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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Equinor ASA v. WhoisGuard Protected, WhoisGuard, Inc. / Samuel Johnson

Case No. D2020-2456

1. The Parties

The Complainant is Equinor ASA, Norway, represented by Valea AB, Sweden.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Samuel Johnson, Canada.

2. The Domain Name and Registrar

The disputed domain name <equinortradefund.com> 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 22, 2020. On September 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 22, 2020, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on September 23, 2020, 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 amended Complaint on September 23, 2020.

The Center verified that the Complaint, together with the amended 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 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2020.

The Center appointed Rodrigo Azevedo as the sole panelist in this matter on October 22, 2020. 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, whose name changed to Equinor ASA in 2018.

The Complainant is a broad international energy company with operations in numerous countries around the world developing oil, gas, wind, and solar energy.

The trademark EQUINOR was registered by the Complainant in several regions of the world, including in the European Union (such as the registration number 017900772, obtained on January 18, 2019), International Registrations under the Madrid System (such as registration number 1 444 675, obtained on July 4, 2018), in Norway (such as registration number 298639, obtained on June 1, 2018), etc. (Annex F to the Complaint).

The Complainant is also the owner of several domain name registrations throughout the world containing the EQUINOR mark distributed among generic Top-Level Domains (“gTLDs”) and country-code Top Level Domains (“ccTLDs”) (Annex G to the Complaint).

The Respondent registered the disputed domain name <equinortradefund.com> on September 3, 2020.

The Panel accessed the disputed domain name on November 4, 2020, at which time the disputed domain name was not pointing to any active webpage. The Complainant attached to the Complaint screenshots of a website previously published at the disputed domain name containing reproductions of the Complainant’s trademark EQUINOR and the respective logo.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The disputed domain name is confusingly similar to the Complainant’s trademark and company name EQUINOR as the disputed domain name incorporates its entirety, together with the general terms “trade” and “fund”. These generic terms are not sufficient to overcome the confusing similarity with respect to the Complainant’s EQUINOR trademark which remains the dominant and only distinctive element in the disputed domain name. Several WIPO cases have recognized that adding a generic word is insufficient to give any distinctiveness to the disputed domain name. On the contrary, the generic terms “trade” and “funds” can have a significance to the use of the Complainant’s trademark. For example, the term “trade” can refer to the Complainant’s trading with shares or quotas. The gTLD “.com” is not sufficient to prevent the confusing similarity either. Considering the brand awareness of the trademark EQUINOR worldwide, an Internet user would most probably assume a connection with the Complainant and its business when seeking information on a website with the disputed domain name or receiving an email from such domain. The disputed domain name is visually, phonetically and conceptually confusingly similar to the Complainant’s known trademark EQUINOR and to the company name Equinor ASA.

- The Respondent has no rights or legitimate interests in respect of the disputed 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 and company name EQUINOR. The Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the EQUINOR mark in connection with a website 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 disputed domain name redirects to a fraudulent website which is using the Complainant trademark (word and logo) without authorization. It can be therefore concluded that 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 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 is confusingly similar to the Complainant’s trademark and registered company name and that the Respondent was fully aware of the fact that they incorporated well recognized and distinctive trademarks in which the Respondent had absolutely no prior rights. The Respondent could not have chosen or subsequently used the word “Equinor” in the disputed domain name for any reasons other than to take unfair advantage of the reputation of the Complainant’s famous trademark. This is also confirmed by the fact that the EQUINOR logo and a Norwegian address is used by the Respondent under the disputed domain name. The Respondent’s registration and use of the disputed domain name indicates a deliberate attempt to capture Internet users into believing that the Respondent’s website is associated with, authorized by or connected to the Complainant. There is a high risk that fraudulent emails are being distributed from this domain name in the name of the Complainant and elaborated phishing scheme is used to for illegal monetary gain. The website under the disputed domain name creates a false impression that the Internet users are at the genuine website of EQUINOR or its affiliate. Under contact details, a Norwegian address is listed. There is a fake company registration certificate uploaded to the website, which shows a certificate from the Companies House in the United Kingdom but the country is changed to “Norway and Wales”. The website offers Cryptocurrency investments and contains references to Norway, showing that the Respondent’s aim is to illegally obtain sensitive information or even payment from Internet users who believe that the website belongs to or is authorized by the Complainant. Such fraudulent activities pose as a great risk for the Complainant’s reputation and business relations and constitutes a criminal offence. 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

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:

(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.

A. Identical or Confusingly Similar

Annexes E and F to the Complaint shows trademark registrations for EQUINOR obtained by the Complainant as early as in 2018.

The disputed domain name differs from the Complainant’s trademark EQUINOR by the addition of the suffix “tradefund”, as well as the gTLD “.com”.

Previous UDRP decisions have found that the mere addition of descriptive terms to a trademark in a domain name does not avoid a finding of confusing similarity. This has been held in many UDRP cases (see, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc., WIPO Case No. D2000-0927).

It is also already well established that the addition of a gTLD extension such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.

As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:

(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name; or

(iii) the 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 at issue.

Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name.

The Panel also notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the Complainant showed that the disputed domain name was recently used in connection with a website reproducing the Complainant’s trademark and logo, with references to its country of origin (Norway) and offering financial investments for commercial gain.

Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent 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.

When the disputed domain name was registered by the Respondent in 2020, the trademark EQUINOR was already directly connected to the Complainant’s activities in the energy sector.

Besides the gTLD “.com”, the disputed domain name is comprised of the Complainant’s peculiar trademark EQUINOR and of the descriptive term (“tradefund”), suggesting an obvious reference (and likelihood of confusion, as well) to investments supposedly related to the Complainant. Furthermore, the website that was formerly published at the disputed domain name offered cryptocurrency investments under the Complainant EQUINOR trademark and logo.

Therefore, the Panel concludes that it would not be feasible to consider that the Respondent – at the time of the registration of the disputed domain name – could not have been aware of the Complainant’s trademark, as well as that the adoption of the expression “equinortradefund” could be a mere coincidence. Indeed, the previous use of the disputed domain name suggests a clear attempt to attract, for commercial gain, Internet users to the Repondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its investment services.

Currently, there is no active website linked to the disputed domain name, but this is not enough to avoid the Panel’s findings that the disputed domain name is also being used in bad faith.

In the Panel’s view, the circumstances that the Respondent is (a) not presently using the disputed domain name; (b) not indicating any intention to use it; and (c) not at least providing justifications for the registration of a domain name containing a third-party’s trademark, certainly cannot be used in benefit of the Respondent in the present case.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied 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 name <equinortradefund.com> be transferred to the Complainant.

Rodrigo Azevedo
Sole Panelist
Date: November 7, 2020

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