WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Equinor ASA v. WhoisGuard Protected, WhoisGuard, Inc. / Wec Manz / Wec Mzun
Case No. D2021-0448
1. The Parties
Complainant is Equinor ASA, Norway, represented by Valea AB, Sweden.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Wec Manz, United States of America (“United States”) / Wec Mzun, United States.
2. The Domain Names and Registrar
The disputed domain names <corporate-equinor-engineers.com>, <energy-equinor-engineers.com>, <engineers-corporate-equinor.com>, <engineers-equinor-corporate.com> and <equinor-corporate-engineers.com> (namely “the Domain Names”) are registered with NameCheap, Inc.
3. Procedural History
The Complaint related to the domain name <corporate-equinor-engineers.com> was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2021. On February 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 22, 2021, 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.
On February 23, 2021, Complainant filed a request for Consolidation of cases with four other dispute domain names, indicating the reason of Consolidation. On February 24, 2021, the Center transmitted by email to the Registrar the new request for registrar verification in connection with the additional disputed domain names. On February 24, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to Complainant on March 8, 2021 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 March 9, 2021 incorporating all five disputed domain names.
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”).
On March 11, 2021, the Center sent an email communication to Complainant, confirming that there appeared to be prima facie grounds sufficient to warrant accepting the Complaint for the Panel’s final determination of the consolidation request on appointment.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 13, 2021.
The Center appointed Marina Perraki as the sole panelist in this matter on April 20, 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. Consolidation - Consolidation of Respondents
The Panel has considered the possible consolidation of the Complaint for the Domain Names at issue. According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”.
All Domain Names have been registered by the same named Respondent, Wec Manz, apart from one, <engineers-corporate-equinor.com> where the named Respondent appears as Wec Mzun, namely with a highly similar name. The contact address and phone number in the WhoIs are identical for all Domain Names. Furthermore, all Domain Names were registered on February 7, 2021 with the same Registrar and under the same privacy service WhoisGuard Protected. Lastly, they all share the same naming pattern, namely they include the trademark EQUINOR of Complainant, along with different combinations of the terms "corporate", "engineers" and "energy". The Panel further notes that all Domain Names redirect to the official website of Complainant.
Considering all the above, the Panel notes that, as Complainant has argued, there appears prima facie to be one single Respondent. Furthermore, named Respondents did not submit any arguments to rebut this inference.
The Panel finds therefore that consolidation is fair to both Parties, as Respondents have been given an opportunity to object to consolidation through the submission of pleadings to the Complaint but have chosen not to respond (see WIPO Overview 3.0 , sections 4.11.1 and 4.11.2 ; Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302).
5. Factual Background
Complainant is a Norwegian corporation, formerly known as Statoil ASA. Complainant is an international energy company with operations in more than 30 countries developing oil, gas, wind and solar energy. It was founded as The Norwegian State Oil Company (Statoil) in 1972 and the Norwegian State holds 67% of its shares. Complainant changed its name from Statoil to Equinor in 2018.
Complainant is the owner of numerous trademark applications and registrations for EQUINOR around the world, including:
- European Union trademark registration No. 17900772, filed on May 15, 2018 and registered on January 18, 2019, for goods and services in international classes 1, 2, 4, 6, 7, 9, 16, 17, 19, 25, 28, 35, 36, 37, 39, 40, 41 and 42;
- International trademark registration No. 1444675, registered on July 4, 2018, for goods and services in international classes 1, 2, 4, 6, 7, 9, 16, 17, 19, 25, 28, 35, 36, 37, 39, 40, 41 and 42; and
- United States trademark application No. 87959294, filed on June 12, 2018, for goods and services in international classes 1, 2, 4, 6, 7, 9, 16, 17, 19, 25, 28, 35, 36, 37, 39, 40, 41 and 42.
Complainant is also the owner of numerous domain name registrations containing the brand EQUINOR, including <equinor.com>.
The Domain Names were registered on February 7, 2021 and redirect to Complainant’s official website at “www.equinor.com”.
6. Parties’ Contentions
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Names.
Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
A. Identical or Confusingly Similar
The addition of the dictionary words "corporate", "engineers" and "energy", along with hyphens, in the Domain Names does not prevent a finding of confusing similarity, as the trademark EQUINOR remains clearly distinguishable (WIPO Overview 3.0, section 1.8).
The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison as they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).
The Panel finds that the Domain Names are confusingly similar to the EQUINOR mark of Complainant.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Names.
Respondent did not demonstrate any use of the Domain Names prior to the notice of the dispute or a trademark corresponding to the Domain Names in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrated, the Domain Names redirect users to Complainant’s official website ““www.equinor.com”. A respondent’s use of a complainant’s mark to redirect users would not support a claim to rights or legitimate interests (WIPO Overview 3.0, section 2.5.3). This, along with the fact that the Domain Names were registered with a privacy shield service, speaks against any rights or legitimate interests held by Respondent (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625; Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Names in bad faith. Because the EQUINOR mark had been used and registered at the time of the Domain Names registration, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering this Domain Names (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple browser search (see Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).
Furthermore, Respondent could have conducted a trademark search and would have found Complainant’s prior registrations in respect of EQUINOR (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).
Furthermore, the Domain Names incorporate in whole Complainant’s mark plus additional terms that correspond to the energy business of Complainant. Use of the words “energy”, “engineers” and “corporate” in the Domain Names therefore creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Domain Names.
The redirection of the Domain Names to Complainant’s official website “www.equinor.com” also supports registration in bad faith (WIPO Overview 3.0, section 3.1.4), reinforcing the likelihood of confusion, as Internet users are likely to consider the Domain Names as in some way endorsed by or connected with Complainant (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625; Marie Claire Album v. Whoisguard Protected, Whoisguard, Inc. / Dexter Ouwehand, DO, WIPO Case No. D2017-1367; Myspace, Inc. v. Mari Gomez, WIPO Case No. D2007-1231).
As regards bad faith use, Complainant has demonstrated that the Domain Names are used for redirecting users to Complainant’s official website “www.equinor.com”. This can establish bad faith as Respondent retains control over the redirection thus creating an implied ongoing threat to Complainant (WIPO Overview 3.0, section 3.1.4, Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, supra; Myspace, Inc. v. Mari Gomez, supra; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Here, the Panel considers also the concealment of the Domain Names holder’s identity through use of a privacy shield to be a further indication of bad faith (BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364).
Lastly, as Complainant demonstrated there is a high risk that fraudulent emails are being distributed as the MX records of the Domain Names are active.
Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Names in bad faith.
Complainant has established Policy paragraph 4(a)(iii).
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 names <corporate-equinor-engineers.com>, <energy-equinor-engineers.com>, <engineers-corporate-equinor.com>, <engineers-equinor-corporate.com> and <equinor-corporate-engineers.com>be transferred to Complainant.
Date: May 4, 2021