ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Equinor ASA v. Owens Lauretta Case No. D2024-3926 1. The Parties The Complainant is Equinor ASA, Norway, represented by Rouse AB, Sweden. The Respondent is Owens Lauretta, United States of America (“United States”). 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 September 25, 2024. On September 25, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. 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, privacy service provided by Withheld for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 3, 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 the same day. 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 October 9, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 29, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 31, 2024.
page 2 The Center appointed Ian Blackshaw as the sole panelist in this matter on November 5, 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 a Norwegian corporation, formerly known as Statoil ASA, and an international energy company, with operations in more than 30 countries around the world, developing oil, gas, wind and solar energy. Statoil ASA grew up along with the emergence of the Norwegian oil and gas industry, dating back to the late 1960s. It was founded as The Norwegian State Oil Company (Statoil) in 1972, and the Norwegian State holds 67% of the shares. By virtue of the Complainant's long use and the renown of the Statoil name, according to the Complaint, the reputation associated with the STATOIL trademark is excellent by virtue of the quality of the Complainant's goods and services and the trademark is considered a well-known trademark within its field of business. Statoil decided to change its name to Equinor in 2018. The name change was announced on March 15, 2018, and the news were shared and commented on worldwide on different media platforms. Some examples of these reports have been provided to the Panel. Behind the name change stands the development in the energy sector, the shifting focus from oil and gas to renewable energy sources, such as wind and solar power. A copy of the online announcement has also been provided to the Panel. The EQUINOR trademark inherited the famous status of the STATOIL trademark and became known to everyone who knew Statoil before, due to the widely published name change. In parallel with the official name change, an IP portfolio has been created. The EQUINOR trademark applications have been filed worldwide. A list of the numerous trademark applications/registrations worldwide for the EQUINOR trademark and copies of the registration certificates have been provided to the Panel. Amongst others, the Complainant owns the European Union Trade Mark registration numbered 017900772, for EQUINOR, registered on January 18, 2019, and the United States trademark registration numbered 6,436,681, registered on August 03, 2021. Furthermore, the Complainant is the owner of more than 100 domain name registrations throughout the world containing the EQUINOR trademark distributed among generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”). A list of the domain name registrations containing the EQUINOR trademark owned by the Complainant, or its subsidiaries, has, again, been provided to the Panel. The disputed domain name was registered on September 24, 2024, and, at the time of filing of the Complaint, resolved to a landing page hosting pay-per-click (“PPC”) links. 5. Parties’ Contentions A. Complainant The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant makes the following assertions:
page 3 The disputed domain name and the EQUINOR trademark coincide in the string of letters “E-Q-U-I-N-O-R-[*]-[*]-[*]-[*]-[*]-[*]-[*]”. The initial part of the disputed domain name is identical to the EQUINOR trademark, creating a significant risk of confusion. The Complainant also notes that the disputed domain name contains the additional word “service”. The word “service” is considered as a generic English term which, when combined with the word “Equinor”, could easily be interpreted as a website related to the Complainant, specifically concerning its service offerings. This does not alter the perception of the disputed domain name, apart from the ending word “service”, being identical to the EQUINOR trademark and, therefore, causing a risk of confusion. In addition, the word “Equinor” is the most distinctive element of the disputed domain name, whereas the word “service” does not prevent a finding of confusingly similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. Moreover, the Complainant believes that a holistic approach is needed when assessing the similarity between the disputed domain name and the EQUINOR trademark. By using a side-by-side comparison of the disputed domain name and the textual components of the trademark, the trademark is clearly recognizable within the disputed domain name. In addition, according to the WIPO Overview 3.0, section 1.7 “[...] where a domain name incorporates the entirety of a trademark, [...], the domain name will normally be considered confusingly similar [...]”. When reading the disputed domain name as a whole, it enables the assumption that the Respondent targeted the Complainant’s trademark, when registering the disputed domain name, as a fraudulent attempt to mislead Internet users into believing that the disputed domain name is administered by or affiliated with the Complainant. The gTLD “.com” is not sufficient to prevent the confusing similarity or identity. As stated in section 1.11.1 of the WIPO Overview 3.0, “[t]he applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “. club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” Bearing in mind, in particular, the following factors, (a) the widespread reputation and high degree of recognition of the Complainant’s EQUINOR trademark, especially in the energy sector, and (b) the lack of distinguishing factors between the disputed domain name and the Complainant’s EQUINOR trademark, the disputed domain name should be considered as confusingly similar, if not to say identical, to the EQUINOR trademark, in which the Complainant has rights. The Respondent has no rights or legitimate interests in respect of the domain name. 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. The Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the Complainant’s EQUINOR trademark 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 neither using the disputed domain name in connection with a bona fide offering of goods or services.
page 4 It can, therefore, be concluded that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The domain name was registered and is being used in bad faith. 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 has no prior rights. The disputed domain name was registered on September 24, 2024. Given the long use of the name EQUINOR across the world and trademark registrations predating the registration of the disputed domain name, the Complainant finds that the Respondent has registered the disputed domain name in bad faith. The disputed domain name is connected to active content consisting of a website displaying PPC links, as evidenced to the Panel. The links refer to various services and products, such as food delivery and Wi-Fi. The Respondent has thus registered the disputed domain name with the intention of profiting from these links by exploiting a domain name that is identical to the EQUINOR trademark. The Complainant believes that Internet users are likely to be misled regarding the content available through these links and may mistakenly assume that the subject website is affiliated with the Complainant. Furthermore, the Complainant cannot be certain whether malicious content may be concealed behind these links once they have been clicked on. From the Complainant’s point of view, there is a grave risk that Internet users, expecting to visit the Complainant’s legitimate website, will end up clicking on the disputed domain name with the risk of damaging their device or sharing their data. As the overall Internet user is not familiar on making assessments as presented above, when it comes to entering a domain name hoping to find information about the Complainant, this is causing a grave risk of damage targeting Internet users as well as the Complainant. As the mail exchange (“MX”) records are active for the disputed domain name, evidence, again, provided to the Panel, the Complainant finds it very likely that Internet users finding the website described above, or receiving an email from an email address connected to the disputed domain name, is likely to believe that this email has been sent from the Complainant. The Complainant is a legal entity and not every email receiver may pay attention to the Complainant’s Norwegian legal company name. Further, it cannot be assumed that Internet users are paying attention to the entire disputed domain name. It is also noted that most of the Respondent’s contact information is not publicly available as it is redacted for privacy. 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. See WIPO Overview 3.0, Section 3.6. Due to the above, the Respondent has intentionally attempted to attract Internet traffic, for commercial gain by creating a likelihood of confusion with the Complainant’s EQUINOR trademark. Subsequently, it must be established that the Respondent has registered the disputed domain name in bad faith, given the registration on September 24, 2024, as the Complainant has a prior right to the trademark EQUINOR, and that the Respondent is using the disputed domain name in bad faith. B. Respondent The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in these proceedings.
page 5 6. Discussion and Findings To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely: (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. In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and under paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate. In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence. In previous UDRP decisions in which the respondents failed to file a response, the panels’ decisions were based upon the complainants’ reasonable assertions and evidence, as well as inferences drawn from the respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936. Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140. In the present case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true. A. Identical or Confusingly Similar It is well established in previous UDRP decisions that, where the complainant’s registered trademark is recognizable within the disputed domain name, the disputed domain name is considered identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. In the present case, the disputed domain name incorporates in its entirety the Complainant’s EQUINOR trademark, and this makes the disputed domain name confusingly similar to the well-known and widely used Complainant’s EQUINOR trademarks. The addition of the word “service” in the disputed domain name does not prevent a finding of confusing similarity between the Complainant’s trademarks and the disputed domain name. See WIPO Overview 3.0, section 1.8. In view of the above, the Panel finds that the disputed domain name is identical or confusingly similar to the well-known and widely used Complainant’s EQUINOR trademarks, in which the Complainant has demonstrated, to the satisfaction of the Panel, rights in.
page 6 The first element of the Policy, therefore, has been met. B. Rights or Legitimate Interests In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances, in particular, but without limitation: - whether there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute; - whether the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; - whether the Respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done so, by not replying to the Complaint or taking any part in these proceedings. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110. There is also no evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the well-known and widely used Complainant’s EQUINOR trademarks. In fact, in the view of the Panel, the adoption by the Respondent of a domain name identical or confusingly similar to the well-known and widely used Complainant’s EQUINOR trademarks, which the Panel considers and agrees with the Complainant’s assertions would appear not to be by mere chance but by design, inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its goods and services. In fact, in the view of the Panel, the use of the descriptive word “service” adds to the confusion of Internet users seeking information about the Complainant and its goods and services. Further, the Panel finds that the Respondent is consequently trading unfairly on the well-known and widely used Complainant’s EQUINOR trademarks and also the valuable goodwill that the Complainant has established in them through the Complainant’s prior commercial use, without any rights or justification for doing so. Also, the Panel finds no evidence that the Respondent has used or undertaken any demonstrable preparations to use the disputed domain name in connection with any bona fide offering of goods or services. Therefore, for all the above reasons, and those advanced above by the Complainant, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which constitute prima facie evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.
page 7 Based on the evidence provided on the record, the Panel considers that the Respondent, by registering a disputed domain name confusingly similar to the well-known and widely used Complainant’s EQUINOR trademarks, has acted in bad faith. Also, the effect of such conduct on the part of the Respondent is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by, or affiliated with the Complainant and its services; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the evidence provided on the record, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649. Further, the failure of the Respondent to provide accurate contact details when registering the disputed domain name, is also, in the view of the Panel, to be regarded as an indication of bad faith on the part of the Respondent under the circumstances of this case. See WIPO Overview 3.0, Section 3.6. Also, the content of the Respondent’s website, a PPC page as described above by the Complainant, is, in the view of the Panel, a further indication of bad faith on the part of the Respondent. Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel and under the circumstances of this case, is another indication of bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787. Therefore, taking all these particular facts and circumstances into account, and for all the above-mentioned reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith. 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. /Ian Blackshaw/ Ian Blackshaw Sole Panelist Date: November 11, 2024
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