ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Equinor ASA v. Service@ Equinor, equinor.com Case No. D2024-3119 1. The Parties The Complainant is Equinor ASA, Norway, represented by Valea AB, Sweden. The Respondent is Service@ Equinor, equinor.com, United States of America. 2. The Domain Name and Registrar The disputed domain name is registered with Squarespace Domains II LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2024. On July 30, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 30, 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 (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 2, 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 August 2, 2024. The Center verified that the Complaint, as amended, 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 6, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2024. The Center appointed Alan L. Limbury as the sole panelist in this matter on September 4, 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, Equinor ASA, a Norwegian corporation, formerly known as Statoil ASA, is a broad international energy company with operations in more than 30 countries around the world developing oil, gas, wind and solar energy. Statoil ASA changed its name to Equinor in 2018, reflecting the shifting focus from oil and gas to renewable energy sources. The Complainant has numerous registrations for the trademark EQUINOR, including: European Union Intellectual Property Office (“EUIPO”) Reg. No. 017900772, registered on January 18, 2019 in Class 40 for inter alia “Production of energy; Refining of crude oil and processing of the products of that refining, as well as processing of dry gas and natural gas condensates; gasification of organic materials; production of geothermal energy; production of renewable energy; production of solar energy; production of wind energy; hydrocarbon capture; processing of hydrocarbons; recovery of hydrocarbons from gas; generation of power.” Norwegian Industrial Property Office Reg. Nos. 298811 (combined figurative mark) and 298813 (word mark), both registered on June 12, 2018 in Class 4 for inter alia (in translation) “Petrol, petroleum products, oil, crude oil, refined oil, fuel oil and fuels, dry gas, natural gas condensates; generator gas (synthetic gas), hydrogen fuels; hydrocarbon fuels; oils and fats for industrial purpose; electrical energy; electrical energy from renewable sources; electrical energy from solar energy; electrical energy from wind power”. United States Patent and Trademark Office Reg. No. 6,436,681, registered on August 3, 2021 in Class 4 for, inter alia, “Petrol, petroleum products, namely, gasoline, crude oil, refined crude oil, lubricants for motor vehicles, diesel fuel, aviation fuel, motor oil, non-chemical motor oil additives, and fuel oil; oil, namely, industrial oil, cutting oil, crude oil, refined fuel oil, fuel-oil and fuels, dry gas, namely, natural gas condensates; producer gas, fuel, namely, synthesis gas, hydrogen fuels; hydrocarbon fuels; oils and greases for industrial purposes; electrical energy; electrical energy from renewable sources; electrical energy from solar power; electrical energy from wind power; methanol, namely, methanol fuel”. The Complainant also has numerous registrations for domain names incorporating its EQUINOR mark, including , registered on June 15, 2011. The disputed domain name was registered on July 26, 2024. It resolves to an inactive website stating: “Equinorcom.com We’re under construction. Please check back for an update soon.” MX-records have been activated, thereby allowing emails from the disputed domain name to be sent. 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 the Complainant’s trademark EQUINOR; 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; and that the disputed domain name was registered and is being used in bad faith. As to legitimacy, the Complainant says the Respondent is not affiliated or related to the Complainant in any way, nor 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 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.
page 3 The Complainant says the Respondent has intentionally 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 contains a mark that is identical to the Complainant’s trademark EQUINOR. 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. 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. The Respondent’s contact information is not publicly available. The use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual registrant is often considered as an indication of bad faith (“WIPO Overview 3.0”, Section 3.6). It is clear 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. The fact that MX-records have been activated for the disputed domain name leads the Complainant to believe that a recipient of a potential email sent from “@equinorcom.com” is likely to assume that the email has been sent in connection with the Complainant. The Complainant has been informed that at least one fraudulent email has been sent. 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 that it has rights in respect of a trademark 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. 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.
page 4 The Panel finds the second element of the Policy has been established. C. Registered and Used 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. 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. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness and reputation of the Complainant’s trademark and the composition of the disputed domain name, 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. Further, Panels have held that the use of a domain name for illegal activity, such as impersonation/passing off, or other types of fraud constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration of the disputed domain name (noting its composition), the use of the name “Service@ Equinor” and “equinor.com” as the registrant’s “Name” and “Organization” for the registration of the disputed domain name, and activation of MX-records enabling use of the disputed domain name to send emails, create a risk that such emails may be purporting to emanate from Complainant, which further supports a finding of bad faith under the Policy. 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. /Alan L. Limbury/ Alan L. Limbury Sole Panelist Date: September 18, 2024.
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