ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Equinor ASA v. Wang sen, wangsen guo ji mao yi ji tuan Case No. D2024-3761 1. The Parties The Complainant is Equinor ASA, Norway, represented by Rouse AB (Valea AB trading as Rouse AB), Sweden. The Respondent is Wang sen, wangsen guo ji mao yi ji tuan, Cambodia. 2. The Domain Names and Registrar The disputed domain names and are registered with Gname.com Pte. Ltd. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2024. On September 16, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 17, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (REDACTED FOR PRIVACY, wangsen guo ji mao yi ji tuan) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 17, 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 September 21, 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 September 23, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 14, 2024.
page 2 The Center appointed Fernando Triana Soto as the sole panelist in this matter on October 18, 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 Complainant is an international energy company, incorporated in Norway. Complainant’s trademark EQUINOR has been registered worldwide. Among others, Complainant has the following registrations: - EQUINOR, before the European Union Intellectual Property Office, Certificate No. 017900772, registered on January 18, 2019, in international classes 1, 2, 4, 6, 7, 9, 16, 17, 19, 25, 28, 35, 36, 37, 39, 40, 41, and 42. - EQUINOR, before the Norwegian Industrial Property Office, Certificate No. 298811, registered on June 12, 2018, in international classes 4, 40, and 42. - EQUINOR, before the Norwegian Industrial Property Office, Certificate No. 298813, registered on June 12, 2018, in international classes 4, 40, and 42. - EQUINOR, before the World Intellectual Property Organization – Madrid WIPO, Certificate No. 1444675, registered on July 4, 2018, in international classes 1, 2, 4, 6, 7, 9, 16, 17, 19, 25, 28, 35, 36, 37, 39, 40, 41, and 42. - With designated countries: Algeria, Australia, Azerbaijan, Belarus, Colombia, Egypt, Iceland, India, Indonesia, Iran (Islamic Republic of), Japan, Kazakhstan, Mexico, Mozambique, New Zealand, Republic of Korea, Russian Federation, Singapore, Thailand, Türkiye, and United Kingdom. - EQUINOR, before the United States Patent and Trademark Office, Certificate No. 6436681, registered on August 3, 2021, in international classes 1, 2, 4, 6, 7, 9, 16, 17, 19, 25, 28, 35, 36, 37, 39, 40, 41, and 42. Complainant owns more than 100 domain name registrations throughout the world containing the EQUINOR mark distributed among generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”), included but not limited to: , , , , , , , , , , , , , , and . The disputed domain names resolve to inactive websites. 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 names. Notably, the Complainant contends that the disputed domain names are confusingly similar to the Complainant’s trademark EQUINOR as the disputed domain names incorporates the entire EQUINOR wordmark.
page 3 Respondent has no rights or legitimate interests in the disputed domain names based on Complainant’s prior use of its trademark EQUINOR and company name Equinor. Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use Complainant’s trademark EQUINOR in connection with a website, a domain name or for any other purpose. Respondent is not using the disputed domain names in connection with any legitimate non-commercial or fair use without intent for commercial gain. Respondent is not generally known by the disputed domain names. Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. Respondent knew of Complainant’s trademark to the point of including it in the disputed domain names. The websites to which the disputed domain names resolve are inactive. 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. B. Respondent Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Likewise, paragraph 10(d) of the Rules, provides that “the Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. The Panel wishes to place special emphasis on the evidence filed to prove assertions, which has been thoroughly studied in order to determine its relevance and weight in arriving at a decision. The statements that have been accompanied by evidence have been given more importance than the mere unsubstantiated assertions. Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that the disputed domain name be cancelled or transferred: (1) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (3) the disputed domain name has been registered and is being used in bad faith. This discussion, based on the evidentiary support submitted by the Complainant, noting that the Respondent did not reply to the Complainant’s contentions, will be discussed as follows:
page 4 First of all, the Panel will determine whether or not the disputed domain name is identical or confusingly similar to the trademark in which Complainant has rights. Secondly, the Panel will verify if Respondent has any rights or legitimate interests in respect of the disputed domain name; and thirdly, the Panel will establish whether or not the disputed domain name has been registered and is being used in bad faith by Respondent. A. Identical or Confusingly Similar Complainant contends to be the owner of the trademark EQUINOR in several jurisdictions, since at least 2018 in international classes 1, 2, 4, 6, 7, 9, 16, 17, 19, 25, 28, 35, 36, 37, 39, 40, 41, and 42. a) Existence of a trademark or service mark in which the Complainant has rights Firstly, it is important to point out that Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. When a sign is registered as a trademark, it is surrounded by a presumption of sufficient distinctiveness, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it. In this case, Complainant proved its rights in the trademark EQUINOR as per the Annex F of the Complaint. This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademark and the exclusive right to use them in connection with the stated services. The registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Thus, Complainant established its rights in the trademark EQUINOR. Therefore, the Panel concludes that Complainant has demonstrated rights in the trademark EQUINOR for purposes of Paragraph 4(a)(i) of the Policy. b) Identity or confusing similarity between the disputed domain names and the Complainant’s trademark Complainant alleges that the disputed domain names are identical to the trademark EQUINOR. On the first place, before establishing whether or not the disputed domain names are confusingly similar to Complainant’s trademark EQUINOR, the Panel wants to point out that the addition of a gTLD, i.e., “.vip” or “.online,” as in the case, is generally disregarded when determining if the disputed domain name is identical or confusingly similar to the trademark, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.11. Hence, the inclusion of the gTLD, in the disputed domain names is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. Furthermore, the Panel considers that the reproduction of the trademark EQUINOR, by the disputed domain names, is sufficient ground to establish that the disputed domain names are confusingly similar to the trademark. Especially since the disputed domain names reproduce entirely Complainant’s trademark which is clearly recognizable in the disputed domain names. In consequence, as per this reasoning, the Panel finds that, the disputed domain name is confusingly similar to Complainant’s trademarks and thus, the requirement set forth in Paragraph 4(a)(i) of the Policy is duly complied with.
page 5 B. Rights or Legitimate Interests a) Prima facie case Regarding this second element of Paragraph 4(a) of the Policy, UDRP panels have unanimously found that requiring the Complainant to prove the lack of rights or legitimate interests of the Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the Respondent1. In Julian Barnes v. Old Barn Studios Ltd., WIPO Case No. D2001-0121, the Panel stated that: “Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head”. Therefore, a Complainant is required to make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of production shifts to Respondent, who must come forward with concrete evidence of its rights or legitimate interests2. If Respondent fails to do so, Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy. Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names because of the following: i) Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use Complainant’s trademark EQUINOR in connection with a website, a domain name or for any other purpose, ii) Respondent is not using the disputed domain names in connection with any legitimate noncommercial or fair use without intent for commercial gain, iii) Respondent is not generally known by the disputed domain names, and iv) Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of production to Respondent. b) Respondent’s rights or legitimate interests in the disputed domain names. Paragraph 4(c) of the Policy includes a non-limited listing of circumstances that serve to prove Respondent’s rights or legitimate interests in a disputed domain name: (i) before any notice of the dispute, Respondent’s use 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 1 See Arla Foods amba v. Bel Arbor / Domain Admin, PrivacyProtect.org, WIPO Case No. D2012-0875; see also F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Servs., WIPO Case No. D2012-0474. 2 See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.
page 6 (ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) 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. Respondent did not file any Response, thus, failed to rebut Complainant’s prima facie case, and to show his rights or legitimate interests in the disputed domain names . Hence, as per paragraph 14 of the Rules, the Panel shall draw such inferences therefrom as it considers appropriate: - Respondent’s use of the disputed domain names is not in connection with a bona fide offering of goods or services, because they do not resolve to any active website and thus cannot be said to be put to any use. - There is no evidence within the file proving that Respondent is commonly known by the disputed domain names. - There is no evidence within the file proving that Complainant licensed or otherwise permitted any use by Respondent of its trademarks. - There is no evidence within the file justifying the choice of the trademark EQUINOR to create the disputed domain names for a bona fide purpose. - There is no evidence within the file proving Respondent’s rights over the trademark EQUINOR anywhere in the world. - The disputed domain names are confusingly similar to the trademark EQUINOR. The nature of the disputed domain names creates a risk of implied affiliation or association with the Complainant (section 2.5.1 of the WIPO Overview 3.0). The Panel thus concludes that Respondent lacks rights and legitimate interests in the disputed domain names. Therefore, the second requirement of paragraph 4(a) (ii) of the Policy is met. C. Registered and Used in Bad Faith According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) Circumstances indicating that Respondent has registered or has 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 Respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) 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 Respondent has engaged in a pattern of such conduct; or (iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
page 7 (iv) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location. For the Panel is evident that Respondent knew of the existence and importance of Complainant’s trademark when registering the disputed domain names. It is not a coincidence to include a well-known trademark within a domain name. Thus, the Panel finds Respondent deliberately took someone else’s trademark to register the disputed domain names and to intentionally confuse Internet users as to the Complainant’s association of the disputed domain names. Indeed, Complainant has proven its worldwide rights in the trademark EQUINOR. Moreover, Respondent is not actively using the disputed domain names and appears to have furnished false or incomplete contact information when registering the disputed domain name given the courier’s inability to deliver the Center’s written notice to the “bad address” provided. Thus, it is possible to apply the passive holding doctrine (section 3.3 of the WIPO Overview 3.0), since: (i) the degree of distinctiveness and reputation of Complainant’s trademark is high, (ii) Respondent failed to submit a response or provide any evidence of actual or contemplated good-faith use, (iii) Respondent provided false or incomplete contact information, and (iv) given the above, it is implausibly for Respondent to use the disputed domain names in good faith. Therefore, the three elements of the Policy 4(a)(iii) are satisfied in the present case in respect to Respondent of the disputed domain names. 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 names and be transferred to Complainant. /Fernando Triana Soto/ Fernando Triana Soto Sole Panelist Date: November 1, 2024
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