the

Respondent knew of the existence of the Complainant’s trademarks at the time of registering the disputed

domain names. This finding is further confirmed by the fact that the disputed domain names all resolved to

active websites displaying the Complainant’s EQUINOR trademarks, since this proves that the Respondent

was fully aware of the Complainant, its marks, and its business. In the Panel’s view, the foregoing elements

clearly indicate bad faith on the part of the Respondent, and the Panel therefore finds that it has been

demonstrated that the Respondent registered the disputed domain names in bad faith.

As to use of the disputed domain names in bad faith, the Complainant provides evidence that the use of the

disputed domain names, which were linked to various cryptocurrency-related platforms, clearly and

prominently displaying the Complainant’s EQUINOR trademarks at several locations of those websites,

showed the Respondent’s clear intent to create a likelihood confusion with the Complainant for commercial

gain. The Panel concludes from these facts that the Respondent has intentionally attracted Internet users for

commercial gain to such websites, by creating consumer confusion between the websites associated with

the disputed domain names and the Complainant’s trademarks. This constitutes direct evidence of the

Respondent’s bad faith under paragraph 4(b)(iv) of the Policy. The Panel therefore finds that it has been

demonstrated that the Respondent has used, and is using these disputed domain names in bad faith.

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Moreover, the Panel notes that on the date of this Decision the disputed domain names direct to inactive,

error or blank webpages. Panels 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. Having

reviewed the available record, the Panel notes the distinctiveness and well-known nature of the

Complainant’s trademarks, the composition of the disputed domain names which makes it inconceivable that

the Respondent may use them for any future good faith use, and finds that in the circumstances of this case

the passive holding of these disputed domain names does not prevent a finding of bad faith under the Policy.

WIPO Overview 3.0, section 3.3.

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 <eqnr-usdt.com>, <eqnr-usdt.net>, and <equinor-mall.org> be

transferred to the Complainant.

/Deanna Wong Wai Man/

Deanna Wong Wai Man

Sole Panelist

Date: November 4, 2024