ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Equinor ASA v. Domain Admin, Privacy Protect LLC PrivacyProtect org Case No. D2024-1929 1. The Parties The Complainant is Equinor ASA, Norway, represented by Rouse AB (Valea AB trading as Rouse AB), Sweden. The Respondent is Domain Admin, Privacy Protect LLC PrivacyProtect org, United States of America (“United States”). 2. The Domain Name and Registrar The disputed domain name is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2024. On May 8, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 9, 2024, 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 May 10, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 30, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2024. The Center appointed Mihaela Maravela as the sole panelist in this matter on June 7, 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 According to information in the Complaint, the Complainant is a Norwegian corporation, formerly known as Statoil ASA. The Complainant is a broad international energy company with operations in more than 30 countries around the world, developing oil, gas, wind, and solar energy. The Complainant was founded as the Norwegian State Oil Company (Statoil) in 1972, and the Norwegian State holds 67% of its shares. The Complainant changed its name from Statoil ASA to Equinor in 2018 to reflect the shifting focus from oil and gas to renewable energy sources such as wind and solar power. The Complainant is the registered owner of a number of trademarks consisting of or including STATOIL, such as the International trademark STATOIL, registered under No. 1220682 on December 5, 2013, for the International classes of products and services 1, 4, 6, 7, 9, 35, 36, 37, 39, 40, 41, and 42. Also, the Complainant has registered many domain names containing STATOIL. The disputed domain name was registered on March 30, 2024, and at the date of the Complaint it resolved to a page under construction displaying “STADOIL” under a logo and a “coming soon” message. At the date of this Decision, the disputed domain name resolves to a website with various generic information in the oil and gas sector under the heading “Stadoil Global Gas and Petroleum Company”, but without any actual offer of products or services on the website. 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, with respect to the first element, the Complainant contends that the change of the letter “t” in the trademark to a “d” in the disputed domain name has no crucial impact on the overall assessment, as the change of letters could easily be interpreted as a simple misspelling. Therefore, the disputed domain name is confusingly similar to the STATOIL trademark. As regards the second element, the Complainant argues that the Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the STATOIL mark in connection with a website, a 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 generally 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. With respect to the third element, the Complainant contends that given the long use of the STATOIL trademark of the Complainant across the world and the trademark registrations of the Complainant predating the registration of the disputed domain name, the Respondent has registered the disputed domain name in bad faith. Concerning the use, the Complainant submits that the website to which the disputed domain name is linked is currently displaying non-active content. However, the website does contain information which is likely to mislead consumers as it says that “The website is under upgradation, will be back soon. For Query […]@stadoil.com”. In the website tab, there is the text “GLOBAL Gas & Petroleum Trading Company, stadoil.com”. The Complainant argues that a person who is not familiar with the change of the company name from Statoil to Equinor, could easily be misled into thinking that this is an actual website (under construction) of the Complainant, and that the email address being displayed is linked to the Complainant. Furthermore, the website contains a symbol consisting of a S-shaped figure, containing a drop which must be interpreted as a drop of oil. When looking at the content all together, the overall assessment is that the Respondent intends to impersonate the Complainant and that the Respondent is attempting to take advantage of the Complainant’s reputation to mislead Internet user to the website linked to the disputed
page 3 domain name. Also, there is a high risk that fraudulent emails are being distributed from the disputed domain name as the mail exchange (“MX”) records are active. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings No response has been received from the Respondent in this case. Accordingly, the Panel considers it can proceed to determine the Complaint based on the statements and documents submitted by the Complainant as per paragraph 15(a) of the Rules. The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, and the Panel can draw certain inferences in light of the particular facts and circumstances of the case. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2. To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (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. 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 3.0, section 1.7. The Complainant has shown rights in respect of the STATOIL trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the STATOIL mark is recognizable within the disputed domain name which consists of the obvious misspelling of the STATOIL trademark of the Complainant, with the replacement of the letter “t” with a “d”, which does not significantly affect its appearance or pronunciation. This misspelling in the disputed domain name also referred to as typosquatting, does not prevent a finding of confusing similarity (see WIPO Overview 3.0, section 1.9). Accordingly, the disputed domain name is confusingly similar to the Complainant’s mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. In addition, the Panel finds that the addition of the generic Top-Level Domain (“gTLD”) “.com” to the disputed domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. 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
page 4 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. 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. According to the unrebutted evidence provided by the Complainant, at the date of filing the Complaint, the disputed domain name did not resolve to an active website but to a website displaying a “coming soon” message under a logo and the term “STADOIL”. At the date of the Decision the disputed domain name resolves to a website with various generic information in the oil and gas sector under the heading “Stadoil Global Gas and Petroleum Company”, but without any actual offer of products or services on the website. Noting that the Complainant has been doing substantive business under the STATOIL trademark, and that the Respondent’s website seems to be purporting operating in the Complainant’s business field, the Panel considers that neither use of the disputed domain name gives rise to any rights or legitimate interests in it. Also, there is no evidence that the Respondent is commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy, as the Respondent is Domain Admin, Privacy Protect LLC PrivacyProtect org from the United States and there is no evidence that a company Stadoil Global Gas and Petroleum Company exists. 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. 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. The Panel finds, on the balance of the probabilities, that the Respondent has opportunistically registered and used the disputed domain name in bad faith. The Respondent registered the disputed domain name, which is a typosquatted version of the Complainant’s trademark STATOIL, many years after the Complainant began using its mark in the oil and gas sector. The Respondent then directed the disputed domain name to a website purportedly offering or at least describing competing services. The Respondent has not participated in the proceeding and has failed to rebut the Complainant’s contentions or provide any evidence of actual or contemplated good-faith use. In the Panel’s view, the disputed domain name creates a likelihood of confusion, is disruptive of the business of the Complainant, and might confuse Internet users, which are indicative of bad faith under the Policy. Panels have held that the use of a domain name for illegal activity (here, claimed impersonation/passing off, or other types of fraud) constitutes bad faith. WIPO Overview 3.0, section 3.4. An additional element is the DNS setup of the disputed domain name (with active MX records), particularly noting the composition of the disputed domain name, and the circumstances of the case. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.
page 5 Although at the time of filing of the Complaint, the disputed domain name was inactive (showing a coming soon page), considering the circumstances of this case, the Panel finds that such non-use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding (see section 3.3 of the WIPO Overview 3.0). The Panel finds that the Complainant has established the third element 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. /Mihaela Maravela/ Mihaela Maravela Sole Panelist Date: June 13, 2024
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