ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Equinor ASA v. Name Redacted Case No. D2024-2246 1. The Parties The Complainant is Equinor ASA, Norway, represented by Rouse AB (Valea AB trading as Rouse AB), Sweden. The Respondent is Name Redacted1, United States of America. 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2024. On June 3, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name(s). On June 3, 2024, 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 (Withheld for privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 4, 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 June 5, 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”). 1 Respondent appears to have used the name of a third party when registering the disputed domain name. Considering the potential identity theft, the Panel has redacted Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in these proceedings and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST – 12785241 Attn Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.
page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 6, 2024. In accordance with the Rules, paragraph 5, the due date for Response was June 26, 2024. The Respondent sent an email communication to the Center on June 26, 2024. The Center notified the Parties of the Commencement of Panel Appointment Process on July 11, 2024. The Center appointed Benjamin Fontaine as the sole panelist in this matter on July 24, 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. 4. Factual Background The Complainant is Equinor ASA, an international energy company founded in Norway in 1972 and formerly known as The Norwegian State Oil Company (Statoil ASA). Statoil ASA has grown up along with the emergence of the Norwegian oil and gas industry dating back to the late 1960s and has become a broad international energy company with operations in more than 30 countries around the world, developing oil, gas, wind and solar energy. The Norwegian State is the largest shareholder with 67% of the shares. In March 2018, Statoil ASA became Equinor ASA. The change of name is explained by the evolution of the energy sector from oil and gas to renewable energy sources such as wind and solar power. The Complainant owns several hundred registrations worldwide for the trade mark STATOIL, including: - International trade mark STATOIL (word) No. 1 220 682, registered on December 5, 2013, and designating the following jurisdictions: Australia, Azerbaijan, China, Colombia, Cuba, European Union, Ghana, India, Korea (Republic of), Kazakhstan, New Zealand, Singapore, Turkmenistan, Türkiye; - Norwegian trade mark (figurative) No. 281029, registered on March 19, 2015. Furthermore, the Complainant is the owner of more than 100 domain name registrations throughout the world reflecting the trade mark STATOIL, among which: - the domain name “statoil.com” registered on April 21, 1995 which resolves to its official website “www.equinor.com”, and - the domain name “statoil.az” registered on August 29, 2001 in the Azerbaijan extension. The disputed domain name was registered on May 2, 2024. At the time of its detection, it resolved to a website using the trade marks STATOIL and in its header and displaying active content copied from the Complainant’s actual website. At the time of the decision, the domain name does not resolve to an active website anymore. After being formally notified of the commencement of the proceedings on June 6, 2024, the Respondent whose coordinates were listed on the Whois information, sent an email communication to the Center on June 26, 2024, indicating “I have nothing to do with the mentioned domain, I’m not aware or familiar with it meaning I have never seen this domain before I got the letter from you. I can assure you that I did NOT register this domain. I have no knowledge of who used my identity to register this domain. This domain is meaningless to me and has no benefit or advantage and this domain does not even make any sense for me
page 3 so there is no reason why I would register this domain. Please look into this case and find the real owner of this domain who might have registered this domain. Thank you so much for your assistance in this matter.” 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 the disputed domain name is confusingly similar to its registered trade marks STATOIL, which is reproduced and recognizable at the beginning of the disputed domain name. The addition of the generic terms AZERBAIJAN A.S. is most likely an allusion to the country Azerbaijan and has no crucial impact on the overall assessment as the disputed domain name being confusingly similar to the Complainant’s trade marks. The word “statoil” is the most distinctive element in the disputed domain name, and the additional wording “azerbaijanas” does not prevent a finding of confusingly similarity. Then, the Complainant adds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the trade marks STATOIL in connection with a website, a domain name or for any other purpose. The Complainant further submits that the Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services nor any legitimate non-commercial or fair use. The Respondent is not generally known by the disputed domain name and has not acquired any trade mark or service trade mark rights in that name or trade mark. Finally, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. The disputed domain name was registered on May 2, 2024. Given the long use of the trade mark STATOIL and the trade mark registrations predating the registration of the disputed domain name, the Complainant finds that the Respondent incorporated purposedly a distinctive trade mark having absolutely no prior rights on it, and registered the disputed domain name in bad faith. The website to which the disputed domain name resolved displayed the trade marks STATOIL and EQUINOR, with the Complainant’s logo. The content of the website was misleading consumers as it copied information from the Complainant’s actual official website. Therefore, the Respondent is attempting to take advantage of the trade marks STATOIL and the reputation thereof, to attract Internet users to the disputed domain name. The Complainant indicates that there is a high risk that fraudulent emails are being distributed from the disputed domain name as the MX records are active. The Complainant has received media attention recently in Azerbaijan as “Norway’s national oil company Equinor has announced that it has sold its shares in two Azerbaijani oil fields and the Baku Tbilisi Ceyhan oil pipeline to Azerbaijan’s state oil company SOCAR and will exit from Azerbaijan after 30 years in the country.” See “www.eurasianet.org/norways-equinor-to-leave-azerbaijan”. The Complainant therefore believes that the Respondent might have been aware of this information prior to registering the disputed domain name thus further demonstrating that the Respondent had no good faith when registering or using the domain. Subsequently, it must be established that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent requests the transfer of the disputed domain name. B. Respondent The Respondent whose contact details had been provided by the Registrar contacted the Center to indicate that he was not behind the reservation of the disputed domain name and did not reply to the Complainant’s contentions.
page 4 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 trade mark 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 trade mark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. Although the addition of other terms, here “azerbaijanas” may bear on assessment of the second and third elements, the Panel finds the addition of such terms 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. 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 notes that the Respondent reserved a domain name containing the Complainant’s registered trade mark as the attack word, supplementing this trade mark firstly with the name of a country where the Complainant does business and where it has recently been mentioned in the news, and secondly with terms relating to a corporate form (Aksjeselskap is the Norwegian term for a stock-based company, and it is usually abbreviated AS). Moreover, the Respondent has concealed his identity and used the name of a third party in the contact details provided to the Registrar. This disputed domain name was redirected to a site containing information copied from the Complainant’s official site. It is therefore clear that
page 5 the Respondent had the Complainant’s trade mark in mind when registering the disputed domain name and has registered and used this disputed domain name to attract Internet users to the website by creating a likelihood of confusion with the Complainant’s trade marks, in accordance with paragraph 4(b)(iv) of the Policy. All these elements constitute evidence of the registration and use of the disputed domain name in bad faith. 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. /Benjamin Fontaine/ Benjamin Fontaine Sole Panelist Date: August 7, 2024
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