The Complainant is Equinor ASA, Norway, represented by Valea AB, Sweden.
The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Gabriella Garlo, Brazil.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2021. On September 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 2, 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 20, 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 20, 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 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 27, 2021.
The Center appointed Federica Togo as the sole panelist in this matter on November 24, 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 BackgroundIt results from the undisputed evidence provided by the Complainant that it is the registered owner of many trademarks consisting or containing the term “Equinor”, e.g. European Union Trade Mark registration EQUINOR (word) No. 017900772 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; International trademark registration EQUINOR (word) No. 1444675 registered on July 4, 2018 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 and designating several countries worldwide.
It results from the information disclosed by the Registrar that the disputed domain name was created on February 24, 2021.
Furthermore, the undisputed evidence provided by the Complainant proves that the disputed domain name resolved amongst others to a parking page comprising pay-per-click links, which are clearly related to the energy, gas and oil sector in which the Complainant operates. The disputed domain name also redirected to a Swedish newspaper site containing articles about bitcoin, an inactive website, and a fraudulent site showing a McAfee alert.
5. Parties’ Contentions A. ComplainantIt results from the Complainant’s undisputed allegations that the Complainant is a Norwegian corporation, formerly known as Statoil ASA. It is a broad international energy company with operations in more than 30 countries around the world developing oil, gas, wind and solar energy. It has grown up along with the emergence of the Norwegian oil and gas industry dating back to the late 1960s and was founded as The Norwegian State Oil Company (Statoil) in 1972 and the Norwegian State holds 67% of the shares. Statoil ASA decided to change their name to Equinor in 2018. Behind the name change stands the development in the energy sector, the shifting focus from oil and gas to renewable energy sources such as wind and solar power.
The Complainant uses the website “www.equinor.com” in connection with its official activity.
The Complainant contends that its trademark EQUINOR is distinctive and well-known.
The Complainant further contends that the disputed domain name is identical to the Complainant’s trademark EQUINOR as the domain name incorporates the entirety of the trademark EQUINOR along with the generic Top-Level Domain (“gTLD”) “.careers”, which is not sufficient to prevent the confusing similarity and identity either.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts 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 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.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. According to the Complainant’s undisputed allegations, the disputed domain name is being used to redirect to a number of different sites such as a copycat of a Swedish newspaper site containing articles about bitcoin, pay-per-click links containing competing and identical goods such as oil and gas, an inactive website and a fraudulent site providing a McAfee alert stating: “You’ve visited illegal infected website”. The fact that the disputed domain name redirects to third-party websites is indicating that the use is in bad faith as the Respondent most likely attracts commercial gain by redirecting the disputed domain name.
In addition, the Complainant provided evidence that the Respondent is engaged in a pattern of conduct of preventing a trademark holder from reflecting its mark in a domain name, as the Respondent has been engaged in a number of UDRP cases regarding domain names which contain other third party marks. Therefore, there is no other plausible explanation why the Respondent registered the disputed domain name, other than that the Respondent being aware of the Complainant and the EQUINOR trademark and prevent the Complainant from reflecting its trademark in a corresponding domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled:
(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
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.
A. Identical or Confusingly SimilarPursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
It results from the evidence provided that the Complainant is the registered owner of many trademarks consisting or containing the term “Equinor”, e.g. European Union Trade Mark registration EQUINOR (word) No. 017900772 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; International trademark registration EQUINOR (word) No. 1444675 registered on July 4, 2018 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 and designating several countries worldwide.
UDRP panels have found that a disputed domain name is identical or confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., Sanofi v. WhoisGuard Protected, WhoisGuard, Inc. / Todd Peter, WIPO Case No. D2020-2060; Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1923; F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com,WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0464; Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-1409). This Panel shares this view and notes that the Complainant’s registered trademark EQUINOR is fully included in the disputed domain name.
Finally, the gTLD “.careers” of the disputed domain name has to be disregarded under the first element confusing similarity test, since it is a standard registration requirement. The practice of disregarding the gTLD in determining identity or confusing similarity is applied irrespective of the particular gTLD (including with regard to “new gTLDs”) (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.11).
In the light of the above, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsPursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
According to the Complaint, which has remained unchallenged, the Complainant has no relationship in any way with the Respondent and did, in particular, not authorize the Respondent’s use of the trademark EQUINOR, e.g., by registering the disputed domain name comprising the said trademark entirely.
Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.
Moreover, the Panel notes that the nature of the disputed domain name carries a high risk of implied affiliation, since the disputed domain name is identical to the Complainant’s trademark EQUINOR and that the trademark EQUINOR is not a trademark that one would legitimately adopt as a domain name unless to suggest an affiliation with the Complainant. Generally speaking, previous UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation, see WIPO Overview 3.0, section 2.5.1. The Panel finds it most likely that the Respondent selected the disputed domain name with the intent to attract Internet users for commercial gain.
It is acknowledged that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithAccording to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
It is the view of this Panel that these circumstances are met in the case at hand:
The Respondent has been involved in a number of trademark-abusive domain name registrations (e.g. The Swatch Group AG and Swatch AG v. Redacted for privacy, Privacy service provided by Withheld for Privacy ehf / Gabriella Garlo, WIPO Case No. D2021-2180; Klarna Bank AB v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Gabriella Garlo,WIPO Case No. D2021-2155; Hertz System, Inc. v. Privacy service provided by Withheld for Privacy / Gabriella Garlo,WIPO Case No. D2021-1663; Klarna Bank AB v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Gabriella Garlo,WIPO Case No. D2021-1587; Allergy Partners, P.L.L.C. v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Gabriella Garlo,WIPO Case No. D2021-1341; Sodexo v. WhoisGuard Protected, WhoisGuard, Inc. / Gabriella Garlo,WIPO Case No. D2021-0465).
In the view of the Panel this behavior demonstrates a pattern of conduct by the Respondent of taking advantage of trademarks of third parties without any right to do so and is indicative of the Respondent’s bad faith. Previous UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration, see WIPO Overview 3.0, section 3.1.2. The Panel considers that this is the case in the case at issue.
Finally, the further circumstances surrounding the disputed domain name’s registration and use confirm the findings that the Respondent has registered and is using the disputed domain name in bad faith. In fact, (1) the disputed domain name is identical to the Complainant’s trademark EQUINOR; (2) the disputed domain name resolved amongst others to a parking page comprising pay-per-click links, which are clearly related to the energy, gas and oil sector in which the Complainant operates. The disputed domain name also redirected to a fraudulent site showing a McAfee alert; (3) a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the disputed domain name; (4) the Respondent originally used a privacy service hiding its identity; and (5) the Respondent did not provide any response with conceivable explanation of its behavior.
In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
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
Federica Togo
Sole Panelist
Date: December 8, 2021