Equinor ASA v Sophia

WIPO Case No. D2024-3440

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Equinor ASA v. Sophia

Case No. D2024-3440

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 Name and Registrar

The disputed domain names <eqnr.org>, <equinorvip.com> and <equinor-vip.org> 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 22, 2024. On August 22, 2024, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain names <equinorvip.com> and <equinor-vip.org>. On August 23, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for those disputed domain names which differed from the named Respondent (No information is to be found/Not disclosed) and from the Respondent identif ied by reference to Annex A to the Complaint (Redacted for Privacy (DT), Sophia), and contact information in the Complaint. The Center sent an email communication to the Complainant on August 23, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant f iled an amendment to the Complaint on August 26, 2024.

On August 29, 2024, the Complainant requested that the disputed domain name <eqnr.org> be added to the Complaint and on the same day the Center transmitted by email to the Registrar a request for registrar verif ication in connection with that disputed domain name. On August 30, 2024, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details, and the Complainant f iled an amended Complaint on August 30, 2024.

The Center verif ied that the Complaint together with the amended Complaint satisf ied 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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notif ied the Respondent of the Complaint, and the proceedings commenced on September 3, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2024. The Respondent did not submit any response. Accordingly, the Center notif ied the Respondent’s default on September 25, 2024.

The Center appointed Ian Lowe as the sole panelist in this matter on September 30, 2024. The Panel f inds 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 founded as The Norwegian State Oil Company (Statoil) in 1972. It is a broad international energy company with operations in more than 30 countries around the world, developing oil, gas, wind and solar energy. It changed its name to Equinor in 2018 and has carried on its business under the EQUINOR mark since then.

The Complainant is the proprietor of numerous registered trademarks for EQUINOR around the world including International trademark number 1444675 EQUINOR registered on July 4 2018 designating a number of territories including Singapore; European Union trademark number 017900772 EQUINOR registered on January 18, 2019; and United States trademark number 6436681 registered on August 3,

2021. It is also the proprietor of a number of registered trademarks for the “equinor” and device mark (the “Equinor Logo”) including International trademark number 1467418 registered on September 11, 2018.

The Complainant is also the owner of more than 100 domain name registrations throughout the world containing the EQUINOR mark including <equinor.com>.

The disputed domain names were registered between August 21 and August 28, 2024. None of them presently resolves to an active website. However, the Complainant has adduced evidence that at the time of f iling the Amended Complaint all three disputed domain names resolved to websites purporting to be platforms for secure cryptocurrency investments, allegedly approved by various certif ication bodies. The websites displayed the EQUINOR mark (the “Mark”) in a number of ways including pictures of the

Complainant’s headquarters in Norway containing the Equinor Logo.

5. Parties’ Contentions
A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to the Mark, that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the Respondent registered and is using the disputed domain names in bad faith.

B. Respondent

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

6. Discussion and Findings

For this Complaint to succeed in relation to the disputed domain names, the Complainant must prove that:

(i)        the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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(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.

A. Identical or Confusingly Similar

It is well accepted that the f irst 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.

Ignoring the generic Top-Level Domains (“gTLDs”) “.org” and “.com”, the disputed domain names
<equinorvip.com> and <equinor-vip.org> each comprise the entirety of the Mark with the addition of the term
“vip” with or without a hyphen. In the Panel’s view, such additions do not prevent a f inding of confusing
similarity between the disputed domain names and the Mark. WIPO Overview 3.0, section 1.8.

Again, ignoring the gTLD “.org”, the disputed domain name <eqnr.org> comprises a contraction of the Mark, without the vowels “u”, “i” and “o”. The Panel considers that the disputed domain name contains suf f iciently recognizable aspects of the Mark to be confusingly similar to it. WIPO Overview 3.0, section 1.9.

The Panel f inds the f irst 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 of ten primarily within the knowledge or control of the respondent. Accordingly, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shif ts 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 disputed domain names were being used for websites promoting themselves as investment platforms for cryptocurrency transactions. They featured the Mark and a photograph of the Complainant’s headquarters displaying the Equinor Logo. So far as the Panel can see, EQUINOR is a neologism most likely to be taken only as a reference to the Complainant and the Panel cannot envisage any legitimate reason for the

Respondent to register domain names comprising or obviously alluding to the Mark.

Having reviewed the available evidence, 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 f inds the second element of the Policy has been established.

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C. Registered and Used in Bad Faith

In light of the composition of the disputed domain names (noting also, regarding the disputed domain name <eqnr.org>, that EQNR is the abbreviation for the Complainant’s name on the New York Stock Exchange) and the Respondent’s use of the disputed domain names for websites featuring the Mark and a photograph of the Complainant’s headquarters building, the Panel considers it most likely that the Respondent had the Complainant and its rights in the Mark in mind when it registered the disputed domain names.

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.

The obvious inference is that the Respondent registered the disputed domain names with a view to taking unfair advantage of the Complainant’s Mark. Its aim was to confuse Internet users into believing that the disputed domain names were being operated by or authorized by the Complainant in order to attract them to its websites purporting to offer secure investments in cryptocurrencies, presumably for commercial gain.

In the circumstances, the Panel f inds that the Respondent registered and is using the disputed domain names in bad faith and that the Complainant has established the third element of the Policy in respect of each of the disputed domain names.

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.org>, <equinorvip.com>, and <equinor-vip.org> be transferred to the Complainant.

/Ian Lowe/
Ian Lowe
Sole Panelist
Date: October 14, 2024