ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Equinor ASA v. Jan Nils Case No. D2022-3758 1. The Parties The Complainant is Equinor ASA, Norway, represented by Valea AB, Sweden. The Respondent is Jan Nils, Israel. 2. The Domain Name and Registrar The disputed domain name is registered with Domain.com, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 7, 2022. On October 7, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 (Domain Privacy Service FBO Registrant) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 10, 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 October 10, 2022. The Center verified that the Complaint together with the amendment to the Complaint/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 October 11, 2022. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 1, 2022. page 2 The Center appointed Anna Carabelli as the sole panelist in this matter on November 3, 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 is an international energy company based in Norway with operations in more than 30 countries around the world developing oil, gas, wind and solar energy. It was founded as The Norwegian State Oil Company (known as "Statoil") in 1972, and the Norwegian State holds 67% of its shares. The Complainant changed its name from Statoil to Equinor in 2018. The change name was widely publicized in both domestic and international markets. The Complainant is the owner of several trade mark registrations for EQUINOR in various jurisdictions, including: - International trademark registration No. 1444675, registered on July 4, 2018, for goods and services in international classes 1, 2, 4, 6, 7, 9, 16, 17, 19, 25, 28, 35, 36, 37, 39, 40, 41 and 42; and - European Union Trade Mark registration No. 17900772, registered on January 18, 2019, for goods and services in international classes 1, 2, 4, 6, 7, 9, 16, 17, 19, 25, 28, 35, 36, 37, 39, 40, 41 and 42; - United States trademark application No. 87959294, registered on August 3, 2021, for goods and services in international classes 1, 2, 4, 6, 7, 9, 16, 17, 19, 25, 28, 35, 36, 37, 39, 40, 41 and 42. The Complainant also owns numerous domain name registrations containing the EQUINOR mark, distributed among generic Top-Level Domains ("gTLD") and country code Top-Level Domains ("ccTLD"). The disputed domain name was registered on October 25, 2021 through a privacy service. The evidence in the Complaint is that the disputed domain name is inactive and information is displayed that the domain name is under development. The Complainant has also asserted that the disputed domain name has active MX-records and there is a high risk that the Respondent is using the disputed domain name to send fraudulent emails or phishing. The Panel accessed the disputed domain name on November 14 and 16, 2022, at which time the disputed domain name resolved to a website containing sponsored links to financial services and capital investments platforms. 5. Parties' Contentions A. Complainant The Complainant submits and contends that: - The Complainant is the registered proprietor of the trademark EQUINOR which has acquired and enjoys a significant reputation and goodwill internationally. - The Complainant has a separate company which contains EQUINOR as part of its name, focusing on financial services such as insurance and financial services along with capital investments. - The disputed domain name is confusingly similar to the Complainant's registered trademark and company name. The fact that the disputed domain name consists of two words "equinor" and "investmets" which is the typosquatting of "investment" does not prevent a finding of confusing similarity. page 3 - The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not authorized or somehow given consent to the Respondent to register and use the disputed domain name and the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services. - The disputed domain name was registered in bad faith. The Respondent must have known of the Complainant's mark EQUINOR when it registered the disputed domain name. The mark is distinctive and well-known as a result of the goodwill associated with the Complainant's previous mark, STATOIL which was replaced by the EQUINOR mark, a move which attracted considerable comment in the press. - The disputed domain name is also used in bad faith. In this connection, the Complainant highlights that information is displayed that the disputed domain name is under development in the tab on the web browser. Further, the Complainant contends that there is a high risk that the disputed domain name is being used to distribute fraudulent emails, since its MX (i.e. its mail exchange) records are active. This fact can inflict severe damages for the Complainant in case of phishing attacks. The Respondent's registration and use of the disputed domain name 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 fact that the Respondent had employed a privacy service to hide its identity upon the registration of the disputed domain name is further evidence of bad faith registration and use. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint based on the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Under paragraph 4(a) of the Policy, the Complainant must prove each of the following: (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. Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for the purposes of paragraph 4(a)(iii) of the Policy, shall be evidence of registration and use of a domain name in bad faith. Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the Respondent, shall be evidence of the Respondent's rights to or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii) of the Policy above. page 4 A. Identical or Confusingly Similar The Panel finds that the Complainant has established rights over the trademark EQUINOR based on the evidence submitted in the Complaint. The disputed domain name consists of the Complainant's trademark EQUINOR with the addition of the term "investmets", followed by the gTLD ".com". As highlighted in section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), the addition of a gTLD such as ".com" is viewed as a standard registration requirement and as such is typically disregarded under the first element confusing similarity test. Therefore, the relevant comparison to be made is with the second-level portion of the disputed domain name, i.e. "equinorinvestmets". As highlighted in section 1.7 of the WIPO Overview 3.0, the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. The disputed domain name entirely incorporates the Complainant's mark EQUINOR and this is a sufficient element to establish confusing similarity, as held by previous UDRP panels (e.g., Banca Mediolanum S.p.A. v. Domains By Proxy, LLC / Marzia Chiarello, WIPO Case No. D2020-1955; Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1923; Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1409). The addition of typosquatting of "investmets" does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0. Accordingly, the Panel finds that disputed domain name is confusingly similar to a mark in which the Complainant has rights. Therefore, the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation: (i) before any notice to it of the dispute, its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; (ii) it has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; (iii) it 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. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, based on the following: (a) the Complainant holds prior rights in the globally registered and well-known EQUINOR mark (b) the Respondent has not been authorized to use the Complainant's mark in any way (c) the Respondent cannot demonstrate any legitimate noncommercial or fair use of the disputed domain. According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate page 5 interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. Here the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. By not submitting a response, the Respondent has failed to invoke any circumstance, which could have demonstrated any rights or legitimate interests in the disputed domain names under paragraph 4(c) of the Policy. There is no indication before the Panel of any activity in relation to the disputed domain name that would give rise to rights or legitimate interests in the Respondent. Therefore, the Panel finds that the Complainant has established paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, which includes: "(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 disputed domain name incorporates the Complainant's trademark EQUINOR and was registered three years after the mark was registered amid considerable publicity both in Norwegian and international markets. Given the distinctiveness and well-established reputation of the Complainant's trademark, in all likelihood the Respondent could not ignore the Complainant's EQUINOR trademark at the time it registered the disputed domain name. Such fact suggests that the disputed domain name was registered in bad faith (see WIPO Overview 3.0, section 3.2.2) with a deliberate intent to create an impression of an association with the Complainant. Concerning the use of the disputed domain name, the evidence submitted shows that at the time of filing the Complaint, the disputed domain name did not resolve to an active website. It appears however, that the Respondent has proceed with additional steps beside registering the disputed domain name. At the time the Panel accessed it, the disputed domain name resolved to a website featuring sponsored links to financial services and capital investments platforms, which is confusing in that Internet users might reasonably believe that services/products advertised are connected to or approved by the Complainant, also considering that according to the uncontested submissions in the Complaint, the Complainant has a separate company which contains EQUINOR as part of its name, focusing on financial services such as insurance and financial services along with capital investments. Accordingly, the Panel finds that the Respondent has intentionally attempted to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant's EQUINOR mark. In addition, it appears that the Respondent has taken steps to conceal its identity by registering the disputed domain name through a privacy service. All the above circumstances affirm a finding of bad faith use under the Policy. For all the above reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith by the Respondent. page 6 Therefore, the Complainant has established also 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. /Anna Carabelli/ Anna Carabelli Sole Panelist Date: November 17, 2022
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