WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Equinor ASA v. Alexander Feydt
Case No. D2018-2851
1. The Parties
The Complainant is Equinor ASA of Stavaanger, Norway represented by Valea AB, Sweden.
The Respondent is Alexander Feydt of Haulandshella, Norway.
2. The Domain Name and Registrar
The disputed domain name <equinor.international> (the “Domain Name”) is registered with Domeneshop AS dba domainnameshop.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2018. On December 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 14, 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 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2019. The Respondent submitted an email communication to the Center on January 10, 2019.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on January 17, 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
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, among them Norwegian trademark registration No. 298811, filing date March 14, 2018.
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”).
According to the Registrar, the Respondent registered the Domain Name on March 20, 2018. At the time of filing the Complaint, and at the time of drafting the Decision, the Domain Name 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 Name is confusingly similar to Complainant's trademark and company name Equinor. The Domain Name incorporates the entirety of the trademark. The gTLD “.international” is not sufficient to prevent confusing similarity.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Name. 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 Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. In fact, the Domain Name redirects to a website parked by the Registrar.
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 Respondent is based in Norway. The Complainant asserts that email and phone communications with the Respondent further underlines the Respondent’s bad faith. It indicates that the Respondent has registered the Domain Name primarily for the purpose of selling it to the Complainant.
The Respondent did not reply to the Complainant’s contentions by the response due date, but stated in its email communication of January 10, 2019 that the Complainant should pay its registration costs, that the Domain Name was bought in good faith and had not been used.
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 Name. In this case, the Domain Name incorporates the Complainant’s trademark. For the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the gTLD “.international”; 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 Name is identical 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 Name containing the Complainant’s trademark 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 Name 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 Name or a name corresponding to the Domain Name 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 Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Domain Name incorporates the trademark EQUINOR. The Panel finds it undisputable that the Respondent was aware of the Complainant when he registered the Domain Name. The Complainant had filed for trademark registration in Norway a week before the Respondent registered the Domain Name. Even if the Respondent had not been aware of this, the Respondent’s intent in registering the Domain Name is likely to have been to unfairly capitalize on the Complainant’s nascent trademark rights. See WIPO Overview 3.0, section 3.8.
The lack of use by the Respondent of the Domain Name 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 Name may be put. The finding of bad faith is backed by the fact that the Respondent offered the Domain Name for sale to the Complainant by e-mail in October 2018. The Respondent’s email communication of January 10, 2019 does not provide any reasonable explanation for a different conclusion.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is 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 Name, <equinor.international> be transferred to the Complainant.
Date: January 18, 2019