ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Equinor ASA v. Lace Invest Case No. D2023-3238 1. The Parties The Complainant is Equinor ASA, Norway, represented by Valea AB, Sweden. The Respondent is Lace Invest, Uganda 2. The Domain Name and Registrar The Disputed Domaine Name is registered with PSI-USA, Inc. dba Domain Robot (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 27, 2023. On July 27, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 28, 2023, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 August 17, 2023. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 14, 2023. The Center appointed Edward C. Chiasson K.C. as the sole panelist in this matter on September 25, 2023. 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. page 2 4. Factual Background The Complainant, Equinor ASA, is a Norwegian corporation, formerly known as Statoil ASA. The name was changed in 2018 and was announced worldwide. The Complainant is an international energy company with operations in more than 30 countries around the world developing oil, gas, wind, and solar energy. Statoil was founded as The Norwegian State Oil Company (Statoil) in 1972 and the Norwegian State holds 67% of its shares. By virtue of the renown of the Statoil name, it was well known within its field of business. The EQUINOR mark inherited the famous status of the STATOIL mark and became known to everyone who knew Statoil because of the widely published name change. In parallel to the official name change in 2018, trademark applications were filed worldwide for the mark EQUINOR. The Complainant exhibited an extensive list of applications in many jurisdictions and an extensive list of registrations in many jurisdictions including the European Union Trademark No. 17900772, registered on January 18, 2019. The Complainant is the owner of more than 100 domain name registrations throughout the world containing the EQUINOR mark distributed among generic Top-Level Domains ("gTLD") and country code Top-Level Domains ("ccTLDs"). The Disputed Domain Name was registered on July 24, 2023 and does not resolve to an active website. 5. Parties' Contentions A. Complainant Based on the following asserted facts and authorities the Complainant contends that the Disputed Domain Name is confusingly similar to trademarks in which it has rights. The Disputed Domaine Name incorporates almost the full Complainant's registered mark, the only difference is that the "i" in the trademark EQUINOR has been changed to a "j". These two letters should be viewed as particularly similar. At a first glance, an Internet user would be likely to believe that the Disputed Domain Name belongs to Equinor. The fact that the two letters are proximate to each other on a standard keyboard layout also supports the finding that the Disputed Domain Name has been chosen with the intent to be similar to the Complainant's registered mark EQUINOR. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0", section 1.9). The gTLD ".com" is not sufficient to prevent confusing similarity. As stated by Section 1.11.1 of the 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." Considering the brand awareness of the trademark EQUINOR worldwide, an Internet user would probably assume a connection with the Complainant and its business when seeking information on a website or receiving an email with the Disputed Domain Name. Previous UDRP panels have found that the EQUINOR trademark is well-known and distinctive. See Equinor ASA v. Danielle Torres, WIPO Case No. D2022-4889 in which the panel found that the disputed domain name was confusingly similar to the Complainant's EQUINOR mark, a distinctive and well-known mark in which the Complainant has established rights through registration and considerable use. page 3 Based on the following asserted facts the Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent is not affiliated or related to the Complainant in any way, 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 generally known by the Disputed Domain Name and has not acquired any trademark or service mark rights in that name or mark. 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 Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. Based on the following asserted facts and authorities the Complainant contends that the Respondent 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 name that is close to identical to the Complainant's trademark EQUINOR. Considering that only one letter differs ("j" instead of "i") and that the replacing letter is proximately placed on the standard keyboard layout and also looks similar when seen at first glance, the Complainant contends that the Disputed Domain Name was carefully chosen for the purpose of attracting Internet users through typosquatting. The registration of the Disputed Domain Name was at least five years after the announced name change in March 2018 and the bulk of applications for the registration of the Complainant's mark. The Disputed Domain Name currently shows no active content. According to Section 3.3 of the WIPO Overview 3.0, "[f]rom the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or 'coming soon' page) would not prevent a finding of bad faith under the doctrine of passive holding." While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent's concealing its identity or use of contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. See section 3.3 of the WIPO Overview 3.0. MX-records have been activated for the Disputed Domain Name. It can be used potentially to send out phishing emails to harm the Complainant. The Complainant asserts that there is an imminent risk of confusion for Internet users and injury to the Complainant if an email were to be sent from "[...]@equjnor.com" and a recipient were to believe that such email had been sent by the Complainant. 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 Internet traffic, for commercial gain by creating a likelihood of confusion with the Complainant's mark EQUINOR. B. Respondent The Respondent did not reply to the Complainant's contentions. page 4 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has provided clear evidence that it has rights in the trademark EQUINOR. The Disputed Domain Name differs from the Complainant's mark only by the substitution of the letter "i" by the letter "j" and this substitution does not prevent the trademark EQUINOR from being recognizable in the Disputed Domain Name. Being proximate to each other on a standard keyboard, they could be considered to be a typographical error. See section 1.9 of the WIPO Overview 3.0. The addition of the generic Top-Level Domain, ".com", is irrelevant for purposes of the first element and does not prevent a finding of confusing similarity. See section 1.11.1 of the WIPO Overview 3.0. The Panel finds that the Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights. The Panel concludes that the Complainant has established the requirements of the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests The Complainant did not authorize the Respondent to use its trademark. The Respondent has not been identified with and is not commonly known by the Complainant's mark. The Respondent has advanced no explanation for using the Complainant's mark or shown any legitimate interests or rights in the Disputed Domain Name. The Disputed Domain Name was registered a number of years after the Complainant began its applications for the registration of its trademark and obtained confirmed registrations of the mark. There is no evidence that the Respondent is using the Disputed Domain Name in connection with any legitimate noncommercial or fair use without intent for commercial gain or is using the Disputed Domain Name in connection with a bona fide offering of goods or services. The Panel finds that the Complainant has made a prima facie case showing that the Respondent does not have rights to or legitimate interests in the Disputed Domain Name, which the Respondent has not rebutted. The Panel concludes that the Complainant has established the requirements of the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith The Disputed Domain Name was registered and used several years after the Complainant registered its trademark. The trademark reflected a change in the corporate name of the Complainant, a change that was very widely publicized. UDRP panels have consistently found that the registration of a domain name that is confusingly similar (particularly domain names comprising typographical errors) to a famous or widely known trademark can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0. Substitution of one letter, "i", in the Complainant's mark and replacing it with the letter "j" which is proximate on a standard keyboard suggests an intent to mislead Internet users. The Panel notes that the Complainant has a legitimate concern that the Respondent will misuse the Disputed Domain Name to the Complainant's detriment. page 5 Prior UDRP panels have found that the non-use of a domain name (including a blank or "coming soon" page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated goodfaith use, (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. See section 3.3. of the WIPO Overview 3.0. In this case, the Panel particularly notes the degree of distinctiveness or reputation of the EQUINOR trademark, the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use and the implausibility of a good faith use to which the Disputed Domain Name may be put and finds that in the circumstances of this case the passive holding of the Disputed Domain Name does not prevent a finding of bad faith under the Policy. The Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith. The Panel concludes that the Complainant has established the requirements of the Policy, paragraph 4(a)(iii). 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. /Edward C. Chiasson K.C./ Edward C. Chiasson K.C. Sole Panelist Date: October 9, 2023
Full & Egal Universal Law Academy