The Complainant is Equinor ASA, Norway, represented by Valea AB, Sweden.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Limn Zunn, United States of America (“United States”). 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2021. On March 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 31, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 6, 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 April 6, 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 April 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2021. The Center appointed Gareth Dickson as the sole panelist in this matter on May 10, 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 an international energy company based in Norway with operations in more than 30 countries around the world developing oil, gas, wind and solar energy. It was founded as The Norwegian State Oil Company (known as “Statoil”) in 1972, and changed its name to “Equinor” in 2018, amid much publicity in both domestic and international markets. The Complainant is the owner of a number of trade mark registrations for EQUINOR (the “Mark”) around the world, including: - International Trade mark registration number 1444675, registered on July 4, 2018; and The Domain Names were all registered on March 7, 2021 and they all currently redirect Internet users to the Complainant’s website home page: “www.equinor.com”. 5. Parties’ Contentions A. Complainant The Complainant argues that it has rights in the Mark by virtue of its ownership of various trade mark registrations for the Mark around the world. It contends that the Domain Names are confusingly similar to the Mark since they incorporate the Mark (which is recognisable within the Domain Names) with the addition of the descriptive terms “energy”, “engineers” and “corporate”, which are all relevant to the Complainant’s business, each under the generic Top-Level Domain (“gTLD”) “.com”. The Complainant confirms that the Domain Names were registered by the Respondent without its permission and that the Respondent is not a licensee of the Complainant. The Complainant submits that there is no evidence to suggest that the Respondent: is generally known by the Mark or the Domain Names; or is making, or intends to make, a legitimate noncommercial or fair use of it without intent for commercial gain. The Complainant submits that the Respondent must have known of the Complainant and the Mark when it registered the Domain Names. The Mark, according to the Complainant, is inherently distinctive and would be well-known as a result of the goodwill associated with the Complainant’s previous mark, STATOIL, which was replaced by the Mark, a move which attracted considerable comment in the press. The Respondent’s own use of the Domain Names, and incorporation therein of not only the Mark but also of descriptive terms relating to the Complainant’s business, further confirms that the Respondent knew of the Mark and the Complainant’s interest in it when it registered the Domain Names and that it registered them in bad faith. Finally, the Complainant contends that there is a high risk that the Domain Names are being used to distribute fraudulent emails, since their MX (i.e. their mail exchange) records are active but the Domain Names themselves are being used to direct Internet users to the Complainant’s website, thereby giving any emails sent under the Domain Names the impression of legitimacy. The Complainant also believes that the timing of the registration of the Domain Names, shortly after the Complainant filed other Complaints against the Respondent concerning other domain names featuring the Mark and the descriptive words “energy”, “engineers” and “corporate”, show that the Domain Names have been filed in retaliation and, presumably, to ensure the continuation of any fraudulent email campaign beyond the transfer of any of those earlier domain names to the Complainant. The Complainant notes too that the Respondent has used a privacy service to conceal its identity for as long as possible. Together, the Complainant submits that the Domain Names have been registered and are being used in bad faith. 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 bears the burden of proving that: (a) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; (b) the Respondent has no rights or legitimate interests in respect of the Domain Names; and (c) the Domain Names have been registered and are being used in bad faith. These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied. A. Identical or Confusingly Similar The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark. Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that: “[I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” Section 1.8 of the WIPO Overview 3.0 further provides that: “Where 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 Panel therefore finds that each of the Domain Names is confusingly similar to the Mark, since each of the Domain Names incorporates the Mark in its entirety. The addition of the descriptive terms “energy”, “engineers” and “corporate” in the Domain Names does not prevent a finding of confusing similarity, nor does the addition of the gTLD “.com”. Accordingly, the Panel finds that the Domain Names are confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of a domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. In the current proceeding, the Complainant has established its prima facie case. The evidence provided by the Complainant of the Respondent’s prior targeting of the Complainant and its Mark in domain names used in a fraudulent email campaign is persuasive and the Respondent has made no attempt to rebut it. Section 2.13.1 of the WIPO Overview 3.0 states that: “Panels have categorically held that 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.” Such consideration applies here. Furthermore, the evidence before the Panel is that the Mark is neither generic nor descriptive but enjoys a degree of inherent distinctiveness that makes a coincidental adoption by the Respondent highly unlikely. There is no evidence that the Respondent has acquired any common law rights to use the Mark, is commonly known by the Mark or has chosen to use the Mark in the Domain Names in any descriptive manner or is making any use of the Domain Names that would establish rights or legitimate interests as a result of a non-commercial or fair use of it. By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element. As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names. C. Registered and Used in Bad Faith The Panel notes that the Domain Names were registered between two and three years after the Mark was registered, and shortly after the Complainant had taken steps to arrest the use of other very similar domain names, and accepts that the Domain Names were chosen by reference to the Complainant and the Mark. Also, the fact that the Domain Names redirect to the Complainant’s website creates the impression that the Respondent knew about the Complainant and its trademark when registering the Domain Names. As a result, and in the absence of evidence from the Respondent that the similarity of the Domain Names to the Mark is somehow permitted, the Panel finds that the Respondent’s registration of the Domain Names was in bad faith. The Domain Names are also being used in bad faith. The Panel accepts the Complainant’s submission that the Domain Names are likely being used for a fraudulent email campaign, even though the evidence of that campaign is currently circumstantial rather than definitive. Even if that submission were wide of the mark, the Respondent is using the Domain Names in a manner very clearly designed to deceive Internet users into believe that those names, and any associated email communications, are controlled and authorised by the Complainant, contrary to the fact. That, in the circumstances of the case, is sufficient to find that the Domain Names are being used in bad faith. Furthermore, the Respondent has not sought to explain its registration and use of the Domain Names, has attempted to conceal its identity, and has not participated in these proceedings. There is also no conceivable use of the Domain Names by the Respondent that would not be illegitimate and therefore there is no basis for the Panel to conclude that the Respondent’s use of the Domain Names is justified. Therefore, and on the basis of the information available to it, the Panel finds that the Respondent has registered and is using the Domain Names 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 Domain Names Gareth Dickson
- European Trade mark registration number 017900772, registered on January 18, 2019.
Sole Panelist
Date: June 3, 2021
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