Equinor ASA v Taylor Eq

WIPO Case No. D2024-5003

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Equinor ASA v. Taylor Eq

Case No. D2024-5003

1. The Parties

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

Sweden.

The Respondent is Taylor Eq, United States of America.

2. The Domain Name and Registrar

The disputed domain name <br-eqnr.com> is registered with Gname.com Pte. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2024. On December 4, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 5, 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, Redacted for privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 5, 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 December 5, 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 December 5, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2024.

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The Center appointed María Alejandra López García as the sole panelist in this matter on January 6, 2025. 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. 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 grew along with the emergence of the Norwegian oil and gas industry dating back to the late 1960s; founded by The Norwegian State Oil Company (Statoil) in 1972, holding 67% of the shares, and developing a well-known trademark named STATOIL.

Statoil ASA decided to change its name to Equinor in 2018, announced through different platforms on March
15, 2018, given a change of focus, from oil and gas only to renewable energy sources such as wind and
solar power.

The Complainant owns a worldwide trademark portfolio for EQUINOR, including in Brazil, including the following:

- European Union trademark for EQUINOR (word mark), Reg. No. 017900772, in International Classes
(“ICs”) 1, 2, 4, 6, 7, 9, 16, 17, 19, 25, 28, 35, 36, 37, 39, 40, 41, 42, registered on January 18, 2019, and in

force until May 15, 2028.

- Norwegian trademark for EQUINOR (word mark), Reg. No. 298813, in ICs 4, 40, 42, registered on June

12, 2018, and in force until March 14, 2028.

- International trademark for EQUINOR (word mark), Reg. No. 1444675, in ICs 1, 2, 4, 6, 7, 9, 16, 17, 19,

25, 28, 35, 36, 37, 39, 40, 41, 42, registered on July 4, 2018, and in force until July 4, 2028.

The Complainant owns more than 100 domain name registrations throughout the world containing the
EQUINOR trademark distributed among generic Top-Level Domains (“gTLDs”) and country code Top-Level

Domains (“ccTLDs”).

The letters “eqnr” are the Complainant’s New York Stock Exchange (“NYSE”) name.

The disputed domain name was registered on July 29, 2024, and resolves to an inactive website with no content, but it’s related to an active subdomain <m.br-eqnr.com>.

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.

Concerning the first element of the Policy, in summary, the Complainant contends that the disputed domain name is confusingly similar to the EQUINOR trademark; that the letters “eqnr” are the Complainant’s NYSE abbreviation name, linked to the trademark EQUINOR; that the additional letters “br”, enhance the

perception that the disputed domain name is used in connection with the Complainant’s business in Brazil.

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Concerning the second element of the Policy, in summary, the Complainant contends that the Respondent is not affiliated with or related to the Complainant in any way, or licensed or otherwise authorized to use the EQUINOR trademark in connection with a website, a domain name, or for any other purpose; that the Respondent is not using the disputed domain name in connection with any legitimate noncommercial or fair use without intent for commercial gain; that it is not generally known by the disputed domain name and has not acquired any trademark or service mark rights in that name or trademark; that the Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services.

Concerning the third element of the Policy, in summary, the Complainant contends that the Respondent registered the disputed domain name in bad faith given its composition and the distinctiveness and worldwide recognition of the Complainant’s trademark EQUINOR in particular in the NYSE; that the Complainant’s trademark rights predate the disputed domain name’s registration, of July 29, 2024; that the Respondent is using the disputed domain name in bad faith, given that, despite resolved to an inactive website, it relates to a subdomain, <m.br-eqnr.com>, that is being used in connection with crypto currency investments; which features the EQUINOR trademark that includes an image of the Complainant’s office building, where the trademark is prominently displayed; that with all of it, the Respondent falls into paragraph 4(b)(iv) of the Policy.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must satisfy each of the three following elements:

(i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has

rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

WIPO Overview 3.0, section 4.2.

No Response or any kind of communication has been submitted by the Respondent, despite the efforts and Therefore, this Panel shall analyze the evidence submitted by the Complainant and decide this dispute under the “balance of probabilities” or “preponderance of the evidence” standard. See, paragraphs 14 and 15(a) of the Rules, and
fair opportunity given by the Center to present its case under paragraph 2(a) of the Rules. However, the

Complainant must establish the three elements of paragraph 4(a) of the Policy. See WIPO Overview of

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 a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The mark is recognizable within the disputed domain name, as the disputed domain name incorporates a misspelled version of the mark. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, sections 1.7 and 1.9.

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Although the addition of other terms here, the letters “br”, may bear on assessment of the second and third elements, the Panel finds the addition of such term 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.

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 Panel notes that the disputed domain name is not connected to active content per se, however, the Respondent has created a subdomain <m.br-eqnr.com>, that is being used in connection with cryptocurrency investments, and makes references to the Complainant’s finance activity, and to the trademark EQUINOR, with it, showing to the Panel, that the Respondent is not using the disputed domain name in connection with any legitimate noncommercial or fair use without intent for commercial gain, or in connection with a bona fide offering of goods or services either, as set out under paragraph 4(c)(i) and 4(c)(iii) of the Policy (see Archer-Daniels-Midland Company v. ADM, ADM, WIPO Case No. D2023-5357).

Panels have held that the use of a domain name for illegitimate activity, such as impersonation, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

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.

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.

In the present case, the Panel notes that by the time the Respondent registered the disputed domain name on July 29, 2024, the Complainant had sufficiently established its trademark rights over the term “equinor”, and its NYSE abbreviation name EQNR. Furthermore, according to the record the Respondent’s [lateral]

use of the disputed domain name [by the creation of a subdomain <m.br-eqnr.com>], is based on the
Complainant’s business activity, reputation, and the EQUINOR trademark’s value. Therefore, the Panel

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concludes that the Respondent registered the disputed domain name with the Complainant in mind, meaning

in bad faith. WIPO Overview 3.0, section 3.2.2.

Concerning the use of the disputed domain name, as described in this Decision, the Respondent has created
a subdomain <m.br-eqnr.com> where the infringing content was located, which use could be understood
under paragraph 4(b)(iv) of the Policy, while the disputed domain name does not resolve to an active
website, it doesn’t changer the Panel’s conclusion in relation to bad faith (see SundaeSwap Labs, Inc. v. Isha
Prasoon Dube, WIPO Case No. D2024-0161).

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. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trademark, the composition of the disputed domain name, finds that in the circumstances of this case, the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

Panels have held that the use of a domain name for illegitimate activity here, impersonation, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

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 <br-eqnr.com> be transferred to the Complainant.

/María Alejandra López García/
María Alejandra López García
Sole Panelist
Date: January 14, 2025