WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Equinor ASA v. Fred Wallace
Case No. D2019-0720
1. The Parties
The Complainant is Equinor ASA, Norway, represented by Valea AB, Sweden.
The Respondent is Fred Wallace, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <equinorbid.com> is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2019. On March 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 1, 2019, 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. On the same date, the Center sent an email to the Parties in English and Russian regarding the language of the proceedings. On April 2, 2019, the Complainant requested English to be the language of the proceedings.
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 May 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2019.
The Center appointed Taras Kyslyy as the sole panelist in this matter on May 27, 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 Norway based international energy company with operations in about 30 countries around the world developing oil, gas, wind and solar energy. The Complainant was founded in 1972 and changed its name to Equinor ASA as announced on March 15, 2018. The Complainant owns a number of EQUINOR trademarks including European Union Trademark No. 017900772 filed on May 15, 2018 and registered on January 18, 2019.
The Complainant owns about 100 domain names containing the EQUINOR mark.
The disputed domain name was registered on December 20, 2018 and resolves into inactive website.
5. Parties’ Contentions
The disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark. Adding a descriptive term “bid” to the disputed domain name does not preclude similarity. The generic Top-Level Domain (“gTLD”) “.com” is not sufficient to prevent the 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.
The Respondent has no rights or legitimate interests in the disputed domain name. This is based on the Complainant’s prior use of its trademark and company name Equinor. The Respondent is not affiliated or related to the Complainant, or licensed or otherwise authorized to use the Complainant’s trademark. The disputed domain name is not used with any legitimate noncommercial or fair use intent. The Respondent is not 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 was registered and is being used in bad faith. The Respondent was aware of the Complainant’s trademark when registering the disputed domain name. The Respondent’s registration and use of the disputed domain name incorporating the Complainant’s trademark indicate a deliberate attempt to capture Internet users into believing that this site is in some way associated with, authorized by or connected to the Complainant, especially the Complainant’s procurement process. The disputed domain name was registered to take unfair advantage of the reputation of the Complainant’s famous trademark. In December 2018 the Complainant filed a complaint against the same Respondent regarding <equinorbids.com>, which resulted in transfer of the domain name to the Complainant. Therefore, registration of the disputed domain name is a part of a flagrant pattern of conduct. In the previous UDRP case the Respondent distributed fraudulent emails. Since MX-records are set up for the disputed domain name there is a high risk that fraudulent emails are sent again in the name of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of Proceedings
The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.
However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334).
In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties.
The Complainant has submitted a request that the language of the proceedings be English. The Complainant contends that the Respondent must be familiar with the English language since (i) the Respondent is located in the United Kingdom, where the main language is English, (ii) the Respondent previously communicated with the Complainant in English, (iii) the previous UDRP procedures against the same Respondent were in English.
The Panel further notes that no objection was made by the Respondent to the proceeding being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement. This was despite the Center notifying the Respondent in Russian and English that the Respondent is invited to present its objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known its preference but did not do so.
The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian.
Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.
B. Identical or Confusingly Similar
The gTLD “.com” in the disputed domain name is viewed as a standard registration requirement and may be disregarded for the purposes of the confusing similarity test (see, e.g., Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).
According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing.
According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.
In the present case the disputed domain name incorporates the Complainant’s trademark. Addition of generic term “bid” and the gTLD “.com” does not preclude confusing similarity of the disputed domain name and the Complainant’s trademark.
Considering the above the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. Therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.
Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name.
The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).
The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875).
The Respondent has no rights or legitimate interests in the disputed domain name resolving to an inactive website (see, e.g., Philip Morris USA Inc. v. Daniele Tornatore, WIPO Case No. D2016-1302).
Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
At the time of the registration of the disputed domain name, on December 20, 2018, the Respondent knew, about the existence of the Complainant’s trademark, as a complaint was filed on December 14, 2018 in the <equinorbids.com> case which confirms the bad faith in registering the disputed domain name (see, e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
According to section 3.3 of the WIPO Overview 3.0 from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. In this regard the Panel takes into account (i) the high degree of distinctiveness and reputation of the Complainant’s trademark, (ii) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the Respondent’s concealing its identity while registering the disputed domain name, and (iv) the implausibility of any good faith use to which the disputed domain name may be put.
Considering the above, the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under 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 disputed domain name <equinorbid.com> be transferred to the Complainant.
Date: June 12, 2019