ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Equinor ASA v. Digital Coin Case No. D2024-1702 1. The Parties The Complainant is Equinor ASA, Norway, represented by Valea AB trading as Rouse AB, Sweden. The Respondent is Digital Coin, United Kingdom. 2. The Domain Name and Registrar The disputed domain name is registered with Sav.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2024. On April 23, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 (REDACTED FOR PRIVACY) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 24, 2024, 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 April 25, 2024. 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 April 26, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2024. The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on May 20, 2024. 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 is a Norwegian energy corporation founded in the 1960s and formerly known as Statoil ASA. The Complainant is an international energy company with operations in more than 30 countries around the world developing oil, gas, wind, and solar energy. The Complainant decided to change its name to Equinor in 2018. The name change was announced in March 2018. It was widely published. In parallel to the name change, EQUINOR trademark applications have been filed worldwide, many of which have already been registered, among them: - International trademark EQUINOR n° 1.444.675 registered on July 4, 2018 - European Union trademark EQUINOR n° 17900772 registered on January 18, 2019 - United States trademark n° 6.436.681 registered on August 3, 2021 The Complainant has also registered a considerable number of 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 April 11, 2024, and as of the date of this Decision, it resolves to a website displaying “FLORIDA CREDIT UNION” in the heading, followed by “FCU Anywhere”: a site just with a cover page that doesn’t work. The disputed domain name was once used to locate an active subdomain where an investment site had been set up under the domain name “www.vic1.info-equinor.com” displaying active email addresses. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that: 1. the disputed domain name is confusingly similar to the Complainant’s trademark EQUINOR as the disputed domain name incorporates the entire EQUINOR wordmark; 2. by using a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark, EQUINOR, the trademark is recognizable within the disputed domain name; 3. the word “equinor” is the most distinctive element in the disputed domain name, and the additional word “info” does not prevent a finding of confusingly similarity; 4. when reading the disputed domain name as a whole, the addition of the word “info” enables the assumption that the Respondent targeted the Complainant’s trademark; 5. the gTLD “.com” is not sufficient to prevent the confusing similarity; 6. 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 disputed domain name; 7. 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; 8. the Respondent is not using the disputed domain name in connection with any legitimate noncommercial or fair use neither with a bona fide offering of goods or services; 9. the Respondent has intentionally registered and is using the disputed domain name in bad faith; 10. 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; 11. the registration of the disputed domain name was made six years after the Complainant’s announced name change in March 2018;
page 3 12. the disputed domain name is currently not displaying any active content; 13. the Complainant doesn’t believe that the Respondent has the intention to use the disputed domain name in good faith as the Complainant has located an active subdomain on the disputed domain name where an investment site has been set up under the domain name of “www.vic1.info-equinor.com” displaying active email addresses; 14. there is also information on the subdomain linked to Serva Groups which claim to offer investment opportunities for different types of raw materials generating energy under www.vic1.info-equinor.com; 15. the Chief Executive Officer (CEO) and founder of the “www.vic1.info-equinor.com” is claimed to be Alex Hobbs with the signature that actually appears to be the signature of Meryl Streep; 16. the Respondent has intentionally attempted to attract Internet traffic, for commercial gain by creating a likelihood of confusion with the Complainant’s mark EQUINOR, in order to make money by using the disputed domain name in relation to a fraudulent website. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms here, “info” short for “information”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although 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 difficult 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 interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
page 4 Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel considers that previous UDRP panels have found the Complainant’s EQUINOR trademark is a distinctive trademark with a reputation (e.g., Equinor ASA v. Danielle Torres, WIPO Case No. 2022-4889; Equinor ASA v. Marcos Cohen, WIPO Case No. D2022-3956), and the evidence in the present case supports such finding of the Complainant’s EQUINOR trademark’s reputation indeed. The Panel notes the composition of the disputed domain name (where “equinor” combined with “info” does not seem to be a common combination except probably to refer to the Complainant company). The Panel infers that the Respondent must have had the Complainant’s EQUINOR trademark in mind when it registered the disputed domain name, registering and holding and using the disputed domain name likely to take an unfair advantage of its similarity with the Complainant’s EQUINOR trademark, which makes the registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. In this case, the Respondent has setup an active subdomain on the disputed domain name where an investment site has been set up under the website “www.vic1.info-equinor.com” displaying active email addresses. The CEO and founder of the “www.vic1.info-equinor.com” is claimed to be a third party, yet the signature used was revealed to belong to another person. There is also information on the subdomain linked to Serva Groups which claim to offer investment opportunities for different types of raw materials generating energy under “www.vic1.info-equinor.com”. Such fraudulent use of the confusingly similar disputed domain name, particularly to redirect Internet users to a fraudulent website offering competing services, amounts to registration and use of the disputed domain name in bad faith. Despite the fact that when the Complainant filed the Complaint, the disputed domain name was not displaying any active content, and a message stating “403 FORBIDDEN” was shown on the disputed domain name’s website, the Panel has conducted a search and, on this date, and the disputed domain name displays a content that shows a single page with the title “FLORIDA CREDIT UNION” with a field to obtain sensitive or confidential personal information, but it doesn’t work. The Panel held that the use of a domain name for illegal activity here, constitutes bad faith. WIPO Overview 3.0, section 3.4. Even if the disputed domain name continued to resolve to an inactive website, such passive holding would not have prevented a finding of bad faith given the totality of the circumstances present here. WIPO Overview 3.0, section 3.3. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The Panel finds that the Complainant has established the third element of the Policy.
page 5 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. /Gonçalo M. C. Da Cunha Ferreira/ Gonçalo M. C. Da Cunha Ferreira Sole Panelist Date: June 3, 2024
Full & Egal Universal Law Academy