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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Equinor ASA v. Mali Niwa

Case No. D2021-0100

1. The Parties

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

The Respondent is Mali Niwa, United States of America.

2. The Domain Name and Registrar

The disputed domain name <mailequinor.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2021. On January 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 14, 2021, 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 January 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2021.

The Center appointed Vincent Denoyelle as the sole panelist in this matter on February 22, 2021. 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

Given that no Response was filed, the following facts are based on the submissions in the Complaint and the Annexes to the Complaint.

The Complainant is a company in the energy sector headquartered in Norway.

The Complainant is the owner of several trade marks for EQUINOR including the following:

- International trademark EQUINOR Registration No. 1444675 registered on July 4, 2018.

The Complainant is also the owner of many domain names reflecting its trade mark including <equinor.com>.

The Domain Name was registered on January 7, 2021. The Domain Name resolves to a parking page with pay-per-click links.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the EQUINOR trade mark in which the Complainant has rights. The Complainant contends that the mere addition in the Domain Name of the generic term “mail” to the Complainant’s EQUINOR trade mark is not sufficient to overcome the confusing similarity with the Complainant’s EQUINOR trade mark which, according to the Complainant, remains the dominant and only distinctive element in the Domain Name. The Complainant also highlights that the addition of the generic Top-Level Domain (“gTLD”) “.com” should be disregarded for the purpose of assessing confusing similarity.

The Complainant asserts that the Respondent has no rights to or legitimate interests in respect of the Domain Name. The Complainant declares that the Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorised to use the EQUINOR trade mark in connection with a website or for any other purpose. The Complainant also contends that the Respondent is not using the Domain Name in connection with any legitimate noncommercial or fair use without intent for commercial gain and that the Respondent is not generally known by the Domain Name and has not acquired any trade mark or service mark rights in that name or mark.

The Complainant contends that the Respondent registered the Domain Name with the aim of taking advantage of the reputation of the trade mark EQUINOR of the Complainant and thus in bad faith. The Complainant asserts that the use of the Domain Name for email services and to resolve to a parked page can support a finding of bad faith given the high degree of distinctiveness and reputation of the Complainant’s trade mark. The Complainant argues that users receiving an email from an address under the Domain Name will be more likely to be deceived into believing that it comes from the Complainant. The Complainant believes that as the MX records for the Domain Name are active, there is a high risk that fraudulent emails could be sent using the Domain Name. The Complainant thus considers that the Domain Name has been registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

In order to prevail the Complainant must substantiate that the three elements of paragraph 4(a) of the Policy have been met, namely:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent 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 case of default by a party, as is the case here, paragraph 14(b) of the Rules makes it clear that if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

In the absence of a Response from the Respondent whereby the Respondent did not object to any of the contentions from the Complainant, the Panel will have to base its decision on the basis of the Complaint and supporting Annexes.

A. Identical or Confusingly Similar

In light of the evidence provided by the Complainant, the Panel is satisfied that the Complainant has substantiated that it holds valid trade mark rights in EQUINOR.

The second point that has to be considered is whether the Domain Name is identical or confusingly similar to the trade mark EQUINOR in which the Complainant has rights.

Given that the Domain Name incorporates the EQUINOR trade mark in its entirety with the mere addition of the term “mail”, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trade mark. Not only is the term “mail” a dictionary term which also corresponds to one of the most widely used features of the Internet and a very commonly used term in public and private namespaces. The addition of the term “mail” to the EQUINOR trade mark in the Domain Name cannot prevent a finding of confusing similarity between the Complainant’s trade mark and the Domain Name.

Then there is the addition of the gTLD “.com”. As is widely accepted, the addition of a gTLD such as “.com” is merely a technical registration requirement and as such is typically disregarded under the first element confusing similarity test.

Thus, the Panel finds that the Domain Name is confusingly similar to a trade mark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out relevant circumstances that could demonstrate that a respondent has rights or legitimate interests in a domain name, namely:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to [the respondent] of the dispute, [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; or

(ii) [the respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [the respondent] ha[s] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”

Numerous previous panels have found under the UDRP that once a complainant makes a prima facie showing that the respondent does not have rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the showing by providing evidence of its rights or legitimate interests in the domain name.

Having reviewed the Complainant’s assertions and evidence, the Panel is satisfied that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the Domain Name.

The Complainant has stated that there is no business or legal relationship between the Complainant and the Respondent and that it has not authorized the Respondent to make any use of its trade mark. There is no evidence that the Respondent is commonly known by the Domain Name especially given that the Respondent chose not to respond.

The Domain Name is currently used to direct to a parked page which seems to include pay-per-click (“PPC”) links. The Domain Name consists of the trade mark EQUINOR with the added term “mail”. Noting the composition of the Domain Name, its use for PPC links cannot give rise to rights or legitimate interests under the UDRP. See section 2.9 of WIPO Overview 3.0. Given the overall circumstances of the case, including the goodwill of the Complainant’s trade mark, the Panel concludes that the use of the Domain Name to resolve to a parked page cannot be seen as a legitimate noncommercial or fair use of the Domain Name nor can it be seen as a bona fide offering of goods or services. In addition, the Panel notes that the composition of the Domain Name carries a risk of implied affiliation. See section 2.5.1 of WIPO Overview 3.0.

Thus, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a number of relevant non-exhaustive circumstances, which can be deemed to constitute evidence of registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that [the respondent has] registered or acquired [a disputed] 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] 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 trade mark 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 [the respondent’s] website or other on-line 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.

Given the circumstances described in the Complaint and the documentary evidence provided by the Complainant, the Panel finds that the Domain Name was registered in bad faith.

The Domain Name is confusingly similar to the trade mark EQUINOR of the Complainant and this cannot be a coincidence.

The trade mark EQUINOR of the Complainant is not a descriptive or common term and its protection as a trade mark in a number of jurisdictions significantly predates the registration of the Domain Name by the Respondent. The fact that the Respondent chose to register the Domain Name incorporating the exact trade mark of the Complainant with the mere addition of one of the most widely used terms on the Internet (i.e. “mail”) leads the Panel to find it inconceivable that the Respondent would not have been well aware of the Complainant and its trade mark at the time of registration of the Domain Name. The Panel finds that when registering the Domain Name, the Respondent had the Complainant’s trade mark in mind and targeted it specifically.

Thus, the Panel finds that the Domain Name was registered in bad faith.

As for use of the Domain Name in bad faith, given the circumstances described in the Complaint, the documentary evidence provided by the Complainant and the brief verification carried out by the Panel of the website associated with the Domain Name, the Panel is satisfied that the Domain Name is being used in bad faith.

The Domain Name is currently used to direct to a parked page which seems to include PPC links. The links in question are completely unrelated to the Domain Name and give no credible explanation as to why the Respondent could possibly be justified in associating the Complainant’s trade mark with the links on the website to which the Domain Name points. Given the overall circumstances and in the absence of a response from the Respondent the Panel finds that the current use of the Domain Name to point to a parked page constitutes use of the Domain Name in bad faith. The Panel finds that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product on the Respondent’s website.

In addition, the DNS setup of the Domain Name (with active MX records), along with the composition of the Domain Name, lead the Panel to consider that the Domain Name is most likely intended to be used to send emails which is consistent with the prefix “mail” contained in the Domain Name before the EQUINOR trade mark of the Complainant. Given the visibility and goodwill of the EQUINOR trade mark of the Complainant and the use of the term “mail” in the Domain Name, without any explanation for the active MX records, the Panel considers that there is a high risk that the Domain Name could be used to deceive Internet users. In these circumstances, the Domain Name constitutes a potential threat hanging over the head of the Complainant.

The fact that the Respondent chose not to object to the Complainant’s assertions can only reinforce the Panel’s view that the Domain Name is being used in bad faith.

Finally, this is further supported by the fact that the Respondent deliberately chose to conceal its identity by means of a privacy protection service, which, in the circumstances, is an additional indication of the Respondent’s bad faith and its intent to use the Domain Name in a way which may be abusive or otherwise detrimental to the Complainant and its rights.

Thus, the Panel finds that the Domain Name is being used in bad faith.

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 Domain Name <mailequinor.com> be transferred to the Complainant.

Vincent Denoyelle
Sole Panelist
Date: March 8, 2021

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