ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Equinor ASA v. Privacy Service Provided by Withheld for Privacy ehf / MobileDev Camp Case No. D2022-1994 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/ MobileDev Camp, Nigeria. 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 June 1, 2022. On June 2, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 2, 2022, the Registrar transmitted by email to the Center its verification 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 June 8, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On June 9, 2022, the Complainant requested the suspension of the proceedings. The proceedings were suspended on June 11, 2022. On June 17, 2022, the Complainant requested the reinstitution of the case and filed an amendment to the Complaint. 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 June 28, 2022. In accordance with the Rules, paragraph 5, the due date for Response was July 18, 2022. No formal Response was filed with the Center. However, an email was received from the Respondent on June 8, 2022. page 2 The Center appointed Colin T. O'Brien as the sole panelist in this matter on August 2, 2022. 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, Equinor ASA, is a Norwegian energy and financial company with operations in more than 30 countries around the world developing oil, gas, wind, and solar energy. On March 15, 2018 the Complainant announced that it had changed its name from Statoil to Equinor. In parallel to the name change an IP portfolio was created by the Complainant to protect the EQUINOR mark including filing trademark applications worldwide many of which are now registered, such as European Union Trade Mark No. 017900772 (registered January 1, 2019). In addition, the Complainant registered more than 100 domain names on the both the generic Top-Level Domains ("gTLDs") and country code Top-Level Domains ("ccTLDs") incorporating the EQUINOR mark. The disputed domain name was registered on May 3, 2022. The disputed domain name resolves to a website offering crypto currency services under the name "Equinor Inc". 5. Parties' Contentions A. Complainant The disputed domain name is confusingly similar and identical for the majority to the Complainant's trademark EQUINOR and company name Equinor as the disputed domain name incorporates the entirety of the trademark and company name Equinor. The word "inc", short for "incorporated" - a company form, 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 determining who is behind a site. The importance in the disputed domain name is EQUINOR and the word "inc" has merely been added to create an impression that this is from the Complainant, which isn't the case. The Respondent has no rights to or legitimate interests in respect of the disputed domain name based on the Complainant's prior use of its trademark EQUINOR and company name Equinor. 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 disputed 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 commonly 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 not using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has intentionally registered and is using the disputed domain name in bad faith. 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 3, 2022, more than 4 years after the Complainant announced its name change to Equinor in March 2018. The Complainant already has a separate company which contains "Equinor" as a part of its name, focusing on financial services such as insurance and financial services along with capital investment. The Complainant has in no way given its permission to start a website with similar content already provided by the Complainant. page 3 The content on the disputed domain name is offering crypto currency services under the name of "Equinor Inc". According to the disputed domain name "Equinor Inc ™ is a pioneering, fast-rising, technology-driven, blockchain - based company that adapts, empowers and operates cryptocurrency". The Complainant's trademark EQUINOR is being used throughout the disputed domain name. Not only has the registrant registered the disputed domain name containing the trademark, the trademark is also displayed on the several different locations on the website such as in the top left corner and bottom corner of the site, the disclaimer, and an email address containing the trademark is visible on the disputed domain name's site. The Respondent has provided one of the Complainant's office addresses on the site creating the impression that it is a company that has been set up by the Complainant. The mail exchanger records ("MX records") are active. The Respondent also indicated that the word "Equinor Inc" is a trademark by adding the letters "TM" on the site indicating that this is a trademark by use. However, no trademark for "Equinor Inc", or company registration of "Equinor Inc", has been registered by the Respondent. The use of the word trademark EQUINOR for services within the registered trademark scope of protection, the use of an address from the Complainant, the email address, and confusion of adding trademark symbol after "Equinor Inc" all demonstrate that the Respondent has used the disputed domain name 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. The Respondent could not have chosen or subsequently used the word "equinor" in its disputed domain name for any reasons other than to take unfair advantage of the reputation of the Complainant's famous trademark EQUINOR. B. Respondent On June 8, 2022, the Respondent wrote "I wish to cancel the registration of the domain under dispute". 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has demonstrated it owns registered trademark rights in the EQUINOR trademark globally. The EQUINOR trademark is clearly recognizable in the disputed domain name, and the addition of the term "-inc" does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition ("WIPO Overview 3.0"). Accordingly, the disputed domain name is confusingly similar to a mark in which the Complainant has rights. B. Rights or Legitimate Interests The Complainant has presented a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and has not been commonly known by the disputed domain name. The fact that the Respondent obtained the disputed domain name 4 years after the Complainant made a global announcement that it had changed its name to EQUINOR indicates that the Respondent sought to piggyback on the EQUINOR mark for illegitimate reasons. After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Here, the Respondent has provided no evidence of any rights or legitimate interests in the disputed domain name; rather, the evidence suggests that it was registered to effectively impersonate or falsely suggest sponsorship or endorsement by the Complainant. page 4 In the absence of any evidence rebutting the Complainant's prima facie case indicating the Respondent's lack of rights or legitimate interests in respect of the disputed domain name, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The disputed domain name was registered years after the Complainant globally announced its name change to EQUINOR. The evidence on the record provided by the Complainant with respect to the extent of use and global fame of its EQUINOR mark, a term invented by the Complainant with no meaning other than in connection to the Complainant, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain name was registered, the Respondent undoubtedly knew of the Complainant's EQUINOR mark, and knew that it had no rights or legitimate interests in the disputed domain name. The Panel is unable to determine any plausible good faith reason for the Respondent to have registered the disputed domain name containing the entirety of the EQUINOR trademark with the addition of the term "-inc". Further, the use of the disputed domain name by the Respondent is clearly in bad faith. Paragraph 4(b)(iv) states that evidence of bad faith may include a respondent's use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to the respondent's 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 product or service on the respondent's website or location. The Complainant has submitted evidence that the Respondent has used the disputed domain name in order to direct visitors to a website which claims to offer crypto and financial services. Given that the Complainant also offers financial services this constitutes an impersonation, or at the very least, is confusingly similar or suggestive of an affiliation with the Complainant. The Respondent clearly is attempting to pass off the disputed domain name as a legitimate undertaking of the Complainant and its globally famous EQUINOR mark in order to divert visitors away from the Complainant. This is a textbook example of bad faith use on the part of the Respondent. In the absence of any evidence or explanation from the Respondent, the Panel finds that the only plausible basis for registering and using the disputed domain name has been for illegitimate and bad faith purposes. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy. 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. /Colin T. O'Brien/ Colin T. O'Brien Sole Panelist Date: August 17, 2022
Full & Egal Universal Law Academy