The Complainant is Equinor ASA, Norway, represented by Valea AB, Sweden.
The Respondent is Domains By Proxy, LLC, United States of America (“United States”) / [Name Redacted], United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 28, 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 September 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 September 2, 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 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2021. A number of informal communications were received from the named respondent asking what the Complaint was about. These ultimately concluded with him saying he had not registered the Disputed Domain Name. No formal response has been filed. On September 21, 2021, the Complainant filed a Supplemental Filing. The Center notified the Commencement of Panel Appointment Process on September 29, 2021.
The Center appointed Nick J. Gardner as the sole panelist in this matter on October 6, 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 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 was 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 for the term Equinor such as for example United States Trademark Registration No. 6436681EQUINOR (word mark) filed on June 12, 2018 and registered on August 3, 2021. Complainant’s trademarks are referred to collectively in this decision as the EQUINOR trademark.
The Complainant has registered the domain name
The Disputed Domain Name was registered on July 27 2021. It does not resolve to an active website.
5. Parties’ Contentions A. ComplainantThe Complainant’s main submissions are as follows.
The Disputed Domain Name incorporates the Complainant’s EQUINOR trademark in full, adding the letter “r” to produce what is clearly a typographical variation of “equinor”. The fact that a domain name wholly incorporates the Complainant’s registered trademark is sufficient to establish identity or confusing similarity.
The Respondent is not commonly known by the Disputed Domain Name, has not used or prepared to use the Disputed Domain Name in connection with a bona fide offering of goods or services, and has not been authorized, licensed, or otherwise permitted by the Complainant to register or use the Disputed Domain Name.
The Complainant says the Disputed Domain Name has active Mail exchanger (“MX”) records. Those active MX records indicate use for email, which evidences a likelihood of bad-faith use of the Disputed Domain Name to engage in fraudulent email or phishing communications.
B. RespondentNo formal Response has been filed.
6. Discussion and Findings Preliminary Matters – Respondent IdentityThe Panel notes this is a case where one Respondent (Domains By Proxy, LLC) appears to be a privacy or proxy service.
The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
“Panel discretion
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case an individual was also named as a Respondent following information disclosed by the Registrar. Publicly available information shows the email address as disclosed for that individual is associated with an individual of that name who is an employee of a bona fide US corporation. As indicated above that individual in correspondence with the Center stated he had not registered the Disputed Domain Name. It appears to the Panel more likely than not that the individual in question may have nothing to do with this matter, his name having been recorded in relation to the Disputed Domain Name without his knowledge. The Panel proposes to follow the course of action adopted by the panel in Elkjøp Nordic A/S v. Name Redacted,WIPO Case No. D2013-1285 and set out as follows:
“As in Moncler S.r.l. v. Name Redacted, WIPO Case No. D2010-1677, Boehringer Ingelheim Pharma GmbH & Co. KG v. Name Redacted,WIPO Case No. D2012-0890 and Saudi Arabian Oil Company v. Name Redacted,WIPO Case No. D2013-0105, this is a case in which the Panel finds that the Disputed Domain Name was registered by a third-party without the involvement of the person identified in the WhoIs as the registrant of the Disputed Domain Name, against whom the Complaint was filed. The Panel has accordingly redacted the name of that person from the caption and body of this Decision. The Panel has attached as an Annexure to this Decision an instruction to the Registrar regarding transfer of the Disputed Domain Name that includes the name of that person so as to enable effect to be given to the Panel’s order. To this end, the Panel authorises the Center to transmit the Annexure to the Registrar and the parties but further directs the Center and Registrar, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that the Annex to this Decision shall not be published in this exceptional case.”
References in this decision to the Respondent are unless otherwise stated to the unknown person who registered the Disputed Domain Name.
Preliminary Matters – No responseThe Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909).
Preliminary Matters – Complainant’s Supplemental StatementThe Panel declines to admit the Complainant’s supplemental statement. It found the evidence in that statement (concerning an alleged security incident at one of the Complainant’s suppliers which involved use of the Disputed Domain Name) not conclusive, and the Panel does not consider this evidence is needed in reaching a conclusion in favour of the Complainant.
Substantive MattersTo succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with 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;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has rights in the EQUINOR trademark. The Panel finds the Disputed Domain Name is confusingly similar to this trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694).
The Panel also agrees in this regard with the approach set out in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9, namely:
“Is a domain name consisting of a misspelling of the complainant’s trademark (i.e., typosquatting) confusingly similar to the complainant’s mark?
A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.”
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate InterestsThe Panel finds the EQUINOR trademark is, on the evidence before the Panel, a term in which the Complainant has developed a significant reputation.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the EQUINOR trademark. The Complainant has prior rights in the EQUINOR trademark which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad FaithIn the present circumstances the evidence as to the extent of the reputation the Complainant enjoys in the EQUINOR trademark, and the fact that the Disputed Domain Name was clearly a typographic variation of the Complainant’s trademark leads the Panel to conclude the registration and use were in bad faith. There is no evidence of the term “equinor” having any other meaning save in relation to the Complainant and the use of the typographical variation “equinorr” by the Respondent is, in the Panel’s view, more likely than not deliberately intended to take advantage of that fact.
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(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 on-line 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.
The Panel accepts the Complainant’s evidence that the Disputed Domain Name has active MX (mail exchange) records. Those active MX records indicate a possible use for email, which evidences a likelihood of additional bad-faith use of the Disputed Domain Name to engage in fraudulent email or phishing communications. See, e.g., Tetra Laval Holdings & Finance S.A. v. Himali Hewage,WIPO Case No. D2020-0472 (concluding that evidence of active MX records indicated that the disputed domain name may be used for fraudulent email communications); Ares Management LLC v. juandaohanjing,WIPO Case No. D2020-3254 (finding the respondent used the disputed domain name in bad faith based on evidence of active “MX records for the disputed domain name” which “indicate that the Respondent has connected the disputed domain name to email servers, which creates a grave risk that the Respondent may be using the disputed domain name for misrepresentations and/or phishing and spamming activities”). Such conduct is within paragraph 4(b)(iv) – above.
Further the Panel notes that the Respondent has not filed a substantive Response and hence has not availed itself of the opportunity to present any case of good faith that it might have. The Panel infers that none exists.
Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.
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
Nick J. Gardner
Sole Panelist
Date: October 20, 2021