WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Equinor ASA v. Domain Administrator, See PrivacyGuardian.org / Fred Wallace
Case No. D2018-2858
1. The Parties
Complainant is Equinor ASA of Stravanger, Norway, represented by Valea AB, Sweden.
Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America (“United States”) / Fred Wallace of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
2. The Domain Name and Registrar
The disputed domain name <equinorbids.com> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2018. On December 14, 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 disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 18, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 19, 2019.
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 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. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 11, 2019. The Center received email communications from Respondent on January 16 and 17, 2019, and February 1 and 5, 2019. A possible settlement email was sent by the Center on January 16, 2019 after Respondent stated the desire to settle the dispute. No request to suspend the proceedings was submitted.
The Center appointed Gregor Vos as the sole panelist in this matter on February 11, 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
Complainant is a Norwegian corporation, formerly known as Statoil ASA. Complainant is an energy company with operations in more than 30 countries around the world developing oil, gas, wind and solar energy.
Statoil ASA has changed its name to Equinor in 2018. The name change was announced on March 15, 2018.
Complainant is the owner of numerous registrations throughout the world for the trademark EQUINOR including (the “Trademarks”):
- European Union Trademark Registration, No. 017900772 for EQUINOR (word mark), registered on January 18, 2018;
- Norwegian Trademark Registration, No. 298813 for EQUINOR (word mark), registered on June 12, 2018;
The Domain Name was registered on November 13, 2018. The Domain Name redirects to a domain name owned by Complainant, <equinor.com>.
5. Parties’ Contentions
Complainant asserts that the Domain Name is confusingly similar to the Trademarks, as the Domain Name consist merely of the Trademarks and the generic term “bids”. According to Complainant, the generic term “bids” would not be sufficient to overcome the confusing similarity with the Trademarks. This term is generally used in the energy sector when referring to projects, tenders or supplier contracts.
Furthermore, Complainant asserts that Respondent has no rights to or legitimate interests in respect of the Domain Name. Complainant states that Respondent is not affiliated or related to Complainant in any way, nor would Respondent be licensed or otherwise authorized to use the Trademarks in connection with a website or for any purpose. Complainant further states that Respondent would not be using the Domain Name in connection with any legitimate non-commercial or fair use without intent for commercial gain, would not be generally known by the Domain Name and has not acquired any trademark or service mark rights in that name.
Finally, Complainant asserts that the Domain Name has been registered and used in bad faith. According to Complainant, registration and use of bad faith is evidenced by the fact that Respondent has knowingly chosen and subsequently used a Domain Name incorporating a sign, which is confusingly similar to a well-known trademark. Respondent would have no other reason than to take unfair advantage of the reputation of the well-known Trademarks and to create confusion among Internet users. Furthermore, Complainant states that Respondent has used the Domain Name to distribute fraudulent emails in which Respondent pretends to be the “Tender Board Committee” of Complainant.
Respondent did not substantively reply to Complainant’s contentions but offered to transfer the Domain Name for a compensation after the response due date.
6. Discussion and Findings
Based on paragraph 4(a) of the UDRP, a request to transfer a domain name must meet three cumulative conditions:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the registrant of the domain name has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In the administrative proceedings, Complainant must prove that each of these three elements is present.
Only if all three elements are fulfilled can the Panel grant the remedy requested by Complainant.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the UDRP requires two elements to be proved. A disputed domain name should be (i) identical or confusingly similar to a trademark or service mark, (ii) in which a complainant has rights.
With respect to having rights pursuant to paragraph 4(a)(i) of the UDRP, it is noted that Complainant is registered as the owner of the Trademarks, as can be seen from the submitted copies of the registrations of the Trademarks. Consequently, the Panel finds that Complainant has proven that it has rights in the Trademarks.
With regard to the assessment of identity or confusing similarity of the Domain Name with the Trademarks, it is generally accepted that this test involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
For the purpose of assessing confusing similarity under the Policy, the generic Top-Level Domain (“gTLD”) suffix (in the present case“.com”) is generally ignored in the comparison between the disputed domain name and a complainant’s trademark (see Bialetti Industrie S.p.A. v. Onno Brantjes, Stichting Taxaceae, WIPO Case No. D2016-1450; Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206; Zions Bancorporation v. Mohammed Akik Miah, WIPO Case No. D2014-0269). This case does not contain any indications to the contrary.
The Domain Name incorporates the Trademarks entirely. Additionally, the Domain Name contains the term “bids”. However, a minor variation, such as adding a generic term to a trademark, usually does not prevent a finding of confusing similarity (see section 1.8 of WIPO Overview 3.0). Here, the Panel finds that the addition of the term “bids” to the Trademarks in the Domain Name is not sufficient to avoid a finding of confusing similarity. The Trademarks are still recognizable within the Domain Name (see National Westminster Bank plc v. Steve Mart, WIPO Case No. D2012-1711; Tommy Bahama Group, Inc. v. Berno Group International, WIPO Case No. D2012-0531; National Association of Realtors v. Hammerberg & Associates, Inc., WIPO Case No. D2012-0075; Space Needle LLC v. Erik Olson, WIPO Case No. D2011-0931; Oakley, Inc. v. Kate Elsberry, Elsberry Castro, WIPO Case No. D2009-1286). Therefore, the Panel finds that the Domain Name is confusingly similar to the Trademarks.
Consequently, the Panel finds that the requirement under paragraph 4(a)(i) of the UDRP has been fulfilled.
B. Rights or Legitimate Interests
In order to fulfil the requirement of paragraph 4(a)(ii) of the UDRP, a complainant has to prove that the respondent lacks rights or legitimate interests in the disputed domain name. As this may result in the often impossible task of “proving a negative”, a complainant bears the burden of prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name. If a complainant succeeds in making its prima facie case, the burden of production shifts to the respondent, which will then have to come forward with appropriate allegations or evidence demonstrating a right or legitimate interest in the disputed domain name (see section 2.1 of the WIPO Overview 3.0).
In the present matter, Complainant argues that Respondent is not affiliated with Complainant, nor has it ever been authorized by Complainant to use or register the Trademarks, or seek registration of any domain name incorporating the Trademarks. Complainant also submits that Respondent is not commonly known by the Domain Name or the Trademarks. In addition, Complainant argues that Respondent has not made a legitimate non commercial or fair use of the Domain Name.
Based on the above, the Panel finds that Complainant has sufficiently set out its prima facie case. The burden of production therefore shifts to Respondent.
As Respondent has not replied to Complainant’s allegations, the Panel finds that the requirement under paragraph 4(a)(ii) of the UDRP is fulfilled.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the UDRP, the circumstances in paragraph 4(b) of the UDRP, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the respondent has registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
In this matter, the Panel finds that the situations under (i) and (iv) apply. It is clear from the case file that Respondent has registered and used the Domain Name for the purpose of creating confusion with Complainant for commercial gain. Respondent has registered the Domain name after Complainant publically announced that it would change its name to Equinor. Subsequently, Respondent has used the Domain Name to send fraudulent emails in which Respondent impersonated the “Tender Board Committee” of Complainant.
Additionally, following the notification of the Complaint, Respondent offered Complainant to transfer the Domain Name for the sum of USD 1000. Complainant has asserted that the offer is further evidence of bad faith.
Consequently, the Panel finds that Respondent has registered and used the Domain Name in bad faith.
Therefore, the Panel finds that the requirement under paragraph 4(a)(iii) of the UDRP is fulfilled.
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 <equinorbids.com> be transferred to Complainant.
Date: February 25, 2019