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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Equinor ASA v. WhoisGuard Protected, WhoisGuard, Inc. / Kenneth Svenson

Case No. D2020-3029

1. The Parties

The Complainant is Equinor ASA, Norway, represented by Valea AB, Sweden.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Kenneth Svenson, Austria.

2. The Domain Name and Registrar

The disputed domain name <equinorge.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2020. On November 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 13, 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 November 18, 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 November 19, 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 November 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2020.

The Center appointed Theda König Horowicz as the sole panelist in this matter on December 29, 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 is a Norwegian company active internationally in the field of energy, more specifically in developing oil, gas, wind and solar energy. It was founded under the name Statoil ASA in the 1960’s, business name which was changed in Equinor in 2018.

At the same time, the trademark EQUINOR was registered by the Complainant in Norway and in other countries, including but not limited to the following:

EQUINOR, European Union, Registration No. 017900772, registered on January 18, 2019, in International classes 1, 2, 4, 6, 7, 9, 16, 17, 19, 25, 28, 35-37, 39-42.

Furthermore, the Complainant is the owner of many domain names containing the EQUINOR mark such as <equinor.com> which is linked to the Complainant’s official website.

The disputed domain name was registered by on October 4, 2020 through a privacy service and redirects to “www.equinor.com”, the Complainant’s official website.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is confusingly similar to the Complainant’s trademark and company name EQUINOR as it incorporates EQUINOR in its entirety. The Complainant underlines that “norge” which can be read in the disputed domain name means “Norway” in the Norwegian, Swedish and Danish languages, bearing in mind that Norway is the Complainant’s home country. Furthermore, the suffix “ge” is generic. The Complainant also insists on the widespread reputation of the Complainant’s name and business.

The Complainant further alleges that the Respondent has no rights to or legitimate interests in respect of the disputed domain name: (i) the Respondent is not affiliated or related to the Complainant in any way, (ii) the Respondent has no license or is not authorized to use the EQUINOR mark in connection with a website or for any other purpose, (iii) the Respondent is not using the disputed domain name in connection with any legitimate noncommercial or fair use without intent for commercial gain and (iv) the Respondent is not generally known by the disputed domain name and has not acquired any trademark or service mark rights in that name or mark. Finally, the Complainant underlines that the disputed domain name redirects to the Complainant’s corporate website without authorization.

The Complainant also alleges that the Respondent has intentionally registered and is using the disputed domain name in bad faith. In particular, the Respondent was aware of the Complainant’s well recognized mark when registering the disputed domain name. Furthermore, the Respondent used the trademark EQUINOR in the disputed domain name in order to take unfair advantage of the reputation of the Complainant’s famous mark, by making Internet users believe that the website linked to the disputed domain name is associated with the Complainant. There is actually a high risk that fraudulent emails be sent from the disputed domain name as the MX records are active, particularly since the disputed domain name is linked to the Complainant’s official website. Finally, the use of a privacy service is a further indication of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in 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 showed that it has trademark rights in EQUINOR through several registrations designating many countries notably within the European Union. Accordingly, the Panel finds that the Complainant has demonstrated its rights in the EQUINOR mark.

According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. 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 disputed domain name contains EQUINOR in its entirety. The disputed domain name differs from the Complainant’s trademark only by the addition of the suffix “ge”. The mere addition of this suffix does not prevent confusing similarity. The Panel further notes that the term “norge” in the disputed domain name could refer to the Complainant’s home country, Norway.

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 purpose of comparison under the first element.

Under these circumstances, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:

(i) the use of the domain name in connection with a bona fide offering of goods or services;

(ii) being commonly known by the domain name; or

(iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.

Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. See WIPO Overview 3.0, section 2.1.

The Complainant makes several statements showing that it never allowed the Respondent to use the trademark EQUINOR by any means whatsoever and that the Respondent would not have any rights in the name EQUINOR or would be known by it.

Based on the above, the Panel considers that the Complainant has made a prima facie case and the burden of production shifts to the Respondent.

The Respondent has chosen not to reply. The Panel also notes that the disputed domain name is linked without authorization to the Complainant’s official website. There is no evidence that such association between the disputed domain name and the official website of the Complainant would be fair in all of the circumstances of the case. The Panel notes the composition of the disputed domain name along with the redirection to the Complainant’s official website, and finds that there is a risk of misrepresentation which leads the Panel conclude that the Respondent, who remained silent within these proceedings, lacks rights or legitimate interests.

Consequently, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has shown that its EQUINOR trademarks are registered and are used particularly within the European Union.

It is obvious that the Respondent knew about the Complainant’s trademark and deliberately registered the confusingly similar disputed domain name since the disputed domain name is linked to the Complainant’s official website.

The circumstances of this case, in particular the fact that the Respondent targeted the Complainant’s EQUINOR trademark and business, by making this link is an indication of bad faith. Furthermore, the very slight difference between the disputed domain name and the Complainant’s trademark in addition to the fact that the disputed domain name is linked to the Complainant’s official website is a further indication of bad faith.

In addition, the Panel notes that the Respondent also registered the disputed domain name via a proxy service.

Under these circumstances, the Panel accepts the Complainant’s allegation according to which a risk exists that the disputed domain name may be used fraudulently by the Respondent who remained silent in these proceedings.

In light of the above, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith and that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.

7. Decision

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 <equinorge.com> be transferred to the Complainant.

Theda König Horowicz
Sole Panelist
Date: January 19, 2020

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