Equinor ASA v Yiwei Ren

WIPO Case No. DCO2023-0073

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Equinor ASA v. YIWEI REN

Case No. DCO2023-0073

1. The Parties

Complainant is Equinor ASA, Norway, represented by Rouse AB, Sweden.

Respondent is YIWEI REN, China.

2. The disputed domain name and Registrar

The disputed domain name <equinorenergy.co> is registered with INWX GmbH & Co. KG (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2023. On August 21, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 22, 2023, 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) and contact information in the Complaint. The Center sent an email communication to Complainant on August 23, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on August 24, 2023.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal
requirements of the Uniform disputed domain name Dispute Resolution Policy (the “Policy” or “UDRP”), the
Rules for Uniform disputed domain name Dispute Resolution Policy (the “Rules”), and the WIPO
Supplemental Rules for Uniform disputed domain name Dispute Resolution Policy
(the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 4, 2023. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 25, 2023.

The Center appointed Richard C.K. van Oerle as the sole panelist in this matter on October 2, 2023. 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.

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4. Factual Background

According to the information provided in the Complaint, Complainant is a Norwegian corporation, formerly known as Statoil ASA, originally founded in 1972. 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 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 its name to Equinor in 2018.

According to the evidence submitted, Complainant owns numerous trademark registrations for EQUINOR all over the world, including the following:

- European Union trademark number 017900772, registered on January 18, 2019; and
- International Registration number 1444675, registered on May 15, 2019.

Both registrations have been duly renewed and are still valid and will hereafter together referred to in singular as the “Trademark”.

In addition, Complainant is the owner of more than 100 disputed domain name registrations throughout the world containing the EQUINOR Trademark distributed among generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”), including the domain names <equinor.co> and <equinorenergy.com>.

The disputed domain name was registered on July 5, 2023, and is currently parked at Dan.com, where it is being offered for sale at USD 1,450.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, Complainant contends that the disputed domain name is confusingly similar to Complainant’s believed would be associated with Complainant and a valuable word for Complainant’s core business.

registered EQUINOR Trademark as the disputed domain name incorporates the entire Trademark. The
Trademark is recognizable within the disputed domain name which not only contains the Trademark

Complainant further contends that Respondent has no rights to or legitimate interests in respect of the disputed domain name based on Complainant’s prior use of its Trademark. Respondent is not affiliated or related to Complainant in any way, or licensed or otherwise authorized to use the Trademark in connection with a website, a domain name or for any other purpose. Complainant asserts that Respondent is not using the disputed domain name in connection with any legitimate noncommercial or fair use without intent for commercial gain, is not generally known by the disputed domain name and has not acquired any trademark or service mark rights in that name or mark. Complainant further submits that Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services. It can therefore be concluded that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Complainant also submits that Respondent has intentionally registered and is using the disputed domain name in bad faith. It is apparent from the composition of the disputed domain name that Respondent chose to register a disputed domain name that uses the identical Trademark EQUINOR. Respondent was fully aware of the fact that it incorporated a well-recognized and distinctive trademark in which Respondent had no prior rights. The registration of the Trademark was issued many years prior to the registration of the disputed domain name.

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Complainant believes that Respondent is attempting to sell the disputed domain name at a much higher price than what it was purchased for. Respondent most likely believes that someone is willing to pay over USD 1,450 given the reputation of Complainant. As a result, Complainant finds that Respondent has registered the disputed domain name to make a profit by selling the disputed domain name.

Complainant has owned <equinorenergy.com> since February 23, 2018. By registering the disputed domain name <equinorenergy.co> Respondent not only registered a disputed domain name that has a high likelihood of confusion with Complainant’s Trademark, but Respondent also used a ccTLD close to the gTLD “.com”, which is a domain name owned by Complainant.

Complainant concludes that Respondent’s registration and use of the disputed domain names incorporating Complainant’s Trademark indicates that Respondent has intentionally attempted to attract Internet traffic, for commercial gain by creating a likelihood of confusion with Complainant’s EQUINOR Trademark.

Complainant requests that the disputed domain name be transferred to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Dealing, first, with Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission, as it considers appropriate.

Paragraph 4(a) of the Policy provides that Complainant prove each of the following three elements in order to succeed in its Complaint:

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

Complainant has rights; and

(ii) 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.

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
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.

Based on the available record, the Panel finds Complainant has shown rights in respect of the Trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The Panel finds the entirety of the Trademark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical or confusingly similar to the Trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

While the addition of other terms here, “energy”, 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.

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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 Respondent may demonstrate rights or legitimate interests in a disputed domain name.

While 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 disputed domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of respondent. As such, where a complainant makes out a prima facie case that respondent lacks rights or legitimate interests, the burden of production on this element shifts to respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If

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.

prima facie

Having reviewed the record, the Panel finds Complainant has established a case that 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.

Moreover, the composition of the disputed domain name carries a risk of implied affiliation with Complainant

(WIPO Overview 3.0, section 2.5.1).

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

C. Registered and Used in Bad Faith

Complainant’s EQUINOR Trademark and Complainant’s name change predates the registration of the disputed domain name by nearly five years. The global registrations of the Trademark further support Respondent’s awareness of Complainant’s rights to the Trademark at the time of its registration. Based on

the evidence presented, it is apparent that Respondent had knowledge of Complainant, its activity and the Trademark, and deliberately targeted this Trademark during the registration of the disputed domain name with an intention to leverage Complainant’s established reputation. The disputed domain name incorporates
the mark EQUINOR along with the descriptor “energy”, which directly alludes to Complainant’s primary line
of business. Given the evident association of the disputed domain name with the Trademark, the Panel
believes that Respondent intentionally targeted Complainant and its Trademark during the disputed domain
name registration. Consequently, the Panel believes that Respondent registered the disputed domain name
in bad faith.

The registration of the disputed domain name with intent to profit by exploiting Complainant’s Trademark and selling that domain name constitutes axiomatic bad faith registration and use under the Policy. In this case, bad faith is evident where Respondent clearly has actual knowledge of the Trademark and Respondent offers to sell the disputed domain name to the general public. WIPO Overview 3.0, section 3.1.1. Specifically, Respondent configured the disputed domain name to resolve to a website with an offer to the public to sell the disputed domain name for USD 1,450. This is in excess of standard domain name registration costs. Respondent’s offer at this price is clear evidence of Respondent’s opportunistic bad faith intention to acquire and sell the disputed domain name, which contains Complainant’s Trademark.

Considering above, the Panel concludes that Respondent use of the disputed domain name is in bad faith.

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

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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 <equinorenergy.co> be transferred to Complainant.

/Richard C.K. van Oerle/
Richard C.K. van Oerle
Sole Panelist
Date: October 16, 2023