ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Equinor ASA v. Taylor Eq Case No. D2024-4506 1. The Parties The Complainant is Equinor ASA, Norway, represented by Rouse AB (Valea AB trading as Rouse AB), Sweden. The Respondent is Taylor Eq, United States of America (“USA”). 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 November 1, 2024. On November 1, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 2, 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 sent an email communication to the Complainant on November 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 November 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”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 7, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2024.
page 2 The Center appointed Tobias Malte Müller as the sole panelist in this matter on December 17, 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 It results from the Complainant’s undisputed explanations that it is a Norwegian corporation, operating as Statoil ASA until 2018 and currently with operations in more than 30 countries developing oil, gas, wind, and solar energy. It is listed at the New York Stock Exchange under the abbreviation “EQNR”. The Complainant is the registered owner of a large international trademark portfolio containing or consisting of the term “EQUINOR”, such as, - European Union trademark registration No. 017900772 EQUINOR (verbal) registered on January 18, 2019 for goods and services in classes 1, 2, 4, 6, 7, 9, 16, 17, 19, 25, 28, 35, 36, 37, 39, 40, 41, and 42; - United States of America trademark registration No. 6436681 EQUINOR (verbal) registered on August 3, 2021 for goods and services in classes 1, 2, 4, 6, 7, 9, 16, 17, 19, 25, 28, 35, 36, 37, 39, 40, 41, and 42. The registrar verification confirmed that both disputed domain names have been registered by the Respondent, respectively on July 29, 2024, and on October 4, 2024. The disputed domain names resolve to websites appearing to contain identical content and graphics and allegedly offering investments via cryptocurrencies in Portuguese language. These websites introduce a company “EQNR” who allegedly runs the websites by showing an image of the Complainant’s original office building, where the EQUINOR trademark is prominently displayed on the front. 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: (1) The disputed domain names are confusingly similar to the Complainant’s trademark EQUINOR as “EQNR” is an official abbreviation of the Complainant’s trademark and company name; (2) The Respondent is not affiliated with or related to the Complainant in any way, or 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 names in connection with any legitimate noncommercial or fair use without intent for commercial gain, and is not generally known by the disputed domain names; (3) The Respondent intentionally targeted the Complainant’s EQUINOR trademark and business when registering the disputed domain names with the intention of making a profit by exploiting domain names that are similar to the EQUINOR trademark. B. Respondent The Respondent did not reply to the Complainant’s contentions.
page 3 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 and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that each disputed domain name be transferred or cancelled: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (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. The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. 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 names. 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 its trademark EQUINOR for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the mark EQUINOR is recognizable within the two disputed domain names by the overlapping letters “EQNR”. It is true that the three vowels “--UI-O-” are missing in the disputed domain names. However, the Panel is of the opinion that the disputed domain names contain 4 out of the 7 letters in the mark and therefore sufficiently recognizable aspects of the relevant mark. The mark EQUINOR is all the more recognizable by its abbreviation “EQNR” since the latter is the Complainant’s official name at the New York Stock Exchange in the USA, where the Respondent is located. Therefore, the Panel is of the opinion that the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms here, “app” and “global” separated from the further element “EQNR” by a hyphen, 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 names 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
page 4 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 names. 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 names such as those enumerated in the Policy or otherwise. Moreover, the Panel notes that the disputed domain names contain the abbreviation of the Complainant’s registered trademark, being the Complainant’s official name at the New York Stock Exchange in the USA, and a term either with an inherent Internet connotation (“-app”) or a geographic term (“-global”). Consequently, the composition of the disputed domain names carries a risk of implied affiliation: in fact, certain geographic terms, or terms with an “inherent Internet connotation” are seen as tending to suggest sponsorship or endorsement by the trademark owner. See WIPO Overview 3.0, section 2.5.1. 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. One of these circumstances is that the Respondent, by using the disputed domain names, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy). In the present case, the Panel notes that it results from the Complainant’s documented allegations that the disputed domain names resolve to websites appearing to contain identical content and graphics and allegedly offering investments via cryptocurrencies in Portuguese language. These websites introduce a company “EQNR” who allegedly runs the websites and shows an image of the Complainant’s original office building, where the EQUINOR trademark is prominently displayed on the front. For the Panel, it is therefore evident that the Respondent positively knew the Complainant’s trademark. Consequently, and in the absence of any evidence to the contrary, the Panel is convinced that the Respondent also knew that the disputed domain names included the Complainant’s trademark when it registered the disputed domain names. In this regard, the further circumstances surrounding the disputed domain names’ registration and use confirm the findings that the Respondent has registered and is using the disputed domain names in bad faith: (i) the nature of the disputed domain names incorporating the Complainant’s official abbreviation at the New York Stock exchange plus the addition of descriptive terms with an “inherent Internet connotation” or geographic term; (ii) the content of the websites to which the disputed domain names direct, displaying the Complainant’s headquarter building and trademark and purportedly offering investments under the Complainant’s trademark; (iii) a clear absence of rights or legitimate interests coupled with no response for the Respondent’s choice of the disputed domain names; and
page 5 (iv) the fact that the details disclosed of the Respondent by the Registrar are incomplete, noting the courier’s inability to deliver the Center’s Written Notice. 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 names and be transferred to the Complainant. /Tobias Malte Müller/ Tobias Malte Müller Sole Panelist Date: December 31, 2024
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