The Complainant is Equinor ASA, Norway, represented by Valea AB, Sweden.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Jenc Mazc, United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2021. On January 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 25, 2021, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on February 1, 2021 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 February 1, 2021. 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 February 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 26, 2021. The Center appointed Daniel Peña as the sole panelist in this matter on March 3, 2021. 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. Equinor ASA is a broad international energy company with operations in more than 30 countries around the world developing oil, gas, wind and solar energy. Statoil has grown up along with the emergence of the Norwegian oil and gas industry dating back to the late 1960s. It was founded as The Norwegian State Oil Company (Statoil) in 1972 and the Norwegian State holds 67 per cent of the shares. By virtue of the Complainant's long use and the renown of the Statoil name, the reputation associated with the Statoil trademark is excellent by virtue of the quality of the Complainant’s goods and services and the mark is undisputedly considered a well-known trademark within its field of business. Statoil ASA decided to change its name to Equinor in 2018. The name change was announced on March 15, 2018 and the news was shared and commented worldwide on different media platforms. The Complainant submits that the EQUINOR mark inherited the famous status of the STATOIL mark and became known to everyone who knew “Statoil” before, due to the widely published name change. The EQUINOR trademark applications have been filed worldwide, such as the European Union Trade Mark No. 017900772, registered on January 18, 2019. Furthermore, the Complainant is the owner of more than 100 domain name registrations throughout the world containing the EQUINOR mark distributed among generic Top‑Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”). The disputed domain name The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s trademark and company name Equinor as the disputed domain name incorporates the entirety of the trademark and company name Equinor and the prefix “engineers”. It also indicated that the disputed domain name is comprised of the Complainant’s trademark and company name, and a generic term “engineers”. This generic term is not sufficient to overcome the confusing similarity with respect to the Complainant’s EQUINOR trademark which remains the dominant and only distinctive element in the disputed domain name. The Complainant also indicated that the generic term “engineers” has a significance to the use of the Complainant’s trademark, since the technology used at the Complainant’s facilities often requires an engineering background, therefore the term “engineers” refers to all the Complainant’s employees who have a background and working title relating to engineering. The Complainant also stated that the gTLD “.com” is not sufficient to prevent the confusing similarity either. Bearing in mind in particular the following factors, (a) the widespread reputation and high degree of recognition of the Complainant's EQUINOR marks and (b) the lack of distinguishing factors between the disputed domain names and the Complainant’s marks, the Complainant argued that the disputed domain name should be considered as confusingly similar to the EQUINOR mark in which the Complainant has rights. The Complainant alleged that, considering the brand awareness of the trademark EQUINOR worldwide, an Internet user would most probably assume a connection with the Complainant and its business when seeking information on a website or receiving an email with the disputed domain name. Based on the aforementioned, the Complainant argued that there is no question that the disputed domain name is visually, phonetically, and conceptually confusingly similar to the Complainant’s known trademark EQUINOR and to the company name Equinor ASA. Furthermore, the Complaint indicated that the Respondent has no rights to or legitimate interests in respect of the disputed domain name based on the Complainant’s prior use of its trademark and company name Equinor. The Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the EQUINOR mark in connection with a website or for any other purpose. The 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. The disputed domain name redirects to “www.equinor.com” adding to the confusion with the Complainant’s trademark and company name Equinor. Furthermore, the Complainant indicated that the Respondent has intentionally registered and is using the disputed domain name in bad faith, since it is apparent from the composition of the disputed domain name that the Respondent chose to register the disputed domain name that is confusingly similar to the Complainant’s trademark and registered company name and that the Respondent was fully aware of the fact that it incorporated well recognized and distinctive trademarks in which the Respondent had absolutely no prior rights. The Complainant indicated that the Respondent could not have chosen or subsequently used the word “equinor” in the disputed domain name for any reasons other than to take unfair advantage of the reputation of the Complainant’s famous trademark. This is also confirmed by the facts that the additional term in the disputed domain name refers to a relevant activity of the Complainant and the disputed domain name redirects to the Complainant’s website at “www.equinor.com”. The Complainant indicated that the Respondent’s registration and use of the disputed domain name incorporating the Complainant’s mark indicates a deliberate attempt to confuse Internet users into believing that this site is associated with, authorized by or connected to the Complainant. The Complainant added that there is a high risk that fraudulent emails are being distributed from the disputed domain name as the MX records are active and that when Internet users receive an email from the disputed domain name and they check the content of the relevant website, they will be redirected to the Complainant’s official website which could convince them that any communication is indeed sent by the Complainant. Furthermore, the Complainant provided evidence of a fraudulent email sent from an email address associated with the disputed domain name, which is further evidence of bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and Considering these requirements, the Panel rules as follows: A. Identical or Confusingly Similar The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks. The Respondent’s incorporation of the Complainant’s trademark in full in the disputed domain name is evidence that the disputed domain name is confusingly similar to the Complainant’s marks. Mere addition of the dictionary word “engineer” connected by a hyphen with the Complainant’s trademark EQUINOR does not prevent a finding of confusing similarity with the Complainant’s marks. Furthermore, the addition of the gTLD “.com” is not sufficient to prevent the confusing similarity either. The Panel is satisfied that the disputed domain name is identical or confusingly similar to the Complainant’s mark and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent will lead to this ground being set forth. Refraining from submitting any Response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in the disputed domain name. The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain name. The Complainant claims that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner. The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b). Furthermore, the disputed domain name is being redirected to the Complainant’s official website. Such use for deliberately attracting Internet users to its website in the mistaken belief that it is a website of the Complainant, or otherwise linked to or authorized by the Complainant supports a finding that the Respondent lacks rights or legitimate interests in the disputed domain name. In addition, the Complainant provided evidence of a fraudulent email scheme associated with the disputed domain name. Use of a domain name for illegal activity, such as fraudulent schemes, can never confer rights or legitimate interests on a Respondent. The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. In the Panel’s view, a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the disputed domain name. In this case, the widespread commercial recognition of the trademark EQUINOR is such that the Respondent, must have had knowledge of the trademark before registering the disputed domain name. The Respondent appears to have chosen the disputed domain name in order to deliberately attract Internet users to its website in the mistaken belief that it is a website of the Complainant, or otherwise linked to or authorized by the Complainant. Noting the Complainant’s name and trademark is incorporated in the disputed domain name together with the term “engineers”, the Panel finds that there is a high risk of implied affiliation, see section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). As such, the Panel is satisfied that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of the products on its website. Moreover, there is a high risk that when Internet users receive an email from the disputed domain name and they check the content of the relevant website, they will be redirected to the Complainant’s official website which could convince them that any communication is indeed sent by the Complainant. Furthermore, the Complainant provided evidence of a fraudulent email sent from an email address associated with the disputed domain name, which is further evidence of bad faith. Under paragraph 4(b)(iv) of the Policy, this circumstance shall be evidence of the registration and use of a domain name in bad faith. Thus, the Panel concludes that the disputed domain name was 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 Daniel Peña
(iii) the disputed domain name has been registered and is being used in bad faith.
Sole Panelist
Date: March 12, 2021
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