WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Equinor ASA v. United, Unitedshipping
Case No. D2021-3106
1. The Parties
Complainant is Equinor ASA Norway, represented by Valea AB, Sweden.
Respondent is United, Unitedshipping, India.
2. The Domain Name and Registrar
The disputed domain name <equinorautolinersmarine.com> (the “disputed 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 September 21, 2021. On September 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 22, 2021 the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 18, 2021.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on October 25, 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
Complainant is a global energy company, based in Norway. Previously operating under the name Statoil, Complainant undertook a rebranding campaign in 2018, and has since conducted operations under the EQUINOR mark. Complainant has several registered trademarks for its EQUINOR mark. These include, among others, International Registration No. 1444675 (registered July 4, 2018); and European Union Registration No. 17900772 (registered January 18, 2019).
Complainant owns the registrations for domain names that incorporate its EQUINOR mark. These include <equinor.com>, which Complainant has owned and used since at least 2018. Complainant uses the URL associated with this domain name to inform customers about its EQUINOR mark and its various energy products and services including those involving tankers and marine transportation.
The disputed domain name was registered on July 5, 2021. Respondent has no affiliation with Complainant. Although not currently active, Respondent has used the URL associated with the disputed domain name to resolve to a webpage that appears to mimic an official website of Complainant, including reference to oil and gas exploration services, and listing contact information in Norway. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby.
5. Parties’ Contentions
Complainant contends that the (i) disputed domain name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
In particular, Complainant contends that it has a distinctive and well-known mark, and that Complainant’s 2018 rebranding to EQUINOR received international media coverage including from Bloomberg and The Telegraph. Complainant contends that Respondent has merely added dictionary words “autoliners” and “marine”, which is likely to confuse prospective online consumers into thinking that the disputed domain name is affiliated or endorsed by Complainant, including its global marine exploration and energy transportation.
Complainant contends that Respondent has previously used the disputed domain name to set up a webpage meant to lure in customers looking for Complainant. Complainant further contends that Respondent has no rights or legitimate interest in the domain name registration or use of the disputed domain name. Rather, Complainant contends that Respondent has acted in bad faith in setting up a website, when Respondent clearly knew of Complainant’s rights.
Respondent did not file a reply to Complainant’s contentions in this proceeding.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel must first determine whether the disputed domain name <equinorautolinersmarine.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s registered trademark EQUINOR and merely adds the dictionary words “autoliners” and “marine.”
Numerous UDRP panels have agreed that supplementing or modifying a trademark with dictionary words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Inter Ikea Systems B.V. v. Polanski, WIPO Case No. D2000-1614 (transferring <ikeausa.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>); Microsoft Corporation v. Step-Web, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); CBS Broadcasting, Inc. v. Y2K Concepts Corp., WIPO Case No. D2000-1065 (transferring <cbsone.com>).
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.
Respondent did not submit a reply to the Complaint, however. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to divert Internet users to a webpage that appears to mimic Complaint’s website but which is unaffiliated with Complainant or Complainant’s products and services. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interest in the disputed domain name, which Respondent has not rebutted.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site 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 [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has in the past set up a URL associated with the disputed domain name to resolve to a website that appears to mimic an official website of Complainant, and which attempts to confuse consumers by displaying Complainant’s mark and logo. Respondent is thus trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain.
Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy.
For all 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 <equinorautolinersmarine.com> be transferred to Complainant.
Dated: November 3, 2021