ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Equinor ASA v. Carolina Rodrigues, Fundacion Comercio Electronico Case No. DCO2022-0089 1. The Parties The Complainant is Equinor ASA, Norway, represented by Valea AB, Sweden. The Respondent is Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar The disputed domain name (the "Disputed Domain Name") is registered with GoDaddy.com, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 18, 2022. On October 19, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 20, 2022, 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 (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 20, 2022, 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 October 21, 2022. 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 25, 2022. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 15, 2022. The Center appointed Lynda M. Braun as the sole panelist in this matter on November 22, 2022. The Panel page 2 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 Formerly known as Statoil ASA, the Complainant is a Norwegian multinational energy company (previously state controlled) with operations in more than 30 countries worldwide, developing oil, gas, wind and solar energy. The Complainant changed its name to Equinor in 2018 to shift its focus from oil and gas to renewable energy sources such as wind and solar power. The new name was adopted by combining the term "equi", representing roots of words such as equity and equitable, and the term "nor", representing and indicating that the company is of Norwegian origin. The Complainant owns hundreds of trademark registrations and pending trademarks in jurisdictions worldwide (hereinafter collectively referred to as the "EQUINOR Mark"). The Complainant is also the owner of more than 100 domain name registrations worldwide incorporating the EQUINOR Mark in generic Top-Level Domains ("gTLDs") and country code Top-Level Domains ("ccTLDs"). The Disputed Domain Name was registered on July 15, 2022, more than four years after the Complainant announced that it was changing its name. The Disputed Domain Name resolved to a pop-up virus page in which the Internet user is asked to call Microsoft support. The Complainant submits that when calling the number provided, an operator requests that the individual download software by providing a code to the individual, allowing the operator to access the computer remotely. Inserting the code is likely to infect the computer with malware. Furthermore, the Respondent activated mail exchanger ("MX") records, which can be used as part of a phishing scheme to impersonate the Complainant, enabling the Respondent to send and receive emails with addresses that use the Disputed Domain Name. 5. Parties' Contentions A. Complainant The following are the Complainant's contentions: - the Disputed Domain Name is confusingly similar to the Complainant's EQUINOR Mark. - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. - the Disputed Domain Name was registered and is being used in bad faith. - the Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant's contentions. page 3 6. Discussion and Findings In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)): (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 was registered and is being used in bad faith. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires a two-fold inquiry: a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the domain name is identical or confusingly similar to that trademark. The Panel concludes that in the present case, the Disputed Domain Name is confusingly similar to the EQUINOR Mark as explained below. It is uncontroverted that the Complainant has established rights in the EQUINOR Mark based on its several years of use as well as its numerous registered and pending trademarks for the EQUINOR Mark in jurisdictions worldwide. The registration of a mark satisfies the requirement of having trademark rights for purposes of standing to file a UDRP case. As stated in section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), "[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case". Thus, the Panel finds that the Complainant satisfied the threshold requirement of having rights in the EQUINOR Mark. The Disputed Domain Name consists of the EQUINOR Mark in its entirety followed by the ending letters "dic", and then followed by ccTLD ".co", the abbreviation for Colombia. Where the trademark is recognizable in the Disputed Domain Name, the addition of letters, such as "dic" or "nor" does not prevent a finding of confusing similarity.1 See WIPO Overview 3.0, section 1.8 ("where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element"). Finally, the addition of a ccTLD, such as .co, in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Colombia Pixabay GmbH v. Privacy Protection / zhang wei, WIPO Case No. DCO2022-0062 and WIPO Overview 3.0, section 1.11.1. Thus, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant's EQUINOR Mark. Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. 1 The addition of the letters "nor" to the latter half of the Disputed Domain Name, and the letters "dic" following the letters "nor" in the Disputed Domain Name combine to create the word "nordic", indicating that the trademark is from Norway. page 4 In this case, given the facts as set out above, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant's prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its EQUINOR Mark. Nor does the Complainant have any type of business relationship with the Respondent. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any similar names, nor any evidence that the Respondent was using or making demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. See Policy, paragraph 4(c). Based on the Respondent's use of the Disputed Domain Name, resolving to a seemingly fraudulent pop-up virus page in which the Internet user is asked to call Microsoft support and the activation of MX records to potentially perpetuate a phishing scheme targeting the Complainant's customers using emails incorporating the Disputed Domain Name does not confer rights or legitimate interests on the Respondent. See WIPO Overview 3.0, section 2.13.1 ("Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent."). Thus, the Panel concludes that nothing on the record before it would support a finding that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. Rather, the Panel finds that the Respondent is using the Disputed Domain Name for commercial gain with the intent to mislead by defrauding the Complainant's customers. Such use cannot conceivably constitute a bona fide offering of a product/service within the meaning of paragraph 4(c)(i) of the Policy. Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith pursuant to paragraph 4(b) of the Policy. First, the registration of a domain name that reproduces a widely-known trademark in its entirety (being identical or confusingly similar to such trademark) by an individual or entity that has no relationship to that mark, without any reasonable explanation on the motives for the registration, can by itself create a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4. Second, the Panel has determined that the activation of MX records for the Disputed Domain Name by the Respondent suggests bad faith because it demonstrates that the Respondent may intend to use the Disputed Domain Name to send emails as part of a fraudulent phishing scheme. See WIPO Overview 3.0, section 3.1.4 ("the use of a domain name for per se illegitimate activity such as [.] phishing [.] is manifestly considered evidence of bad faith"). Finally, the Respondent has been involved in hundreds of other UDRP cases involving cybersquatting, and in which the disputed domain names in those cases were ordered transferred in most cases. Thus, the Panel concludes that the Respondent in this case has engaged in a bad faith pattern of cybersquatting since the Respondent registered hundreds of abusive domain names corresponding to the registered trademarks of third-party brand owners. See WIPO Overview 3.0, section 3.1.2. Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant. page 5 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. /Lynda M. Braun/ Lynda M. Braun Sole Panelist Date: December 6, 2022
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