ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Equinor ASA v. Sophia and equinor equinor Case No. DCC2024-0026 1. The Parties The Complainant is Equinor ASA, Norway, represented by Rouse AB (Valea AB trading as Rouse AB), Sweden. The Respondents are Sophia, United States of America; and equinor equinor, Hong Kong, China. 2. The Domain Name and Registrar The disputed domain name is registered with Alibaba.com Singapore E-Commerce Private Limited. The disputed domain name is registered with Gname.com Pte. Ltd. (collectively, the “Registrar”). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 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. On September 26, 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 Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on September 27, 2024 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar, requesting the Complainant to either file separate complaint(s) for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. The Complainant filed an amendment to the Complaint in English on October 1, 2024. On September 27, 2024, the Center informed the Parties in Chinese and English, that the language of the Registration Agreement for the disputed domain name is Chinese. On October 1, 2024, the Complainant requested English to be the language of the proceeding. The Respondents did not submit any comment on the Complainant’s submission.
page 2 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 Respondents in English and Chinese of the Complaint, and the proceedings commenced on October 3, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 23, 2024. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on October 25, 2024. The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on October 30, 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 company, formerly known as Statoil ASA, originally founded in 1972. The Complainant 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 had grown up along with the emergence of the Norwegian oil and gas industry dating back to the late 1960s. Statoil ASA decided to change its name to Equinor in 2018. The name change was announced on March 15, 2018, and the news was shared and commented worldwide on different media platforms. According to the evidence submitted, the Complainant owns multiple registrations for the trademark EQUINOR, including, but not limited to European Union trademark registration No. 017900772, registered on January 18, 2019; International registration No. 1444675, registered on July 4, 2018; and United States of America registration No. 6436681, registered on August 3, 2021. In addition, the Complainant is the owner of 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”), including the domain name which is used to resolve to its official website. The disputed domain name was registered on September 19, 2024, and the disputed domain name was registered on September 18, 2024, and both are therefore of a later date than the abovementioned trademark registrations of the Complainant. At the time of this Decision, the disputed domain names do not resolve to an active website. According to the Complainant’s evidence, previously, the disputed domain names redirected to cryptocurrency-related platforms, clearly and prominently displaying the Complainant’s EQUINOR trademarks at several locations on those 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 name. Notably, the Complainant contends that it is the owner of a number of registered trademarks consisting of EQUINOR and that it has a strong reputation for the products and services under this trademark. The Complainant asserts that the disputed domain names are confusingly similar to the abovementioned trademarks since they each incorporate such trademarks or a misspelled version thereof. The Complainant also argues that the Respondents used the disputed domain names to direct Internet users to cryptocurrency-related platforms where the Complainant’s trademarks were prominently displayed. The Complainant essentially contends that the Respondents have intentionally attracted Internet users for
page 3 commercial gain to the Respondents’ websites, by creating consumer confusion between the websites associated with the disputed domain names and the Complainant’s trademarks. The Complainant adds that the inactivity of the websites linked to the disputed domain names does not prevent a finding of bad faith under the doctrine of “passive holding”. The Complainant alleges that the Respondents have no rights or legitimate interests in the disputed domain names, which, it argues, were registered and are used in bad faith. The Complainant requests the transfer of the disputed domain names. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Preliminary Issues A. Consolidation of the Respondents The Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. The Complainant requests the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules. The disputed domain name registrants did not comment on the Complainant’s request. Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2. As regards common control, the Panel notes that the disputed domain names all target the Complainant’s well-known trademark EQUINOR by using that trademark but replacing the order of some letters and adding in letters or a descriptive term (“-mall”), thereby exposing a pattern; the disputed domain names were registered only one day apart; and the disputed domain names were both used to resolve to the same or very similar cryptocurrency platforms and they both reproduced the Complainant’s EQUINOR trademarks. The Panel finds that those elements, taken together, sufficiently establish common control over the disputed domain names. As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party. Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding. B. Language of the Proceeding The language of the Registration Agreement for the disputed domain name is Chinese. The language of the Registration Agreements for the other disputed domain name is English. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
page 4 The Complaint was filed in English and the Complainant requests that the language of the proceeding be English. The Complainant requested that the language of the proceeding be English for several reasons, including the fact that English was the language of the proceeding for past proceedings against the Respondent; that the registration address for disputed domain name is in the United States of America and for is Hong Kong, China, which are both regions where English is commonly spoken; and that the website content created by the Respondent was also in English and because the translation of the Complaint may result in unnecessary additional expenses for the Complainant which may exceed the total cost of this proceeding and may unnecessarily delay this proceeding. The Respondent did not make any submissions with respect to the language of the proceeding. In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview 3.0, section 4.5.1). Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. 6.2 Discussion and Findings on the Merits 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 3.0, section 1.7. Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel notes that the disputed domain names each incorporate the entire EQUINOR word mark, or an intentional misspelling thereof. Accordingly, the disputed domain names are confusingly similar to the Complainant’s mark for the purposes of the Policy. WIPO Overview 3.0, sections 1.7 and 1.9. Although the addition of other terms here, for instance “-mall”, 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. Based on the available record, 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 disputed domain names. 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 domain names 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.
page 5 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, upon review of the facts and evidence, the Panel notes that the Respondent has not provided any evidence of the use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. Instead, upon review of the facts and the evidence submitted in this proceeding, the Panel notes that the disputed domain names directed to various cryptocurrency-related platforms, clearly and prominently displaying the Complainant’s EQUINOR trademarks at several locations of those websites. The websites also did not display any accurate and prominent disclaimers regarding the lack of relationship between the Complainant and the Respondent. It is clear to the Panel from the foregoing elements that the Respondent could not be considered a good faith provider of goods or services under the disputed domain names, see also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Given the abovementioned elements, the Panel concludes that the Respondent’s use does not constitute a bona fide offering of goods or services, nor a legitimate non-commercial or fair use of the disputed domain names. However, the Panel notes that on the date of this Decision, the disputed domain names direct to inactive webpages. In this regard, the Panel finds that holding domain names passively, without making any use of them, also does not confer any rights or legitimate interests in the disputed domain names on the Respondent in the circumstances of this case (see in this regard earlier UDRP decisions such as Bollore SE v. 赵竹飞 (Zhao Zhu Fei), WIPO Case No. D2020-0691; and Vente-Privee.Com and Vente-Privee.com IP S.à.r.l. v. 崔郡 (jun cui), WIPO Case No. D2021-1685). Based on the available record, the Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith Given the intensive use, fame and distinctiveness of the Complainant’s prior registered trademarks, the Panel finds that the subsequent registration of the disputed domain names, which are confusingly similar to such marks, clearly and consciously targeted the Complainant’s prior registered trademarks. The Panel also notes that these trademarks have been considered well-known by other panels applying the Policy (see for instance Equinor ASA v. Name Redacted, WIPO Case No. D2024-0258). The Panel therefore deducts from the Respondent’s efforts to consciously target the Complainant’s well-known prior trademarks that the Respondent knew of the existence of the Complainant’s trademarks at the time of registering the disputed domain names. This finding is further confirmed by the fact that the disputed domain names all resolved to active websites displaying the Complainant’s EQUINOR trademarks, since this proves that the Respondent was fully aware of the Complainant, its marks and its business. In the Panel’s view, the foregoing elements clearly indicate bad faith on the part of the Respondent, and the Panel therefore finds that it has been demonstrated that the Respondent registered the disputed domain names in bad faith. As to use of the disputed domain names in bad faith, the Complainant provides evidence that the use of the disputed domain names, which were linked to various cryptocurrency-related platforms, clearly and prominently displaying the Complainant’s EQUINOR trademarks at several locations of those websites, showed the Respondent’s clear intent to create a likelihood confusion with the Complainant for commercial gain. The Panel concludes from these facts that the Respondent has intentionally attracted Internet users for commercial gain to such websites, by creating consumer confusion between the websites associated with the disputed domain names and the Complainant’s trademarks. This constitutes direct evidence of the Respondent’s bad faith under paragraph 4(b)(iv) of the Policy. The Panel therefore finds that it has been demonstrated that the Respondent has used, and is using these disputed domain names in bad faith. Moreover, the Panel notes that on the date of this Decision the disputed domain names direct to inactive, error, or blank webpages. 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. Having
page 6 reviewed the available record, the Panel notes the distinctiveness and well-known nature of the Complainant’s trademarks, the composition of the disputed domain names which makes it inconceivable that the Respondent may use them for any future good faith use and finds that in the circumstances of this case the passive holding of these disputed domain names does not prevent a finding of bad faith under the Policy. WIPO Overview 3.0, section 3.3. 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. /Deanna Wong Wai Man/ Deanna Wong Wai Man Sole Panelist Date: November 7, 2024
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