WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Equinor ASA v. Contact Privacy Inc. Customer 1246599399 / Tiffany Mosel
Case No. D2020-0547
1. The Parties
The Complainant is Equinor ASA, Norway, represented by Valea AB, Sweden.
The Respondent is Contact Privacy Inc. Customer 1246599399, Canada / Tiffany Mosel, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <equlnor.com> is registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2020. On March 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 12, 2020 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 13, 2020.
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 the Respondent of the Complaint, and the proceedings commenced on March 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 6, 2020.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on April 9, 2020. 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 states that it is a broad international energy company with operations in more than 30 countries around the world developing oil, gas, wind and solar energy. It was founded as The Norwegian State Oil Company (Statoil) in 1972 and until 2018 was known as Statoil ASA. The Complainant states that as a result of its long use of the Statoil name, it built up a considerable reputation in the STATOIL trademark in its field of business.
The Complainant states that due to the shifting focus from oil and gas to renewable energy sources such as wind and solar power, it decided to change its name to Equinor in 2018 to reflect its growth into a broad energy company. The name change was announced on March 15, 2018 and the Complainant states that the announcement was shared and commented on worldwide on various media platforms.
The Complainant states that its EQUINOR trademark inherited the famous status of the STATOIL trademark and became known to everyone who knew the Statoil name prior to the name change.
The Complainant states that it has filed trademark applications for its EQUINOR mark worldwide and has achieved registration in a number of countries, including but not limited to the following:
Date of Registration
January 18, 2019
1, 2, 4, 6, 7, 9, 16, 17, 19, 25, 28, 35, 36, 37, 39, 40, 41, 42
1 444 675
January 17, 2019
1, 2, 4, 6, 7, 9, 16, 17, 19, 25, 28, 35, 36, 37, 39, 40, 41, 42
These are collectively referred to as the “EQUINOR Mark”.
The Complainant states that it also owns more than 100 domain name registrations throughout the world containing the EQUINOR Mark. These include, but are not limited to, <equinor.info>, <equinor.org>, <equinor.support>, <equinorenergy.com>, <equinorenergy.net>, <equinorenergyventures.com>, <enquinorstatoil.com>, <equinortechnologyinvest.com>, <equinortechnologyventures.com> and <statoilequinor.com>.
The Respondent registered the disputed domain name <equlnor.com> on March 3, 2020, and appears to have used it for a phishing scheme (Annexures H and I to the Complaint).
5. Parties’ Contentions
The Complainant asserts its rights in the EQUINOR Mark. The Complainant contends that the disputed domain name is confusingly similar to its EQUINOR Mark due to the only minor misspelling of the word “Equinor” by changing “i” to “l”. It also contends that the generic Top-Level Domain (“gTLD”) “.com” is not sufficient to prevent a finding of confusing similarity.
The Complainant also contends that the Respondent has no rights in respect of the disputed domain name; the Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of the EQUINOR Mark. Further, there is no evidence that the Respondent has been commonly known by the disputed domain name.
The Complainant also contends that the Respondent has no legitimate interests in respect of the disputed domain name. The Complainant contends that the Respondent is using the disputed domain name to send fraudulent emails for illegal monetary gain.
Finally, the Complainant contends that the disputed domain name was registered in bad faith and in full knowledge of the Complainant’s rights. The Complainant also complains that the Respondent has used the disputed domain name in several email addresses which mimic the Complainant’s different offices and departments as part of an elaborate phishing scheme to illegally obtain sensitive information or payment. The Complainant therefore contends that the Respondent is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:
(i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of its registrations and applications in relation to the EQUINOR Mark in numerous jurisdictions worldwide. It has also provided a list (Annex G of the Complaint) of its numerous domain name registrations incorporating the EQUINOR Mark. Accordingly, it is the Panel’s view that the Complainant has clearly and sufficiently demonstrated its rights in the EQUINOR Mark. The Panel is also satisfied that the Complainant is well-known by its EQUINOR Mark as a broad international energy company.
The Panel accepts that the disputed domain name is a misspelling of the Complainant’s EQUINOR Mark by the replacement of “i” with “l”. In this respect, the Panel accepts that a spelling mistake of this nature could easily be made by Internet users when typing the term “equinor” due to the close proximity of “i” and “l” on a computer keyboard. It also accepts that both “i” and “l” look similar when the “i” is in uppercase and therefore could easily be mistaken for one another. See Amazon.com, Inc., v. Steven Newman a/k/a Jill Wasserstein A/k/a Pluto Newman, WIPO Case No. D2006-0517 (“Significantly, all of the substituted letters are proximately located to the original letters on a standard “qwerty” keyboard, and the domain names are predictable miss-typings of the Complainant’s mark”) and ZipRecruiter Inc. v. Lynda Drysdale, WIPO Case No. D2019-3068.
The Panel also notes that it is well-established that the addition of the generic Top-Level Domain (“gTLD”) “.com” may be disregarded for the purposes of comparisons under the first element.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s EQUINOR Mark.
Therefore, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any one of the following elements:
(i) before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.
The Complainant has stated, and the Panel accepts, that it has not authorized the Respondent to use its EQUINOR Mark as “equlnor” and the Respondent is not a licensee of the Complainant.
The Complainant has also stated, and the Panel also accepts, that the Respondent is not known and has never been known as “equinor” or “equlnor”.
In respect of the above, the Panel is entitled to have regard to the lack of any substantive response from the Respondent and the absence of any claim to rights in the disputed domain name.
The Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name and accordingly finds paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.
C. Registered and Used in Bad Faith
The Panel is satisfied that the disputed domain name has been registered in bad faith for the following reasons:
(i) The Panel is satisfied that the Complainant’s EQUINOR Mark is well-known in its industry. The Panel is also satisfied that the Respondent was, and is, aware of the Complainant and its EQUINOR Mark. This is evidenced by the facts that (a) the disputed domain name is a misspelling of the Complainant’s distinctive mark and (b) that the Respondent has created several email addresses using the disputed domain name which copy existing addresses of the Complainant.
(ii) The Respondent has not responded to the Complaint and so has not provided any explanation as to why it should be allowed to register a domain name containing a misspelling of the Complainant’s EQUINOR Mark. By adopting a domain name that is a deliberate misspelling of the Complainant’s EQUINOR Mark (and with no rights or legitimate interests in that Mark), the Panel accepts that the Respondent has deliberately registered a confusingly similar domain name to the Complainant’s Mark intending to mislead or deceive Internet users.
The Panel is also satisfied that the disputed domain name has been used in bad faith for the following reasons:
(i) Section 2.13.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that use of a domain name incorporating a trademark by an unauthorized third party for illegitimate activities such as the furtherance of phishing scams is manifestly considered evidence of bad faith.
(ii) In the present case, the Complainant has provided evidence (attached as Annexures H and I to the Complaint), of fraudulent emails sent by the Respondent to a supplier of the Complainant in Singapore. The Complainant has stated, and the Panel accepts, that the purpose of these fraudulent emails was to illegally obtain sensitive information or payment of fake invoices from those to whom the fraudulent emails were sent. The Panel also accepts that the actions of the Respondent pose a significant risk to the Complainant’s reputation and business relations.
(iii) The Panel considers that the Respondent’s actions are manifestly evidence of use in bad faith. Several UDRP decisions have found accordingly in similar circumstances. See, for example, BHP Billiton Innovation Pty Ltd. v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364 (“[T]he use of an email address associated with the disputed domain name, to send a phishing email for the purposes of dishonest activity is in itself evidence that the disputed domain name was registered and is being used in bad faith.”); Datamatics Global Services Limited, CIGNEX Datamatics Technologies Limited v. Registration Private, Domains By Proxy, LLC / Avinash Gupta, WIPO Case No. D2017-2595 (“The use of a disputed domain name in a ‘phishing’ scheme is in itself evidence that the disputed domain name was registered and is being used in bad faith.”); The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883 / Lauren Terrado, WIPO Case No. D2012-2093 (“Use of a disputed domain name for the purpose of defrauding Internet users by the operation of a ‘phishing’ website is perhaps the clearest evidence of registration and use of a domain name in bad faith.”); and Halifax plc v. Sontaja Sunducl, WIPO Case No. D2004-0237 (“In particular, the availability of the online registration pages, and the apparent potential for ‘phishing’ and obtaining information by deception, is not just evidence of bad faith but possibly suggestive of criminal activity.”).
Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant.
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 <equlnor.com> be transferred to the Complainant.
Andrew Brown Q.C.
Date: April 23, 2020