ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Equinor ASA v. Privacy service provided by Withheld for Privacy ehf / Mary Fortenbaugh Case No. D2022-1822 1. The Parties The Complainant is Equinor ASA, Norway, represented by Valea AB, Sweden. The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Mary Fortenbaugh, United States of America. 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 20, 2022. On May 20, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2022, 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 May 23, 2022, 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 amendment to the Complaint on May 24, 2022. The Center verified that the Complaint together with the amendment to the 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 May 27, 2022. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 20, 2022. The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on June 24, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and page 2 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. The Complainant is a broad international energy company with operations in more than 30 countries around the world developing oil, gas, wind, and solar energy. 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 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 their name to Equinor in 2018. The name change was announced on March 15, 2018, and the news were shared and commented worldwide on different media platforms. 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. In parallel to the official name change EQUINOR trademark applications have been filed worldwide, as for example: The Complainant and its subsidiaries also hold 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 was registered on May 13, 2022, and does not resolve to an active website. 5. Parties' Contentions A. Complainant By the Complaint, the Complainant contends that: - The disputed domain name is confusingly similar to the Complainant's trademark EQUINOR and company name Equinor as the domain name incorporates the entirety of the trademark and company name Equinor, without the addition of any other expression that could possibly avoid confusion between the disputed domain name and the Complainant's trademark. - The gTLD ".com" is not sufficient to prevent the confusing similarity. As stated by section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), "[t]he applicable Top Level Domain ("TLD") in a domain name (e.g., ".com", ".club", ".nyc") is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test." On the contrary, the ".com" gTLD may give the idea that the corresponding website belongs to or is authorized by the Complainant as the official domain name is . - Given the Complainant's international presence Internet users may not reflect upon the Norwegian company abbreviation ASA (allmennaksjeselskap) and believe that the disputed domain name belongs to the Complainant. The word "group" also has to be disregarded under the first element as this is a common word to describe commercial activity and not a word that the Internet user will focus on in terms of determine whose site it will visit. The dominant portion of the disputed domain name is the EQUINOR mark and the word "group" has merely been added to create an impression that this is from the Complainant, which isn't the case, considering in particular the following factors, (a) the widespread reputation and high degree of recognition of the Complainant's EQUINOR marks especially in the energy sector and (b) the lack of distinguishing factors between the disputed domain name and the Complainant's marks. page 3 - 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 domain name listed above. Based on above there is no question that the disputed domain name is confusingly similar to the Complainant's known trademark EQUINOR and to the company name Equinor ASA as the only differentiator is the gTLD plus the word "group", which, as stated above, is not sufficient to prevent the confusing similarity. - The Respondent has no rights or legitimate interests in respect of the domain name based on the Complainant's prior use of its trademark EQUINOR and company name Equinor, as 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 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 Complainant further submits that the Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services. It can be therefore concluded that the Respondent has no rights or legitimate interests in respect of the disputed domain name. - It is apparent from the composition of the disputed domain name that the Respondent chose to register a domain name that is confusingly similar to the Complainant's trademark EQUINOR and registered company name and that the Respondent was fully aware of the fact that it incorporated a well-recognized and distinctive trademark in which the Respondent had absolutely no prior rights. - The registration of the disputed domain name took place May 13, 2022, more than 4 years after the Complainant announced its name change to Equinor in March 2018. - The Respondent has on May 16, 2022, three days after registering the disputed domain name, sent an email impersonating the Complainant's CEO. - The dispute domain name is currently inactive and does not resolve to an active page with content. - As an email has been sent, it is clear that the Respondent is using the disputed domain name having activated the MX record, and is actively sending at least one email impersonating the Complainant's CEO, an activity which does create a likelihood of confusion with the Complainant's mark, the people who are managing the company and their reputation, and further supports the Complainant's argument that the registration has been done in bad faith. - The Respondent's registration and use of the disputed domain name incorporating the Complainant's mark indicates that the Respondent has intentionally attempted to attract, for commercial gain, information from companies working with the Complainant by creating a likelihood of confusion with the Complainant's mark EQUINOR in the email address along with sending the email from what looks to be the Complainant's CEO. - The Respondent could not have chosen or subsequently used the word "Equinor" in its domain name for any reasons other than to take unfair advantage of the reputation of the Complainant's famous trademark EQUINOR. The use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual registrant is often considered as an indication of bad faith. B. Respondent Although procedurally summoned, the Respondent did not reply to the Complainant's contentions. page 4 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has established its rights in the EQUINOR mark, predating the registration of the disputed domain name. The Panel finds that the disputed domain name reproduces the Complainant's trademark in its entirety and adds the term "group". The Panel agrees with the Complainant that the addition of the term "group" should be disregarded under the first element analysis. In accordance with the UDRP practice and precedent, the addition of a term does not prevent a finding of confusing similarity between the disputed name and the complainant's trademark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). Moreover, the extension ".com" is not to be taken into consideration when examining the identity or similarity between the Complainant's trademark and the disputed domain name, as it is viewed as a standard registration requirement. See section 1.11 of the WIPO Overview 3.0. Therefore, this Panel finds the disputed domain name is confusingly similar to the EQUINOR mark in which the Complainant has rights, and therefore the first element of Paragraph 4(a) is established. B. Rights or Legitimate Interests In order to establish the second element of the Policy, the Complainant has to show that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes a prima facie showing, the burden of production shifts to the Respondent (see WIPO Overview 3.0, section 2.1). In these proceedings, this Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and such showing has not been rebutted by the Respondent, as it did not reply to the Complainant's contentions. Accordingly, the Panel finds that the Respondent is not making a legitimate noncommercial or fair use of the dispute domain name, as the Complainant asserted the dispute domain name is currently inactive and does not resolve to an active page with content. On the contrary, the Respondent's behavior shows a clear intent to impersonate the Complainant's CEO, as it is using the disputed domain name having activated the MX records and is actively sending at least one email impersonating the Complainant's CEO, a fraudulent activity which does create an intended likelihood of confusion with the Complainant's mark and could never confer rights or legitimate interests upon the Respondent. In addition, considering that there is no evidence of the Respondent's use of the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide or legitimate offering of goods or services and the Respondent has never been commonly known by the disputed domain name, in the opinion of this Panel, the Complainant has sufficiently demonstrated that the Respondent lacks any rights or legitimate interests in the disputed domain name and consequently, the second element of paragraph 4(a) of the Policy is therefore established. C. Registered and Used in Bad Faith Under the Policy paragraph 4(b), bad faith may be evidenced by a number of circumstances including, but not limited to, the use of the domain name to intentionally attempt 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 page 5 product or service on the respondent's website or location. This Panel considers the circumstances and evidence presented in the Complaint as demonstrative of the bad faith of the Respondent in registering and using the disputed domain name. Such circumstances refer to the following facts documented by the Complainant as committed by the Respondent, as follows: - reproducing the Complainant's registered trademark EQUINOR in the disputed domain name clearly indicates the Respondent knew of and targeted the Complainant's trademark when registering the disputed domain name that is confusingly similar to the Complainant's trademark EQUINOR and registered company name (See WIPO Overview 3.0, section 3.2.1.); - sending an email impersonating the Complainant's CEO on May 16, 2022, three days after registering the disputed domain name further suggests Respondent's intent to target the Complainant when registering and using the disputed domain name; - keeping the dispute domain name inactive and not resolving to an active page with content; - the lack of the Respondent's participation in this proceeding, failing to offer any credible good faith explanation as to the registration and use of the disputed domain name. The Panel holds that the disputed domain name was registered and used in bad faith and that the third element of paragraph 4(a) of the Policy is also established. 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, , be transferred to the Complainant. /Beatrice Onica Jarka/ Dr. Beatrice Onica Jarka Sole Panelist Date: July 8, 2022
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