ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Equinor ASA v. S W H Company Case No. D2023-3650 1. The Parties The Complainant is Equinor ASA, Norway, represented by Valea AB, Sweden. The Respondent is S W H Company, France. 2. The Domain Name(s) and Registrar(s) The disputed domain name is registered with NameSilo, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 30, 2023. On August 31, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name(s). On August 31, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name(s) which differed from the named Respondent (Domain administrator,PrivacyGuardian.org llc) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 1, 2023 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 September 4, 2023. 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 September 6, 2023. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 29, 2023. page 2 The Center appointed Roger Staub as the sole panelist in this matter on October 2, 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. 4. Factual Background The Complainant is Equinor ASA, a Norwegian company. It is an international energy company and was formerly known as "Statoil ASA". The Norwegian state holds 67% of the shares in the Complainant. According to the Complainant's website at "www.equinor.com", the Complainant has 21,000 employees in 30 countries. It was founded back in 1972. Various media articles show that the Complainant publicly announced in March 2018 the change of its name from "Statoil" into "Equinor". The change of name was aimed at supporting the Complainant's strategy and evolution from an oil company to a broader energy company with a focus on renewable energy sources. The Complainant owns various trademark registrations consisting of, or containing, the word "Equinor" in various jurisdictions. The Complainant's portfolio of EQUINOR trademark registrations includes, inter alia, the following trademark registrations: - International trademark No. 1444675 EQUINOR, registered on July 4, 2018, in Classes 01, 02, 04, 06, 07, 09, 16, 17, 19, 25, 28, 35-37 and 39-42; - United States of America trademark No. 6436681 EQUINOR, registered on August 3, 2021, in Classes 01, 02, 04, 06, 07, 09, 16, 17, 19, 25, 28, 35-37 and 39-42; - European Union Trade Mark No. 017900772 EQUINOR, registered on January 18, 2019, in Classes 01, 02, 04, 06, 07, 09, 16, 17, 19, 25, 28, 35-37 and 39-42. The Complainant has registered more than 100 domain names containing the element "equinor" with different generic Top-Level Domain ("gTLDs"). By way of example, the Complainant's domain name portfolio includes the domain names , , , or . The disputed domain name was registered on August 30, 2023. The disputed domain name redirects to the Complainant's official website "www.equinor.com". 5. Parties' Contentions A. Complainant The Complainant submits the following arguments: First, the disputed domain name is confusingly similar to the Complainant's trademark EQUINOR. The disputed domain name incorporates the entire trademark. The Complainant believes that by using a side-byside comparison the trademark EQUINOR is recognizable within the disputed domain name. The geographical abbreviation "uk" for the United Kingdom does not prevent the disputed domain name from being confusingly similar to the Complainant's trademark. The generic Top-Level Domain ("gTLD") services was not sufficient to prevent confusing similarity. Bearing in mind the widespread reputation and the high degree of recognition of Complainant's EQUINOR marks especially in the energy sector as well as the lack of distinguishing factors, the disputed domain name should be considered as confusingly similar. Second, the Respondent has no rights or legitimate interests in respect of the disputed domain name. This is due to the Complainant's prior use of the trademark EQUINOR and the company name Equinor. The Respondent is not affiliated, or otherwise related, with the Complainant. The Respondent is not using the page 3 disputed domain name in connection with any legitimate noncommercial or fair use without intent of commercial gain. The Respondent is not generally known under the disputed domain name and has not acquired any corresponding trade or service mark rights. He is not using the disputed domain name in connection with a bona fide offering of goods or services. Third, the disputed domain name was registered and is being used in bad faith. The Respondent chose to register a domain name that entails the trademark EQUINOR. The Respondent was fully aware of the fact that it incorporated a well-recognized and distinctive trademark in which the Respondent had no prior rights. The registration of the disputed domain name took place five years after the announced change of the Complainant's name. The disputed domain name currently redirects to the Complainant's official website thereby providing the impression that the disputed domain name has been registered by the Complainant. The Respondent has intentionally attempted to attract Internet traffic, for commercial gain by creating a likelihood of confusion. The Complainant has a physical office in London, in the United Kingdom. As Mail exchanges ("MX-records") are active for the disputed domain name the Complainant finds it very likely that an Internet user finding the website, or receiving an email from an email address connected to the disputed domain name is likely to believe that this email has been sent from one of the Complainant's staff operating from the London office (especially as the disputed domain name contains the additional "uk"). The use of a privacy or proxy service is also a further indication of bad faith. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings According to the Policy, to qualify for a cancellation or transfer, the Complainant must prove each of the following: First, the disputed domain name is identical or confusingly similar to a trademark or service mark to which the Complainant has rights. Second, the Respondent has no rights or legitimate interests in respect of the disputed domain name. Third, the disputed domain name has been registered and is being used in bad faith. Since the Respondent did not submit a reply, the Panel may choose to accept the reasonable contentions of the Complainant as true. This Panel will determine whether those facts constitute a violation of the Policy that is sufficient to order the transfer of the disputed domain name (see Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech, WIPO Case No. D2006-0292). A. Identical or Confusingly Similar The Panel accepts that the Complainant has registered trademark rights in the designation EQUINOR in numerous jurisdictions. The disputed domain name comprises the trademark EQUINOR in its entirety. The addition of the geographical abbreviation "uk" to the trademark does not prevent a finding of confusing similarity between the disputed domain name and the Complainant's trademarks (see section 1.8 of the WIPO Overview 3.0). The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. page 4 B. Rights or Legitimate Interests According to Paragraph 4(c) of the Policy, the following are examples for circumstances where a respondent may have rights to or legitimate interests in a domain name: (i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or (iii) the respondent 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. In the absence of any evidence filed by the Respondent, the Panel does not see any indications being given for any of the above examples, or any other circumstances suggesting that the Respondent may have rights or legitimate interests in the disputed domain name. The Respondent's company name is "S W H Company" and there are no indications that this company is in any way legitimately linked to the business that the Complainant runs under the EQUINOR trademark. The fact that the disputed domain name redirects to the Complainant's official website, apparently without the Complainant's authorization, is not suitable to indicate a right or legitimate of the Respondent either. The Panel is inclined to assume that the Respondent was well aware of the Complainant's trademark when it registered the disputed domain name. Accordingly, the use established under the disputed domain name does not represent a bona fide offering. Additionally, since the disputed domain name consists of the trademark EQUINOR plus the additional geographical term "uk", such composition cannot constitute fair use as it effectively suggests sponsorship or endorsement by the trademark owner (see section 2.5.1 of the WIPO Overview 3.0). Hence, the second element of the Policy is also fulfilled. C. Registered and Used in Bad Faith According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith: (i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-ofpocket costs directly related to the domain name; (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted 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 product or service on its website or location. The Complainant submits that the disputed domain name redirects to the Complainant's official website . The Panel finds that such redirecting from the disputed domain name to the Complainant's website supports a finding that the Respondent has registered the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark (see section 3.4.1 of the WIPO Overview 3.0). Hence, and to this extent, circumstance 4(b)(iv) is given and suggests bad faith intentions of the Respondent. This finding is supported by the other circumstances of the present case, which lead the Panel to the conclusion that the disputed domain name was registered and is used in bad faith. The disputed domain name incorporates the Complainant's trademark in its entirety, which both is highly distinctive and has a certain reputation. The Complainant is known under this trademark and name in various countries (also in the Respondent's reported country, where the Complainant, according to its website "www.equinor.com", has a presence). page 5 This distinctive and reputed trademark has been combined with the geographical abbreviation "uk" suggesting that the disputed domain name is the Complainant's local web presence in the United Kingdom. All this indicates that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark. There are no plausible indications at all for a possible good faith use of the disputed domain name by the Respondent. The Respondent failed to submit a response and, thus, any evidence of an actual or contemplated good faith use. Therefore, the third element of the Policy has also been fulfilled. 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. /Roger Staub/ Roger Staub Sole Panelist Date: October 17, 2023
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