Equinor ASA v Sophia

WIPO Case No. D2024-3184

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Equinor ASA v. Sophia

Case No. D2024-3184

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 (“US”).

2. The Domain Name and Registrar

The disputed domain name <equinor-vip.com> (the “Domain Name”) is 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 2, 2024.

On August 2, 2024, the Center transmitted by email to the Registrar a request for registrar verification in

connection with the Domain Name. On August 7, 2024, the Registrar transmitted by email to the Center its

verification response disclosing registrant and contact information for the Domain Name which differed from

the named Respondent (No information is to be found) and contact information in the Complaint. The Center

sent an email communication to the Complainant on August 7, 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 amended Complaint on August 7, 2024.

The Center verified that the Complaint together with the amended 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 August 14, 2024. In accordance with the Rules,

paragraph 5, the due date for Response was September 3, 2024. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on September 7, 2024.

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The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on September 12, 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, a broad international energy

company with operations in more than 30 countries around the world, developing oil, gas, wind and solar

energy. It was founded as The Norwegian State Oil Company (Statoil) in 1972, and the Norwegian State

holds 67% of the shares. The name of the Complainant was changed to Equinor ASA in 2018.

The Complainant owns a number of trade mark registrations, including (the “Trade Marks”):

- European Union trade mark EQUINOR registered under No. 17900772 on January 18, 2019,

- US trade mark EQUINOR registered under No. 6,436,681 on August 3, 2021,

- International trade mark (Madrid Protocol) EQUINOR registered under No.1444675 on July 4, 2018.

The Domain Name was registered on August 1, 2024.

The website to which the Domain Name resolves (the “Website”) contains, inter alia, a video which promotes

the services and personnel of the Complainant. As the video ends, the EQUINOR Trade Mark is displayed.

Alongside the video, “VIP members” are offered to “lock up” different amounts of US dollars. “VIP members”

can also login to the website platform by clicking on the different functions such as “Team”, “Task” and “VIP”

by using their email address and password. At the bottom of the website is a member list, displaying

examples of “VIP members”, the amounts of their “lock up”, and their (partly anonymized) email addresses.

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, on the following grounds.

By virtue of the Complainant's long use and the renown of the Statoil name, the reputation associated with

the STATOIL trademark is considered a well-known trademark within its field of business. After the name

change of the company in 2018, the EQUINOR Trade Mark inherited the famous status of the STATOIL

mark and became known due to the widely published name change.

The initial part of the Domain Name is identical to the Trade Marks, creating a significant risk of confusion.

The addition of the generic term “vip” is most likely a shortening of the term “very important person” and has

no decisive impact on the overall assessment of the confusing similarity. Instead, Internet users are most

likely to assume that the Domain Name is referring to a membership platform associated with the

Complainant, which does not exist. The generic Top Level Domain (“gTLD”) “.com” is not sufficient to

prevent the confusing similarity or identity. Bearing in mind (a) the widespread reputation and high degree of

recognition of the Trade Marks and (b) the Domain Name being identical to the Trade Marks, the

Complainant finds that the first element has been established.

The Respondent has no rights to or legitimate interests in respect of the Domain Name based on the

Complainant’s prior use of the Trade Mark EQUINOR. The Respondent is not affiliated or related to the

Complainant in any way, or licensed or otherwise authorized to use the Trade Marks in connection with a

website, a domain name or for any other purpose. The Respondent is not using the Domain Name in

connection with any legitimate noncommercial or fair use without intent for commercial gain, is not generally

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known by the Domain Name and has not acquired any trademark or service mark rights in that name.

The Respondent is neither using the Domain Name in connection with a bona fide offering of goods or

services.

Therefore, the Respondent has no rights or legitimate interests in respect of the Domain Dame.

The Respondent has intentionally registered and is using the Domain Name in bad faith. It is apparent from

the composition of the Domain Name that the Respondent chose to register a name that contains a mark

that is identical to the Trade Marks. The Respondent was fully aware of the fact that it incorporated a well-

recognized and distinctive trade mark in which the Respondent had absolutely no prior rights.

The Domain Name was registered on August 1, 2024. Given the long use of the Trade Marks across the

world and the trade mark registrations predating the registration of the Domain Name, the Respondent has

registered the Domain Name in bad faith.

Internet users visiting the Website are likely to believe that this is a legitimate platform, administered by the

Complainant due to the Domain Name itself, the use of the EQUINOR logo, the marketing video and other

content on the website. The overall impression is that the Respondent intends to impersonate the

Complainant and that the Respondent is attempting to take advantage of the reputation of the Trade Marks

to divert Internet user to the Website. Furthermore, as the DNS “mail exchange” (“MX”) records are active,

there is a high risk that fraudulent emails are being distributed from the Domain Name. When Internet users

receive an email from the Domain Name and subsequently access the content of the Website, they will find

what appears to be the Complainant’s official website. This could convince them that any communication is

indeed pertaining to the Complainant. Therefore, the Respondent has intentionally attempted to attract

Internet traffic, for commercial gain by creating a likelihood of confusion with the Trade Marks, thereby using

the Domain Name in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has shown that it has registered rights in the Trade Marks. The Domain Name is

confusingly similar to the Trade Marks as it incorporates the EQUINOR Trade Mark in its entirety.

The addition of the term “vip”, which is a common abbreviation of the expression “very important person”, in

the Domain Name does not avoid a finding of confusing similarity between the Domain Name and the Trade

Marks (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition

(“WIPO Overview 3.0”), section 1.8; see also, inter alia, TPI Holdings, Inc. v. Carmen Armengol, WIPO Case

No. D2009-0361, and F. Hoffmann-La Roche AG v. John Mercier, WIPO Case No. D2018-0980). The gTLD

“.com” is typically disregarded under the confusing similarity test, since it is a technical registration

requirement (WIPO Overview 3.0, section 1.11.1). Therefore, the Panel finds that the Domain Name is

confusingly similar to the Trade Marks in which the Complainant has rights.

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

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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.

Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the

Respondent has not received the Complainant’s authorization or consent to use the Trade Marks as part of

the Domain Name, is not commonly known by the Domain Name, and has not acquired trade mark rights in

the Domain Name. In addition, the Respondent’s use of the Domain Name does not constitute a bona fide

offering of goods or services, since the Domain Name resolves to a website which, using the Trade Marks,

creates the false impression of a relationship with or authorization of its services by the Complainant, while it

does not contain a disclaimer or clarification with respect to the non-existence of such affiliation. In addition,

the Respondent uses the Trade Marks on the Website and as part of the Domain Name to obtain payments

from so-called “VIP members” who have registered as such on the Website. In addition, the Respondent has

activated the MX records relating to the Domain Name to direct email to a mail server under the Domain

Name, which may suggest to recipients of such emails that they are originating in or authorized by the

Complainant. Under these circumstances, the Respondent cannot be considered to make a legitimate

noncommercial or fair use of the Domain Name.

In view of the above, the Panel concludes that the Complainant has established that the Respondent has no

rights or legitimate interests in the Domain Name.

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. This list of non-exhaustive

circumstances that may indicate that a domain name was registered and used in bad faith, leaves open that

other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain

name is in bad faith. See WIPO Overview 3.0, section 3.2.1.

Based on the undisputed information and the evidence provided by the Complainant, the Panel finds that at

the time of registration of the Domain Name the Respondent was or should have been aware of the Trade

Marks, since:

- the Respondent’s registration of the Domain Name occurred more than six years after the registration of the

earliest of the Trade Marks;

- the Respondent has incorporated EQUINOR, of which the Trade Marks consist, in their entirety, and this is

a coined term;

- a simple trademark register search, or even an Internet search, prior to registration of the Domain Name

would have informed the Respondent of the existence of the Trade Marks.

Since the Respondent has no authorization from or other affiliation with the Complainant and was or should

have been aware of the Complainant’s rights at the time of registration, the Domain Name was registered in

bad faith.

With regard to bad faith use, the Panel finds that the use of the Trade Marks on the Website as well as the

offer to “lock up” an amount, apparently to become a “VIP member” of Equinor, where no such position or

opportunity is offered by the Complainant, implies that the Respondent has intentionally attempted to attract,

for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Trade Marks

as to the source, sponsorship, affiliation, or endorsement of its website and the services offered on that

website. In addition, the following circumstances taken together warrant a finding of bad faith use of the

Domain Name:

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- the probability that the Respondent was aware or should have been aware of the Complainant’s rights in

the Trade Marks;

- the lack of a formal Response of the Respondent;

- the composition of the Domain Name.

Therefore, the Panel concludes that the Domain Name has been registered and is being used in bad faith.

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

/Wolter Wefers Bettink/

Wolter Wefers Bettink

Sole Panelist

Date: September 24, 2024