WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Equinor ASA v. Daniel Kiss
Case No. D2018-2831
1. The Parties
The Complainant is Equinor ASA of Stavanger, Norway, represented by Valea AB, Sweden.
The Respondent is Daniel Kiss of Stavanger, Norway.
2. The Domain Names and Registrar
The disputed domain names <equinorethics.com>, <equinorethicshelpline.com>, and <equinorhelpline.com> are registered with Domeneshop AS (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2018. On December 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 12, 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 December 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2019. The Response was filed with the Center on January 16, 2019. On January 18, 2019, the Complainant sent to the Center a reply to the Response.
The Center appointed Antony Gold as the sole panelist in this matter on January 22, 2019. 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. It was founded as the Norwegian State Oil Company in 1972 and, until March 2018, traded as STATOIL. It is an international energy company with operations around the world developing oil, gas, wind, and solar energy.
The Complainant changed its trading name to “EQUINOR” in March 2018. News of the name change was widely publicized.
The Complainant owns numerous registered trade marks for EQUINOR including, by way of example only, Norwegian Trade Mark No. 298813 for EQUINOR (word only), registered on June 12, 2018 in classes 4, 40, and 42. It owns many domain names which incorporate its EQUINOR trade mark including <equinor.com> and <equinor.no>. The Complainant also operates a website entitled “Equinor Ethics Helpline”. Prior to its name-change, the Complainant had owned and used the domain names <statoilhelpline.com>, <statoilethicshelpline.com>, and <statoilhydrohelpline.com>, which resolved to websites which were used to enforce the Complainant’s compliance policy and ethical code, as well as providing a submission portal for ethical concerns.
The disputed domain names were registered on September 2, 2018. None of the disputed domain names resolves to an active website.
On October 16, 2018, the Complainant’s representative wrote to the Respondent seeking a transfer to the Complainant of the disputed domain names and asking it to clarify any prior rights it may have regarding them. The Respondent’s response, dated October 29, 2018, asserted that “None of the domains were registered in or are being used in bad faith nor do I see how these registrations would infringe upon or otherwise violate your client’s rights. I would be willing to consider a sale if your client wishes to claim ownership of these domains in an amicable manner”. The Complainant’s advisor responded to this email, drawing attention to the Complainant’s trade mark rights. This resulted in a further email from the Respondent complaining about the Complainant’s approach, referring to his previous offer to sell the disputed domain names and adding that “I’m perfectly happy keeping the domains or even consider other bids”.
5. Parties’ Contentions
The Complainant says that the disputed domain names are confusingly similar to a trade mark in which it has rights. The generic Top Level Domain (“gTLD”) “.com” is disregarded for the purpose of considering confusing similarity. Each of the disputed domain names comprises the entirety of the Complainant’s EQUINOR trade mark and couples it with generic terms, namely “ethics”, “helpline”, and “ethicshelpline”. These terms do not overcome the confusing similarity between the Complainant’s EQUINOR trade mark and the disputed domain names as the mark remains the dominant and only distinctive element in the disputed domain names; see, for example, UniCredit S.p.A v. Syed Hussain / IBN7 Media Group, WIPO Case No. D2017-1020. Furthermore, these generic terms are themselves used by the Complainant on the website which hosts its “Equinor Ethics Helpline”.
The Complainant says that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not affiliated or related to the Complainant in any way, nor is he licensed or otherwise authorized to use its EQUINOR mark in connection with a website, 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, is not generally known by the disputed domain names and has not acquired any trade mark or service mark rights in the EQUINOR name or mark.
Lastly, the Complainant says that the disputed domain names were registered and are being used in bad faith. The Respondent chose to register disputed domain names that were confusingly similar to the Complainant’s trade mark. The launch of the Complainant’s new name was reported extensively in the news media, the Complainant’s EQUINOR trade mark has become well-known and the Respondent was fully aware of the fact that the disputed domain names incorporated a well-recognized and distinctive trade mark in which he had no prior rights. The Respondent is domiciled in Norway, in the same city in which the Complainant is based, and would have been aware of the change in the Complainant’s name. The only reason that the Respondent can have chosen to use the word “equinor” in the disputed domain names was in order to take unfair advantage of the Complainant’s trade mark by misleading Internet users into believing that the disputed domain names were in some way authorized by, or connected to, the Complainant. Moreover, the Respondent chose the terms “ethics” and “helpline” since these terms are used by the Complainant in conjunction in connection with the compliance and enforcement of, its ethical codes. The expression “ethics helpline” is well known among the Complainant’s employees and the choice of disputed domain names was a deliberate attempt by the Respondent to take unfair advantage of the Complainant’s trade mark by causing confusion among the Complainant’s employees.
Furthermore, the Respondent, in response to the Complainant’s cease and desist letter, made clear that he would sell the disputed domain names to the Complainant and even envisaged selling them to third parties. This indicates that the Respondent has registered the disputed domain names for the purpose of selling, renting or otherwise transferring the disputed domain names to the Complainant for valuable consideration in excess of his documented out-of-pocket costs directly related to the disputed domain names.
In summary, in the light of the Respondent’s likely knowledge of the Complainant’s rights, the distinctiveness and fame of the Complainant’s mark, the Respondent’s offer to sell the disputed domain names to the Complainant or alternatively to a third party and the failure of the Respondent to present a credible evidence-backed rationale for registering the disputed domain names, the Respondent has registered and is using the disputed domain names in bad faith.
The Respondent says that he is a keen computer gamer and, as part of his activities in this field, was a member of an network of chat servers which used the name “Quakenet”. One of the Respondent’s co-operators used the nickname “Equinox”. This was adopted as a clan name but was changed at some point to “Equinor”, as the “nor” component of this name better represented the Norwegian origin of the Respondent and his friends. “Equinor” was commonly abbreviated to “EQ” or “EQR”. The Respondent and his colleagues have apparently used this name since the 1990s.
In February 2018, prior to the Complainant’s name change to EQUINOR, the Respondent began to participate in a game called “Fortnite”. The Respondent says his activities in this game are evidenced by a screenshot showing his scores in the game, which records his gaming name as “EQR Noodlez”.
Because the gaming community is rapidly growing but has many fans who are young and often insecure, there is scope for online abuse of them by other players. As a result, the Respondent and a number of his co-gamers decided to set up a website to which those in the online gaming community who feel victimized by online bullying could turn for online help. The Respondent registered the disputed domain names in good faith, almost six months after the Complainant’s name change to EQUINOR, and in the belief that, whatever business-critical or important domain names the Complainant needed would have been registered by then. If the disputed domain names were important, the Respondent asks: why had the Complainant not registered them? The disputed domain names were free for anyone to register and the Respondent has equal right to them.
The Respondent does not intend to attract any Internet traffic intended for the Complainant and claims to be willing to post a disclaimer on his upcoming website that can clear up any potential misunderstandings about affiliations.
It is true that the Respondent had offered to sell the disputed domain names to the Complainant, although it should be noted that this was in response to an approach made to him by the Complainant’s advisors. A sale was not his preferred option but was offered as a compromise as the Respondent could fall back on other, albeit less memorable, domain names. Had the Complainant been less aggressive in its approach, not least in failing to offer to cover the registration costs of the disputed domain names, the Respondent says he believes that this matter would have been capable of resolution.
The Complainant’s assertion that it will suffer irreparable harm if the disputed domain names are not transferred is untrue, as all work on the Respondent’s project has been halted and the disputed domain names have never resolved to websites containing content.
The Respondent is not trying to harm, benefit from, or in any other way profit from, the likeness in the Parties’ names or to violate the Complainant or affect its reputation.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Complainant shall prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain names are identical or confusingly similar to a trade mark 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 names; and
(iii) the disputed domain name have been registered and are being used in bad faith.
A. The supplemental filing by the Complainant
The Complainant sent the Center a short additional reply to the Respondent’s Response on January 18, 2019. Whilst, in certain circumstances, a panel may request and consider a supplemental filing by a party (see paragraph 12 of the Rules), section 4.6 of the WIPO Overview 3.0 explains that; “Unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel”. The Complainant’s reply consists primarily of matters of argument and, whilst the Complainant could not have anticipated the issues raised by the Respondent in his Response, the reply does not introduce any new factual evidence and the Panel need not take its contents into consideration.
B. Identical or Confusingly Similar
The disputed domain names incorporate the Complainant’s registered trade marks for EQUINOR in full and without alteration. The gTLD “.com” is disregarded as it is a technical requirement of registration. The additional words “ethics”, “helpline”, and “ethicshelpline” do not serve to prevent the disputed domain names from being considered confusingly similar for the purpose of this element of the Policy. As explained at section 1.7 of the WIPO Overview 3.0; “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
The Panel therefore finds that the disputed domain names are confusingly similar to a trade mark or service mark in which the Complainant has rights.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out, without limitation, circumstances by which a respondent might show that it has rights or legitimate interests in a domain name, namely;
(i) before any notice to it of the dispute, it had used or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) it had been commonly known by the domain name, even if it had acquired no trade mark or service mark rights; or
(iii) it was making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Section 2.2 of the WIPO Overview 3.0 provides examples of activities which might constitute a bona fide offering of goods and services. It explains that a respondent would not only need to provide “clear contemporaneous evidence of bona fide pre-complaint preparations” but also evidence “generally pointing to a lack of indicia of cybersquatting intent”. Accordingly, the applicability of paragraph 4(c)(i) of the Policy depends primarily on whether the evidence and submissions made by the Respondent support his assertion that he has used, or having made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods and services.
The documentary evidence relied on by the Respondent amounts to the following. First, a computer file named “Equinox-log” dated July 2003. Second, a screen-print of press cutting from a Norwegian periodical, dating from about 1995, which references an entity called “Equinox”. Third, a screen print from a computer game which shows the initials “EQR” in use, seemingly to designate some of the game players. Fourth, a score sheet which references a games player called “EQR_Noodlez” and two other documents which, the Respondent says, are related in some way to the score sheet. Fifth, an article about the Canadian singer Drake, and other celebrities, playing “Fortnite”.
In assessing whether the Respondent has had a genuine intention to establish a bona fide website or websites, the Panel has regard to the following:
First, the Respondent has not offered any explanation as to: (1) why it was necessary to register all three disputed domain names to set up a single website allegedly intended to curb online abuse; (2) why the terms “ethics”, “helpline”, or “ethics helpline” were considered appropriate components of the disputed domain names intended to resolve to an anti-bullying website as opposed to choosing a domain name which specifically referenced anti-bullying; (3) why it was necessary or appropriate to use “equinor” as a component of the disputed domain names, as this is (on the Respondent’s case) simply the name for a clan which “still exists in a small and casual form”; (4) why no efforts were made by the Respondent to establish the website to which one or more of the disputed domain names was intended to resolve in the period between the registration of the disputed domain names on September 2, 2018 and receipt of the claim letter from the Complainant’s advisors on October 16, 2018.
Second, the Respondent has not adduced any evidence at all to show that he has ever been known by the name EQUINOR; the documentary evidence provided, such as it is, references only the names “Equinox” and “EQR”.
Third, the bald assertion by the Respondent that he intended to establish an anti-bullying website for gamers is unsupported by any evidence at all. There is therefore no “clear contemporaneous evidence of bona fide pre-complaint preparations”.
Fourth, if the Respondent had had a bona fide reason for having registered the disputed domain names, it is highly improbable that this would not have been set out in a response to the letter sent to him by the Complainant’s representatives on October 16, 2018, which specifically asked the Respondent to “clarify any prior rights you may have in these domain names”. In fact, the Respondent’s reply to the communications sent to him by the Complainant’s representatives made no reference to the claimed justification for registering the disputed domain names, as articulated in his Response, but simply denied bad faith and offered to sell the disputed domain names to the Complainant.
Fifth, the overall plausibility of the Respondent’s account needs to be set against the backdrop of him residing in the same city as the Complainant’s head office, having registered the disputed domain names within a few months after the Complainant had effected a widely publicized name change of its brand from STATOIL to EQUINOR and the Respondent having acknowledged that he was aware of the name change.
The Panel is faced with the alternative explanations of the Respondent having been on the cusp of using the disputed domain names to resolve to a website or websites intended to offer help to vulnerable gamers or the Respondent having registered the disputed domain names in order to take advantage in some way of the Complainant’s change of brand to EQUINOR. In the light of the factors outlined above, the Panel concludes, by a decisive margin, that the second explanation is the more likely and that paragraph 4(c)(i) of the Policy is inapplicable.
Paragraph 4(c)(ii) is also inapplicable; as is evident from the summary of the Respondent’s evidence set out above, he has not established that he has been commonly known by any of the domain names or as “Equinor”. Similarly, it follows from the findings above as to the Respondent’s motives and intent that paragraph 4(c)(iii) of the Policy is also inapplicable.
The Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
D. Registered and Used in Bad Faith
The Respondent argues that because, as at September 2, 2018, the disputed domain names had not been registered by the Complainant, they were free for anyone to register and the Respondent has equal right to them. This argument does not accurately reflect the provisions of paragraph (a) of the Policy, summarized above, which set out the criteria a complainant needs to establish in order to succeed in its claim.
Paragraph 4(b) of the Policy sets out four circumstances, without limitation, which, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out at paragraph 4(b)(i) of the Policy is, in summary, if a respondent has acquired a domain name primarily for the purpose of selling, renting, or otherwise transferring it to the complainant, who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name.
WIPO Overview 3.0 explains at section 3.1.1 that “[c]ircumstances indicating that a domain name was registered for the bad-faith purpose of selling it to a trade mark owner can be highly fact-specific; the nature of the domain name (e.g., whether a typo of a famous mark, a domain name wholly incorporating the relevant mark plus a geographic term or one related to the complainant’s area of commercial activity, or a pure dictionary term) and the distinctiveness of trade mark at issue, among other factors, are relevant to this inquiry”. The Complainant’s EQUINOR mark is distinctive and the disputed domain names simply couple this mark with words, which, the Complainant has established, it previously used in domain names when trading as STATOIL, in order to enforce its compliance policy and ethical code.
Among the further circumstances listed at section 3.1.1 which might indicate that a respondent’s intent in registering the disputed domain name was to profit in some fashion or otherwise exploit the complainant’s trade mark, are the respondent’s likely knowledge of the complainant’s rights, threats to “sell to the highest bidder” or otherwise transfer the domain name to a third party, and the failure of the respondent to present a credible evidence-backed rationale for registering the domain name. For the reasons outlined above, each of these circumstances is applicable to the Respondent’s registration of the disputed domain names.
The fact that the Respondent did not first approach the Complainant to sell the disputed domain names is irrelevant in circumstances where he could reasonably have anticipated that the Complainant would approach him once it became aware of his registration of them; see, for example, Compagnie Générale des Etablissements Michelin v. Cameron Jackson, WIPO Case No. D2016-2392. Similarly, the fact that the Respondent has not made any actual use of the disputed domain names is not in itself a bar to a finding of bad faith registration and use and this is not an uncommon scenario under in decisions of panels which consider the application of s4(b)(i) of the Policy; see, for example, Statoil ASA (“Statoil”) v. Cameron Jackson, WIPO Case No. D2015-2226 where the domain names in issue were also not being used and the panel commented: “The disputed domain names are being used in to extort additional payments from the Complainant. In these circumstances, the passive holding of domain names in connection with offers to sell constitutes evidence of bath faith registration and use”. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel accordingly finds that the disputed domain names have both been registered and are being used in bad faith.
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 <equinorethics.com>, <equinorethicshelpline.com>, and <equinorhelpline.com> be transferred to the Complainant.
Date: February 5, 2019