The Complainant is Equinor ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Cowi Joe of Huber Heights, Ohio, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2019. On February 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 2019, 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 March 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 27, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 28, 2019.
The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on April 5, 2019. 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 multinational energy company headquartered in Stavanger, Norway. It was founded as The Norwegian State Oil Company (Statoil) on July 14, 1972, by a unanimous act passed by the Norwegian parliament. Currently, the Norwegian State holds 67% percent of the company’s shares.
On March 15, 2018 Statoil announced that it would change its name to Equinor. The new name is formed by combining “equi,” the root for words such as equal, equality, and equilibrium, and “nor,” indicating that the company is of Norwegian origin.
The Complainant owns trademark registrations in different countries containing the element Equinor such as:
- United States Trademark Registration No. 87959294 EQUINOR (word mark) filed on February 19, 2018, registered on June 12, 2018, for goods and services in Class 1, 2, 4, 6, 7, 9, 16, 17, 19, 25, 28, 35, 36, 37, 39, 40, 41, and 42.
- European Union Trademark Registration No. 017900772 EQUINOR (word mark) filed on May 15, 2018, registered on January 18, 2019, for goods and services in Classes 1, 2, 4, 6, 7, 9, 16, 17, 19, 25, 28, 35, 36, 37, 39, 40, 41, and 42.
The Complainant has registered the domain name incorporating the EQUINOR trademark which resolves to the corporate website of the Complainant.
The disputed domain name has been created and registered by the Respondent on February 19, 2019, and expires on February 19, 2020. It is no longer possible to access the website. At the time of the filing of the Complaint, the Complainant alleges that the disputed domain name was not active but, being used for a fraudulent email scheme, as to which the Complainant submitted an email sent from the email address “[…]@” and MX-records in support thereof. 5. Parties’ Contentions A. Complainant
The Complainant contends that all three criteria stated in paragraph 4(a) of the Policy are met in the present case.
(1) The Complainant states that the disputed domain name is identical or confusingly similar to its trademark.
The disputed domain name is highly similar to the Complainant’s trademark and trade name EQUINOR due to the fact that EQUINOR is the principal component of the disputed domain name, completed by a hyphen and a suffix “no”. The suffix is the only difference between the Respondent’s disputed domain name and the Complainant’s EQUINOR trademark and domain name. Furthermore, the suffix “no” is the common abbreviation of Norway which is a generic term. Adding a generic word is insufficient to give any distinctiveness to a domain name. This, the Complainant states, has been the UDRP panels’ assumption in other comparable cases such as PepsiCo Inc. v. Kieran McGarry,WIPO Case No. D2005-0629.
The generic Top-Level Domain (“gTLD”), here “.com”, must be excluded from consideration because such gTLD has no legal significance. Following cases are brought forward to support this assertion: Belo Corp v. George Latimer,WIPO Case No. D2002-0329, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429, Sony Corporation v. Inja, Kil,WIPO Case No. D2000-1409, Missoni S.p.A. v. Chen Zhu, Chen Guang Yao, Cheng-Hong WU,WIPO Case No. D2014-0420.
Furthermore the Complainant argues that considering the brand awareness of the trademark EQUINOR worldwide, Internet user are led to assume a connection between the Respondent and the Complainant.
(2) Furthermore, the Complainant alleges that the Respondent has no rights or legimate interests in respect of the disputed domain name.
The Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the EQUINOR mark. In addition, he is not using the disputed domain name in connection with any legitimate noncommercial or fair use without intent for commercial gain either, is not generally known by the disputed domain name and has not acquired any trademark or service mark rights in that name or mark.
(3) Finally, the Complainant asserts that the disputed domain name was registered and is being used in bad faith.
The Complainant argues that the disputed domain name is used by the Respondent in fraudulent email communications seeking payment of an invoice. To that end, the Complainant has, in Annex H, submitted an email, that has allegedly been sent by one “[…]” from the email address “[...]@” to an employee of the Complainant, seeking an urgent transaction to be executed that same day. Such use of the disputed domain name shall clearly constitute bad faith.
Furthermore the Complainant brings up Tetra Laval Holdings Finance S.A. v. Named Redacted,WIPO Case No. D2016-0783, where a domain was used in the same fraudulent way and it was concluded that the respondent’s intention was to capitalize on the reputation of the Complainant’s trade name and trademark. The use in bad faith was therefore established.
According to the Complainant, it must reasonably be inferred that the Respondent knew about the Complainant and the prior use of the disputed domain name at the time of registration. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; and
(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.
In the following, the Panel will discuss in consecutive order, if each of these requirements are met here. A. Identical or Confusingly Similar
The test for identity or confusing similarity under paragraph 4(a)(i) of the Policy demands a direct comparison between the Complainant’s mark and the textual string of the disputed domain name which is claimed to affect the Complainant.
In this case, the second level domain name of the disputed domain name of the Respondent consists of the Complainant’s mark, a hyphen and the suffix “no”. Accordingly, the first part of the second level domain of the disputed domain name is identical to the Complainant’s mark. The mark at the beginning of the disputed domain name and the fact that it consists almost entirely of the mark, makes the mark highly recognizable within the disputed domain name.
Where the relevant trademark is clearly recognizable within a domain name, the addition of other terms cannot prevent a finding of confusing similarity under the first element. Therefore, the addition of the hyphen and suffix in this case cannot prevent confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”.
Furthermore, the gTLD “.com” does not affect the finding of confusing similarity in any way due to the fact that people normally do not take it into consideration when identifying a website as to its origin. Top-level-domains are, in general, a mere code of information about the kind of owner or content on the website (e.g. a firm or an organization). Hence, “.com” just indicates a business operating worldwide which is true for the Complainant.
Therefore, the Panel comes to the conclusion that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant is required to prove that a respondent has no rights or legitimate interests in the disputed domain name.
In the present case, the Complainant makes a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the Respondent, as ruled in Media West - GRS, Inc., Media West - MNC, Inc., Ganett Pacific Corporation, Gannett Co., Inc., Ganett River States Publishing Corp., Guam Publications and Incorporated v. Moniker Privacy Services / Forum LLC / Registrant(187640) info@,WIPO Case No. D2006-0478.
The Respondent did not show any proof of rights or legimate interests in the disputed domain name. As contended by the Complainant, the Respondent was not authorized, licensed or otherwise allowed to make use of its protected trademark. Also, there is no evidence that the Respondent is commonly known by the disputed domain name.
Furthermore the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. In this case, the Complainant had put up evidence, which the Respondent has not disputed, that the Respondent has used the disputed domain name for the purpose of sending what appears to be a fraudulent email seeking payment of an invoice (commonly known as a “CEO fraud”).
Therefore, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant has to establish that the disputed domain name has been registered and is being used in bad faith by the Respondent.
Whether a disputed domain name has been registered and is being used in bad faith for the purposes of the Policy may usually be determined by evaluating the criteria set forth in paragraph 4(b) of the Policy.
In this case none of the aforementioned criteria are met. Nevertheless they are not exhaustive. Many Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. This Panel agrees to this view that the way in which the disputed domain name was used in the present case, namely by creating an email address pretending to originate from within the company and sent to a real employee seeking payment, establishes bad faith on the side of the Respondent.
The Panel accepts the Complainant’s evidence, which the Respondent has not disputed, that the Respondent has used the disputed domain name for the purpose of sending what appears to be a fraudulent email seeking a financial transaction on behalf of the Respondent behind the fake email address. In view of the foregoing, it is to be assumed that the disputed domain name was used for a fraudulent purpose. On the basis of the criteria set above, such use of the disputed domain name constitutes use in bad faith. The Panel therefore concludes that the disputed 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 be transferred to the Complainant.
Andrea Jaeger-Lenz
Sole Panelist
Date: April 18, 2019
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