WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Equinor ASA v. Ove Aspen
Case No. D2018-2418
1. The Parties
The Complainant is Equinor ASA of Stravanger, Norway, represented by Valea AB, Sweden.
The Respondent is Ove Aspen of Fevik, Norway.
2. The Domain Names and Registrar
The disputed domain names <equinoroilandenergies.com>, <equinoroilandenergies.info> <equinoroilandenergies.net>, <equinoroilandenergy.com>, <equinoroilandenergy.info> <equinoroilandenergy.net>, <equinorojaspenoil.com> and <equinorventure.biz> (the “Domain Names”) are 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 24, 2018. On October 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 25, 2018, 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 verified that 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 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 23, 2018.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on December 6, 2018. 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
Equinor ASA is a Norwegian corporation, formerly known as Statoil ASA. Equinor ASA is an international energy company with operations in more than 30 countries around the world developing oil, gas, wind and solar energy. Statoil has grown 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.
Statoil ASA decided to change its name to Equinor in 2018. The name change was announced on March 15, 2018. It was widely published. In parallel to the name change, Equinor trademark applications have been filed worldwide, many of which have already been registered.
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”). These domain names are actively used as the official company website and they provide extensive information on the Complainant and its activities.
According to the Registrar, the Domain Name registrations were created on March 15 and 17, 2018. At the time of filing the Complaint, and at the time of drafting the Decision, the Domain Names resolved to the Registrar’s parking page.
5. Parties’ Contentions
The Complainant provides evidence of trademark registrations. The Complainant argues that the Complainant’s trademark is well known. The Domain Names are confusingly similar to Complainant's trademark and company name Equinor. The Domain Names incorporate the entirety of the trademark and company name Equinor followed by suffixes comprising of different key words referencing the business of the Complainant. The addition of a generic term is not sufficient to avoid a finding of confusing similarity.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Complainant asserts that the Respondent is not affiliated with the Complainant or with any of its subsidiaries in any manner, nor is the Respondent an authorized distributor or reseller of the Complainant’s products. The Respondent has not been granted any license to use the EQUINOR trademark nor was the Respondent otherwise authorized by the Complainant to use the trademark for any purpose. There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services. In fact, it seems that the Domain Names resolve to the Registrar’s parking page where they are offered for sale. The parking page includes advertising links.
The Complainant believes it is evident that the Respondent was aware of the fact that it incorporated a recognized and distinctive trademark. It is even more evident since the additional suffixes are all related to the core business of the Complainant and the new ventures announced in relation to its name change. All the Domain Names were registered within a few days from the announcement of the name change. A bad faith registration followed by a passive holding, where there is no way in which a domain name could be used legitimately, amount to use in bad faith. The Complainant asserts that the fact that the Respondent has registered 8 domain names on the following days of the Complainant's name change, is an aggravating factor and a clear attempt to "comer the market" in domain names that reflect the trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark EQUINOR.
The test for confusing similarity involves the comparison between the trademark and the Domain Names. In this case, the Domain Names incorporate in its entirety the Complainant’s trademark. The addition of the descriptive terms all relating to the Complainant’s business does not avoid a finding of confusing similarity. For the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the gTLDs “.com”, “.biz”, “.info”, and “.net”; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The Panel finds that the Domain Names are confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register the Domain Names containing the Complainant’s trademarks or otherwise make use of its marks. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. There is no evidence that the Respondent has registered the Domain Names as a trademark or acquired common law or unregistered trademark rights. There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services.
The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Domain Names incorporate the trademark EQUINOR. The Panel finds it undisputable that the Respondent was aware of the Complainant when it registered the Domain Names. This is backed by the fact that the additional suffixes are all related to the business of the Complainant, and all Domain Names were registered within few days from the announcement of the name change. The Panel finds that the facts of this case establish that the Respondent’s intent in registering the Domain Names was to unfairly capitalize on the Complainant’s nascent trademark rights. See WIPO Overview 3.0, section 3.2.8.
The lack of use by the Respondent of the Domain Names does not prevent a finding of bad faith under the doctrine of passive holding; see WIPO Overview 3.0, section 3.3. The Complainant’s trademark is well known. The Respondent has not provided any evidence of actual or contemplated good faith use. Finally, taking into account the Complainant’s trademark and the other circumstances of the case, the Panel finds it implausible that there could be any good faith use to which the Domain Names may be put.
For the reasons set out above, the Panel concludes that the Domain Names were registered and are being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <equinoroilandenergies.com>, <equinoroilandenergies.info>, <equinoroilandenergies.net>, <equinoroilandenergy.com>, <equinoroilandenergy.info>, <equinoroilandenergy.net>, <equinorojaspenoil.com> and <equinorventure.biz> be transferred to the Complainant.
Date: December 7, 2018