The Complainant is Equinor ASA of Stravanger, Norway, represented by Valea AB, Sweden.
The Respondent is Syed Hussain, Domain Management MIC of Closter, New Jersey, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain names and (“Disputed Domain Names”) are registered with N, Inc. (N LLC) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2018. On October 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On October 23, 2018, 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.
The Center verified that 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 October 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2018.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on December 4, 2018. 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 multi-national energy company, formerly known as Statoil ASA, which is headquartered in Stravanger, Norway. The Complainant announced its change of name to Equinor ASA in March 2018, and the announcement was published on its website and in several international news articles. Since March 2018, the Complainant has been primarily conducting its business through its EQUINOR trade mark, and has operations in over 30 countries. The Complainant owns registered rights in the EQUINOR trade mark and related EQUINOR logos in Norway, (e.g. registration no. 298639) and has applied for registration of the EQUINOR Trade Marks in multiple jurisdictions, including in the European Union (“EU”), the United Kingdom of Great Britain and Northern Ireland (“UK”), and the United States.
The Respondent is an individual based in the United States, who registered the Disputed Domain Names and on March 16, 2018. The Disputed Domain Names resolve to a loading page which states that the Disputed Domain Names may be for sale, then to various intermediary third-party commercial websites, and finally resolve to a third-party website landing page which allegedly offers users an opportunity to win mobile phones. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
(a) The Complainant is well known worldwide and has been in the energy industry for over 40 years. On March 15, 2018 (“Announcement Date”), the Complainant announced its change of name from Statoil ASA to Equinor ASA. It has registered rights in the EQUINOR trade mark in Norway (e.g. registration no. 298813, registered June 12, 2018) and has unregistered rights in the EQUINOR trade mark in multiple countries through its extensive use since the Announcement Date, including in the UK, the United States, and the EU. The Complainant also has more than 100 top-level domain names that incorporate the EQUINOR trade mark, including , , and . It owns and operates the official website that resolves to .
(b) The Respondent registered the Disputed Domain Names on March 16, 2018. The Disputed Domain Names are confusingly similar to the Complainant’s EQUINOR trade mark, with the only difference being the addition of the suffix “asa” to the disputed domain name and the addition of the term “global” to the disputed domain name . The word “asa” means “Allmennaksjeselskap”, which is a generic Norwegian term for a public limited company, and the word “global” is also a generic word. The inclusion of the generic words “asa” and “global” in the Disputed Domain Names does not mitigate the confusing similarity between the Disputed Domain Names and the Complainant’s EQUINOR trade mark.
(c) The Respondent has no rights or legitimate interests in the Disputed Domain Names. It is not affiliated with the Complainant and has not been authorized to register or use the Disputed Domain Names. In addition, the Respondent has never been known by the EQUINOR mark.
(d) The Respondent has not used (and has made no demonstrable preparations to use) the Disputed Domain Names in connection with the bona fide sale of any goods or services and is not making any noncommercial or fair use of the Disputed Domain Names. Both Disputed Domain Names first resolve to a loading page that displays a message stating that the relevant disputed domain name, or , “may be for sale”, after which the Disputed Domain Names then resolve to various intermediary commercial websites, and finally resolve to a landing page that allegedly offers users an opportunity to win mobile phones.
(e) The Respondent has registered and is using the Disputed Domain Names in bad faith. The Disputed Domain Names were registered the day after the Announcement Date. This indicates that the Respondent registered and is using the Disputed Domain Names primarily for the purpose of selling the Disputed Domain Names to the Complainant or its competitors in return for a profit, which amounts to bad faith registration and use. Lastly, the Respondent has already been the subject of at least 22 other UDRP proceedings, in which it was consistently found to have registered and used the domain names in bad faith. This demonstrates a pattern of bad faith conduct. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403). 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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 by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the EQUINOR trade mark, based on its trade mark registrations in Norway.
The Disputed Domain Names incorporate the Complainant’s EQUINOR trade mark in its entirety, the only difference being the inclusion of the terms “asa” and “global” respectively. The word “asa” is a generic Norwegian term in Norway, where the Complainant is headquartered, and it is well established that where the distinctive and prominent element of a disputed domain name is a complainant’s mark, and the only difference is a generic term that adds no distinctive element, then such a generic term does not negate the confusing similarity between the disputed domain name and the mark (see Oakley, Inc. v. Joel Wong/BlueH – INC,WIPO Case No. D2010-0100; The Coca-Cola Company v. Whois Privacy Service,WIPO Case No. D2010-0088; and Diageo Ireland v. Guinnessclaim,WIPO Case No. D2009-0679). In particular, in previous UDRP cases, it was found that the addition of the words “global” and “asa” to a domain name did not prevent the finding of confusing similarity between the disputed domain name and the complainant’s mark (see bioMérieux v. Joseph Gullet, Digicel,WIPO Case No. D2017-2268; Breitling SA v. Will Wang,WIPO Case No. D2018-0829; BlackRock, Inc. v. Syed Hussain, Domain Management MIC,WIPO Case No. D2018-1358; and Statoil ASA (Statoil) v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyP / patrick ubong,WIPO Case No. D2016-1792). The Panel finds that EQUINOR is the primary component of the Disputed Domain Names and the addition of the terms “asa” and/or “global” does little to distinguish them from the Complainant’s EQUINOR trade mark.
It is also well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain extension (“gTLD”), in this case “.com”, may generally be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd,WIPO Case No. D2006-0762).
In light of the above, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant registered and began using the EQUINOR trade marks before the Disputed Domain Names were registered and has not authorised or granted any right to the Respondent to use its EQUINOR trade mark. Accordingly, the Panel is of the view that a prima facie case is established and it is for the Respondent to prove it has rights or legitimate interests to the Disputed Domain Names. Since no Response has been submitted by the Respondent, the Panel will assess whether or not the Respondent has any rights in the Disputed Domain Names (or lack thereof) based on the inferences that can be reasonably drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Names by demonstrating any of the following:
(i) before any notice to him of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Names or a name corresponding to the Disputed Domain Names was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Names, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Panel accepts that the Respondent has not provided any evidence to demonstrate that it has become commonly known by the Disputed Domain Names, or a name corresponding to them.
The Disputed Domain Names first resolve to a loading page that offers the Disputed Domain Names for sale. They then resolve to various intermediary commercial websites and then finally resolve to a landing page that allegedly offers the user an opportunity to win mobile phones. It is conceivable that the Respondent earns some form of revenue each time a user visits the Disputed Domain Names and is redirected to those commercial websites. This cannot amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Disputed Domain Names. The Disputed Domain Names are confusingly similar to the Complainant’s well-known EQUINOR trade mark, and use of the Disputed Domain Names will inevitably mislead users into believing that the Disputed Domain Names are associated with the Complainant and may divert users to the Disputed Domain Names, enabling the Respondent to make a commercial gain. It is also clear that the Respondent intends to sell the Disputed Domain Names in return for commercial gain, which cannot amount to a right or legitimate interest in respect of the Disputed Domain Names (see paragraph C below).
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Disputed Domain Names both resolve to loading pages that state that the respective disputed domain name and “may be for sale”. Whilst in certain circumstances being in the business of registering and selling domain names might not in itself be a breach of the Policy (e.g. where the domain name solely incorporates a generic term), this is only on the condition that they do not encroach on a third party’s trade mark rights. In this case, the Disputed Domain Names incorporate the Complainant’s EQUINOR trade mark, which is a well-known mark that has no generic meaning other than in relation to the Complainant. The Respondent has also not provided any explanation as to why it chose to register the Disputed Domain Names or presented any evidence of good faith registration or use. Further, the Disputed Domain Names were registered immediately after the Announcement Date. The Panel therefore believes that the Respondent’s main motive for registering the Disputed Domain Names was opportunistic, namely to take advantage of the Complainant’s reputation in the EQUINOR trade mark, in order to sell the Disputed Domain Names for commercial gain.
Further, there are at least 22 adverse UDRP case decisions against the Respondent, where it was consistently found that the Respondent had registered and used domain names incorporating well-known marks belonging to the relevant complainants in bad faith. The panels in some of these prior UDRP cases noted that the Respondent “appears to have a long history of having engaged in abusive registration” (see Compagnie Gervais Danone v. Domain Management, Syed Hussain,WIPO Case No. D2008-1239 and BlackRock, Inc. v. Syed Hussain, Domain Management MIC,WIPO Case No. D2018-1358). In another UDRP case, the Respondent was described as a “serial cyber-squatter” (see AXA SA v. Contact Privacy Inc. / Syed Hussain, Domain Management,WIPO Case No. D2017-0998).
The Panel concludes that this long list of adverse UDRP decisions against the Respondent, together with the present case, clearly demonstrates that the Respondent is involved in the business of registering domain names that are confusingly similar to well-known marks in order to sell them for profit or to confuse users into believing that the domain names are connected with the trade mark owner for commercial gain and thus derive commercial gain. This further corroborates the existence of bad faith on the part of the Respondent.
For the reasons stated above, the Panel finds that the Respondent registered and is using the Disputed Domain Names in bad faith.
The Panel finds that paragraph 4(a)(iii) of the Policy is satisfied. 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 and be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Date: December 18, 2018
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