The Complainant is Equinor ASA, Norway, represented by Valea AB, Sweden.
The Respondent is K Nandalal, BlueHost, Suriname.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2021. On August 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 27, 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 August 27, 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 August 30, 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 September 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2021. The Response was filed with the Center on September 23, 2021. The Complainant filed a supplemental filing with the Center on September 29, 2021. On October 1, 2021, the Panel issued a Procedural Order (discussed below) in which the Respondent’s comments were invited on the Complainant’s said supplemental filing by October 8, 2021, and the due date for the Decision was extended to October 22, 2021. The Respondent filed a supplemental filing on October 4, 2021.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on September 30, 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 BackgroundThe Complainant is a corporation organized and existing under the laws of Norway. It was formerly known as Statoil ASA and is an energy company with operations in more than 30 countries around the world developing oil, gas, wind, and solar energy. Due to the shifting focus away from oil and gas into renewables, the Complainant decided to change its name to EQUINOR and announced the name change to the media on March 15, 2018. The name change was covered in the international press. According to media reports of the time, the Complainant’s name comprises “equi”, the starting point for words like “equality” or “equilibrium”, and “nor”, representing the company’s Norwegian roots. In tandem with its name change, the Complainant created a trademark portfolio of applications and registrations worldwide for the EQUINOR mark. The Complainant also registered or acquired more than 100 domain name registrations worldwide incorporating said mark.
Among others, the Complainant is the owner of the following registered trademarks for the word mark EQUINOR;
- European Union Registered Trademark registration no. 17900772 registered on January 18, 2019, in classes 1, 2, 4, 6, 7, 9, 16, 17, 19, 25, 28, 35, 36, 37, 39, 40, 41, and 42;
- Norwegian Registered Trademark registration no. 298813 registered on June 1, 2018, in classes 4, 40, and 42, and
- International Registered Trademark registration no. 1444675, registered on July 4, 2018, in classes 1, 2, 4, 6, 7, 9, 16, 17, 19, 25, 28, 35, 36, 37, 39, 40, 41, and 42 (designated in respect of some 21 territories).
The Complainant applied for a registered trademark for its EQUINOR mark in Suriname on August 7, 2018. Such mark has not yet proceeded to grant and the Complainant submits that the registration process takes several years in Suriname, especially due to the present pandemic situation.
The registrant of the disputed domain name is not known, although the Response suggests that it may be a group of people based in Suriname. The holder of the disputed domain name indicates that it is merely the hosting company which is providing hosting services, and a privacy service, to the Respondent. According to WhoIs records, the disputed domain name was registered on June 8, 2019. According to the Registrar, the current registrant acquired or registered the disputed domain name on June 4, 2020. The disputed domain name points to a website named “Challenge.Energy” containing different energy-related news articles without source attribution. The website uses paid advertisements and an online shop which provides links to various energy-saving products for sale at “www.amazon.com”. The disputed domain name has been offered for sale on an aftermarket website for the sum of GBP 98,888.
5. Parties’ Contentions A. ComplainantThe Complainant contends as follows in the Complaint:
Identical or confusingly similarThe disputed domain name is comprised exclusively of the Complainant’s EQUINOR mark and the new generic Top-Level Domain (“gTLD”) “.energy” is not sufficient to prevent confusing similarity. The addition of “.energy” can add to confusion as it refers to the Complainant’s main field of business and the disputed domain name will most likely be interpreted by Internet users as a name connected to or endorsed by the Complainant.
There is a widespread reputation, and a high degree of recognition and brand awareness of the Complainant’s EQUINOR mark worldwide, especially in the energy sector, so that the disputed domain name should be considered confusingly similar to such mark. The disputed domain name is visually, phonetically and conceptually similar to the Complainant’s mark.
Rights or legitimate interestsThe 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, a domain name 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.
Registered and used in bad faithIt is evident from the composition of the disputed domain name that the Respondent chose to register a name that is confusingly similar to the Complainant’s mark and was fully aware that it incorporated a well-recognized and distinctive trademark to which the Respondent had no prior rights. The Respondent could only have chosen the EQUINOR mark in the disputed domain name to take unfair advantage of the Complainant’s said mark, as is also confirmed by the Respondent’s choice of gTLD “.energy” and the Respondent’s publication of energy-related content at the associated website. Internet users would most likely believe that this page is sponsored or endorsed by the Complainant.
The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website associated with the disputed domain name by creating a likelihood of confusion with the Complainant’s mark. MX records are active on the disputed domain name and there is a high risk that fraudulent emails are being distributed therefrom. Internet users could be convinced that any such communication is sent by the Complainant.
The Respondent has also registered the domain name
The Respondent contends as follows:
Rights or legitimate interestsThe name “equinor” has been chosen because one of the owners of the Respondent’s news site is from French Guiana, a neighbor of Suriname, and in his country “equi” means “equal”. In Suriname, “nor” means a place where people are limited in their freedom. “Equinox” [sic] means “let there be equal rights for energy and let us out of the captivity of NVEBS”. NVEBS is the monopoly energy company in Suriname. The aim of the Respondent’s website is to free the Suriname people from the monopoly and inform them of their choices. As a result, more people choose to install “sun panels”, which release them from NVEBS. The reason for choosing the “equinor” name is that it means “free the closed (monopoly) energy market within Suriname and give the people freedom of choice”.
As a news site, the Respondent receives huge interest in the disputed domain name and this is why it was purchased. Thousands of hours have been invested in the site and it provides the people with insights of alternative energy sources. The Respondent receives income from affiliate companies advertising on the site and this allows the site to be improved.
The disputed domain name was for sale from February 2, 2014, and the Complainant could have bought it in 2014 if it had a real interest therein. The Complainant has stated in a previous case under the Policy that its trademark is particularly used in the European Union. The Complainant has initiated 38 complaints under the Policy and this strategy should be classified as Reverse Domain Name Hijacking. The Complainant has no registered trademark for EQUINOR in Suriname and the reason is that the name belongs to the Respondent in that country.
Registered and used in bad faithNo proof has been supplied that the disputed domain name has been used for spam or other misuse and this is merely the Complainant’s speculation. All content on the associated website was created and is owned by the Respondent. There is no proof that the disputed domain name has been registered in bad faith.
Reverse Domain Name HijackingThe Respondent asserts that the Complaint constitutes Reverse Domain Name Hijacking, under reference to the circumstances in which it says that the corresponding finding is typically made under the Policy.
C. Complainant’s Supplemental FilingIn its supplemental filing, the Complainant contends as follows:
The Complainant does not know who the real owner of the disputed domain name is. The “statement of the owners” of the disputed domain name is not signed. If “equi” means equal and “nor” means a place where people are limited in their freedom, it is unclear how Equinor would mean “the closed” (monopoly) energy market within Suriname and give the people freedom of choice”. The reference to “Equinox” is also unclear.
The articles on the website provide no information about Suriname or the local energy market. When searching for “Suriname” on the website associated with the disputed domain name, only one result comes up and it has no information on Suriname (screenshot provided).
The disputed domain name is being offered for sale (evidence provided) and it may be assumed that the Respondent has registered it for financial gain. The Complainant’s EQUINOR trademark is pending in Suriname and was filed in 2018. The registration process takes several years, particularly due to the pandemic situation. The Complainant is a global (not only European) energy provider with a presence in more than 30 countries worldwide including Suriname.
The Complainant disputes that any of the conditions for Reverse Domain Name Hijacking apply. The Complainant has taken the normal steps to contact a registered holder of a domain name and there has been no abuse of the Rules.
D. Respondent’s Supplemental FilingThe person replying to Procedural Order no. 1 states that it is the Respondent’s representative and not the Respondent itself. Said representative is a South American hosting company. Said representative notes that the Respondent is “afraid for doing wrong” due to a “dreaded rule of law” but indicates that the Respondent has been told there is nothing to fear as it is using its right to privacy.
In its supplemental filing, the Respondent contends as follows:
The Complainant’s supplemental filing should not be accepted because the Complainant should have provided a complete filing with evidence of bad faith, which it has not done. The Complainant’s screenshot of its website, which indicates that it has development projects in inter alia Suriname, dates from 2020, yet the disputed domain name was registered in 2019. The disputed domain name was registered well before oil was found in Suriname, which happened on September 22, 2020 (referencing a headline in Dutch from that date which the Panel has machine-translated as “Oil finds in Suriname good for 1.4 billion barrels”).
Search results for “statoil” only give results for “saatsolie” which means oil from the state of Suriname. Search results for “equinor” are “none”.
The Respondent listed the disputed domain name for sale when it purchased it “for fun” but decided to develop a news site at the end of 2019. The Respondent contacted the brokerage firm to delist the disputed domain name but such firm did not remove it.
The Respondent understands why the Complainant wants the disputed domain name as the Complainant made a deal with Suriname Staats Oil in May 2020 but this is a typical case of Reverse Domain Name Hijacking. The Respondent produces an article dated July 29, 2020 regarding oil exploration off Suriname which notes “ExxonMobil already has a contract with Staatsolie for dee[…]ter Block 59, with partners US independent Hess and Norway’s Equinor”.
6. Discussion and FindingsTo 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; 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.
A. Preliminary Issue: Complainant’s supplemental filingThe Complainant made an unsolicited supplemental filing, which sought to respond to various issues raised by the Respondent in its Response. Section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states inter alia “[u]nsolicited supplemental filings are generally discouraged, unless specifically requested by the panel […]. [P]anels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response. Depending on the content of any admitted supplemental filing, the panel may issue further instructions to the parties, including a rebuttal/reply opportunity to the non-initiating party.”
In the present case, the Complainant’s supplemental filing contains a response to submissions and evidence contained in the Response which the Complainant could not reasonably have anticipated at the time when it filed the Complaint. One aspect which the Complainant covers in its supplemental filing perhaps ought to have been known to it when it filed the original Complaint, namely the fact that the disputed domain name was being offered for sale. However, it is possible that the listing was not previously evident online and was only turned up during the Complainant’s research following the filing of the Response. In any case, the Panel considers that the Complainant has uncovered a material fact, which the Panel is not prepared to exclude from consideration merely because it was not in the original Complaint. This fact calls for an answer from the Respondent, as do the other elements of the Complainant’s supplemental filing. In accordance with paragraph 10(b) of the Rules, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. In these circumstances, the Panel determined that the Complainant’s supplemental filing should be accepted and that the Respondent should be invited to comment briefly upon it in terms of Procedural Order no. 1 as described in section 3 above.
B. Preliminary Issue: Respondent’s informal ResponseThe Respondent has filed an informal Response by way of an email from its hosting company dated September 23, 2021. The informal Response seeks to respond to various statements and allegations contained in the Complaint, in accordance with paragraph 5(c)(i) of the Rules, although it does not contain a certification of completeness and accuracy in accordance with paragraph 5(c)(viii) of the Rules. In consequence, the Panel will treat any material statements of fact which arise exclusively from the informal Response with a degree of caution.
C. Identical or Confusingly SimilarThe Panel finds that the Complainant has UDRP-relevant rights in its EQUINOR registered trademark. Comparing this to the second level of the disputed domain name, it may be seen that these are alphanumerically identical and that the trademark is therefore recognizable in the disputed domain name.
The gTLD, in this case “.energy”, is typically disregarded for the purposes of the comparison exercise under the Policy, although it should be noted that the Complainant’s line of business is energy, such that, if it were taken into consideration in this case, the gTLD would affirm a finding of confusing similarity. See section 1.11, WIPO Overview 3.0. The Panel notes that the Respondent did not oppose the Complainant’s submissions on this topic.
In all of the above circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that the Complainant has carried its burden with regard to paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate InterestsParagraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate
interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the disputed domain name. Once such prima facie case is made out, the burden of production shifts to the respondent to bring forward appropriate allegations and/or evidence demonstrating its rights or legitimate interests in the domain name concerned.
In the present case, the Complainant submits that 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, a domain name or for any other purpose. The Complainant also asserts that 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 Panel is satisfied that these submissions establish the requisite prima facie case. The burden of production therefore shifts to the Respondent.
The Respondent denies that it could have registered the disputed domain name in 2019 in the knowledge or in anticipation of the Complainant’s business activities in Suriname because oil had not been discovered in Suriname before the disputed domain name was registered. The Respondent produces an article dated July 29, 2020, entitled “Exploration off Suriname is gathering pace ahead of new drilling by Malaysian state-owned Petronas and UK independent Tullow Oil” as authority for this proposition. The problem with this article for the Respondent’s case, however, is that it refers to the fact that the Complainant “already has a contract” in Suriname, with two partners, for “Block 59”. In other words, the article shows that the Complainant had interests in Suriname prior to the date of the article. The Respondent also produces an article dated September 22, 2020, in Dutch, which the Panel has machine translated as “Oil finds in Suriname good for 1.4 million barrels.” This article does not demonstrate that the Complainant did not have interests in Suriname prior to that date.
The Respondent’s proposition is further undermined by the article produced by the Complainant from its website dated July 14, 2017, which supports the terms of the Respondent’s article of July 29, 2020. The Complainant’s article notes that, as of July 14, 2017, it had signed agreements to enter into “additional” offshore exploration licenses in Suriname, namely “Block 59” and “Block 60”. The fact that the word “additional” is used suggests an even earlier involvement in Suriname than July 2017.
The Panel is therefore satisfied that all of the pertinent evidence shows that the Complainant’s involvement in oil exploration in Suriname began at some point earlier than the date of its announcement of the “Block 59” and “Block 60” licenses, being just under two years before the disputed domain name was registered. It is entirely reasonable to infer that persons such as the Respondent, having an interest in the energy business, would have known of the Complainant and its rights by the date that the Respondent registered the disputed domain name, whether by virtue of the Complainant’s oil exploration activities in Suriname or – what seems more likely – simply because the Complainant is a prominent energy company with many different interests globally, as is borne out by the evidence on the record.
The Respondent nevertheless alleges that it had made an independent derivation for the disputed domain name from that of the Complainant’s EQUINOR trademark. It is said to result from a combination of “equi”, from the French language meaning “equal”, and “nor” from its local language, Dutch, meaning “a place where people are restricted in their freedom”. The only evidential support for the meanings put forward by the Respondent is contained in two hyperlinks to online dictionaries. The first is a link to an online French dictionary entry for the word “equi”, which, once translated by the Panel, gives the meaning as a prefix which indicates equality/similarity. The Panel is unimpressed by the relevance of at least one of the contextual examples supplied by the entry for this meaning. The example concerned is S. equi. As far as the Panel can see, this is Latin rather than French and refers to a pathogen. The word “equi” in that case relates to horses, from the Latin equus, as in the modern sense of “equine,” and not to any meaning of equality/similarity. To some extent, this contextual example, which is in no way related to the Respondent’s alleged French dictionary derivation, must call the quality of the Respondent’s evidence into question. The other two contextual examples given within the entry, “équi-atomique” and “équi-répartition,” do seem to have the Respondent’s intended meaning. However, both are hyphenated and accompanied by another French word, unlike the Respondent’s alleged use in the disputed domain name.
The dictionary entry for “nor” is in Dutch. A machine translation indicates that this does indeed refer to “a place where people are restricted in their freedom”, in other words, a prison or jail. Once again, however, many of the contextual examples provided are irrelevant as these vary from “Noorse” meaning “Norse” to “nors,” apparently meaning “surly”. Even if one ignores the somewhat dubious contextual examples offered up by the Respondent’s evidence, at best, the Respondent’s case is that the disputed domain name delivers a meaning something akin to “equal prison,” and even then, only to a reader of both French and Dutch. There is no evidence before the Panel that this combination refers to a widely used phrase, and the Respondent has to stretch this in the Response to an alleged meaning of “let there be equal rights for energy and let us out of the captivity of NVEBS” in order to make any sense of it.
The Panel finds the Respondent’s case as to how it selected the disputed domain name to be far-fetched and bereft of credibility. Indeed, the dual-language explanation for the coining of the term “equinor” in the disputed domain name described above gives the impression of having been reverse-engineered to fit the facts. It is notable that the case is put forward merely by assertion in an informal Response, which is lacking the necessary certification as discussed in section 6.B. above. The limited supporting evidence in the form of hyperlinks to online French and Dutch dictionaries consists, in part, of contextual examples which do not support the Respondent’s contentions. There is no support for the alleged two elements amounting to a meaningful phrase and there is no contemporaneous evidence in the record of the Respondent coining such a phrase. The Panel has the impression that the Respondent has simply taken the background to the creation of the Complainant’s EQUINOR mark as evidenced in the Complaint (a coined term itself made out of two elements) and has tried to find its own two elements to explain away the use in the disputed domain name of an otherwise obvious reproduction of the Complainant’s mark.
The second level of the disputed domain name consists entirely of the Complainant’s EQUINOR mark. It matters not that the mark is still under application in Suriname. It has proceeded to grant elsewhere and is widely used by the Complainant throughout the world. The Respondent’s alleged meaning of “let there be equal rights for energy and let us out of the captivity of NVEBS” is unconvincing, and would be neither obvious nor reasonably apparent to an Internet user. It does not represent the use of dictionary words in connection with a dictionary meaning or dictionary phrase. The website associated with the disputed domain name does not elucidate upon the alleged meaning for which the Respondent contends, nor is it discussed or described within the content. Indeed, as the Complainant points out (and the Respondent does not deny) the term “equinor” does not feature anywhere on the website associated with the disputed domain name. Given that said site features a prominent “Challenge.Energy” logo, it appears to have been designed with the domain name
All of this suggests to the Panel that the former is the primary domain name and that the disputed domain name was merely selected to enhance the traffic to said site, due to the fact that it contains the Complainant’s well-known mark. This cannot confer rights or legitimate interests upon the Respondent.
It does not appear to the Panel to be a coincidence that the Respondent selected the term “equinor” for a domain name to use with its website promoting alternative energy news, given that the Complainant happens to be a prominent energy company operating under the EQUINOR mark, interested in traditional and alternative energy, and having specific business interests in the place where the Respondent is based before the date when the disputed domain name was registered.
The Respondent’s selection of the gTLD “.energy” with the word “equinor” itself affirms a reference to the Complainant and its EQUINOR trademark due to the Complainant’s prominence in the relevant field. Such reference means that the Respondent’s offering of goods or services on the associated website could not be described as bona fide within the meaning of paragraph 4(c)(i) of the Policy. As the panel noted in the recent case of Medtronic, Inc. v. Aytekin Yilmaz of Medo Tekstil Elektronik Al. Sat. Tic. Ltd.,WIPO Case No. D2021-1758, “The words ‘bona fide’ must encompass the Respondent’s knowledge and motives in choosing the name in question – if done deliberately to trade off, or take advantage of the Complainant’s name or reputation, then the ‘bona fide’ requirement is not met”. Accordingly, the Respondent cannot avail itself of paragraph 4(c)(i) of the Policy.
The Respondent may not avail itself of paragraph 4(c)(ii) of the Policy either, as there is no evidence before the Panel that the Respondent has been commonly known by the disputed domain name. Finally, the Respondent may not avail itself of paragraph 4(c)(iii) of the Policy. The Respondent’s website is commercial in nature, given that it uses paid advertising and offers energy-saving products for sale via links to the website at “www.amazon.com”. There are no other circumstances before the Panel which might suggest that the Respondent is entitled to claim rights or legitimate interests in the disputed domain name.
In all of these circumstances, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case and accordingly that the Complainant has carried its burden in terms of paragraph 4(a)(ii) of the Policy.
E. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
In the present case, as indicated in the preceding section, there is a plausible and, indeed, probable basis on the record on which the Respondent could be said to be intentionally seeking to divert Internet users, for commercial gain, to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such website.
The Panel finds it to be more probable than not that the Respondent registered the disputed domain name with prior knowledge of the Complainant and with intent to target the Complainant’s EQUINOR trademark for the benefit of the increased traffic, and advertising/sales revenues, which the disputed domain name would deliver to its “Challenge Energy” website.
The Respondent has not persuaded the Panel that its choice of the term “equinor” in the disputed domain name was derived independently of the Complainant and its rights. The Respondent’s denial of prior knowledge of the Complainant is not plausible due, first, to the fact that the Complainant’s EQUINOR mark is likely to be known to those having an interest in energy (such as the Respondent) and secondly, to the fact that the Panel finds it to be established that the Complainant had interests in Suriname prior to the registration date of the disputed domain name, which are more likely than not to have come to the Respondent’s attention.
Furthermore, the Respondent’s selection of the gTLD “.energy” in association with the Complainant’s EQUINOR mark affirms the reference to the Complainant in the disputed domain name. The disputed domain name would be seen as making this reference to the Complainant by most Internet users. The Panel does not consider that any Internet users would see the disputed domain name as having the meaning contended for by the Respondent. A likelihood of confusion is therefore inevitable and the Panel is satisfied that this fact was known to the Respondent when it registered the disputed domain name. In all of these circumstances, the Panel finds that a case of registration and use in bad faith is made out in terms of paragraph 4(b)(iv) of the Policy.
Finally, the Panel is unpersuaded by the Respondent’s assertion that it offered the disputed domain name for sale “for fun” and without intent to target the Complainant’s rights. It seems entirely reasonable to the Panel to infer that the Respondent registered the disputed domain name for the purpose of selling it to the Complainant for valuable consideration in excess of its directly related out of pocket costs. No evidence was tendered in support of the Respondent’s assertion that it attempted to have the sale listing discontinued, nor would the Panel have necessarily considered that this would have absolved the Respondent of a finding of registration and use in bad faith on this particular ground. The Panel cannot tell whether or not the proposed sale of the disputed domain name was the Respondent’s primary purpose, as anticipated by the wording of paragraph 4(b)(i) of the Policy, as opposed to the purpose of generating traffic and sales for the “Challenge Energy” website. In any event, it is clear to the Panel that the Respondent was seeking to profit from the undoubted similarity between the disputed domain name and the Complainant’s trademark by the one means or the other, and the offer for sale of the disputed domain name also supports a finding of registration and use in bad faith in the circumstances of this particular case.
The Panel finds that the Complainant has carried its burden with regard to paragraph 4(a)(iii) of the Policy.
F. Reverse Domain Name HijackingThe Respondent has requested a finding of Reverse Domain Name Hijacking and asserts that the Complainant has initiated 38 complaints under the Policy, which strategy should be classified as such. The Respondent does not provide any further submissions as to why it considers that this constitutes Reverse Domain Name Hijacking. The Panel has briefly reviewed some 34 cases which it was able to identify in which the Complainant filed a complaint under the Policy. The vast majority of these related to the Complainant’s EQUINOR trademark. The Complainant was successful in all such cases. The Complainant’s history of involvement in administrative proceedings under the Policy does not give rise to any grounds for a finding of Reverse Domain Name Hijacking.
Turning to the present case, the Complainant has filed a Complaint under the Policy in connection with the fact that its EQUINOR trademark had been reproduced exactly in the second level of the disputed domain name, and coupled with the gTLD “.energy,” representing the Complainant’s field of business. The disputed domain name has been offered for sale and was being used in connection with a website which featured advertising and commercial links to various energy-saving products. The Complaint has been successful. The Panel finds no indication of bad faith on the Complainant’s part in connection with the bringing of the Complaint in the circumstances of this particular case.
Accordingly, the Respondent’s request that the Panel make a finding of Reverse Domain Name Hijacking is denied.
7. DecisionFor 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
Andrew D. S. Lothian
Sole Panelist
Date: October 22, 2021