The Complainant is Equinor ASA of Stravanger, Norway represented by Valea AB, Sweden.
The Respondent is Daniel Klog of New York, the United States of America ("United States").
The disputed domain name <bids-equinor.com> ("Disputed Domain Name") is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2018. On October 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 26, 2018, 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 October 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 20, 2018.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on November 26, 2018. 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.
The Complainant is a multi-national energy company, formerly known as Statoil ASA, which is headquartered in Stravanger, Norway. The Complainant announced its change of name to Equinor ASA in March 2018, and the announcement was published on its website and in several international news articles. Since March 2018, the Complainant has been primarily conducting its business under its EQUINOR trade mark, and has operations in over 30 countries. The Complainant owns registered rights in the EQUINOR trade mark and related EQUINOR logos ("Equinor Trade Marks") in Norway (e.g. Registration No. 298639), and has applied for registration of the EQUINOR Trade Marks in multiple jurisdictions, including in the European Union ("EU"), the United Kingdom of Great Britain and Northern Ireland ("UK") and the United States.
The Respondent is an individual based in the United States, who registered the Disputed Domain Name <bids-equinor.com> on September 11, 2018. The Disputed Domain Name redirects to a third-party website where escrow services for the sale of domain names are offered.
The Complainant’s contentions can be summarized as follows:
(a) The Complainant is well-known worldwide and has been in the energy industry for over 40 years. On March 15, 2018 ("Announcement Date"), the Complainant announced its change of name from Statoil ASA to Equinor ASA. It has registered rights in the EQUINOR Trade Marks in Norway and has unregistered rights in the EQUINOR trade mark in multiple countries through its extensive use since the Announcement Date, including in the UK, the United States and the EU. The Complainant also has more than 100 top-level domain names that incorporate the EQUINOR trade mark, including <equinor.com>, <equinor.us> and <equinor.uk>. It owns and operates the official website that resolves to <equinor.com>.
(b) The Respondent registered the Disputed Domain Name on September 11, 2018. The Disputed Domain Name is confusingly similar to the Complainant’s EQUINOR trade mark, with the only difference being the addition of the prefix "bids-". The inclusion of the generic word "bids" as a prefix in the Disputed Domain Name does not mitigate the confusing similarity between the Disputed Domain Name and the Complainant’s EQUINOR trade mark.
(c) The Respondent has no rights or legitimate interests in the Disputed Domain Name. He is not affiliated with the Complainant and has not been authorized to register or use the Disputed Domain Name. In addition, he has never been known by the EQUINOR mark.
(d) The Respondent has not used (and has made no demonstrable preparations to use) the Disputed Domain Name in connection with the bona fide sale of any goods or services and is not making any non-commercial or fair use of the Disputed Domain Name. The Disputed Domain Name redirects to “http://www.escrow.com/domain”, an online escrow service provider that assists with the sale of domain names.
(e) The Respondent has registered and is using the Disputed Domain Name in bad faith. The Disputed Domain Name was registered subsequent to the Announcement Date and the registration of the Complainant's EQUINOR trade mark in Norway. The Disputed Domain Name was registered using a privacy service provider. Moreover, the Complainant issued a cease and desist letter dated October 16, 2018 to the Respondent, to which the Respondent responded by stating that the Disputed Domain Name was registered to be resold. Further, the Respondent offered to transfer the Disputed Domain Name to the Complainant for USD 5,000. This indicates that the Respondent registered and is using the Disputed Domain Name primarily for the purpose of selling the Disputed Domain Name to the Complainant or its competitors in return for a profit, which amounts to bad faith registration and use. Lastly, the Respondent has already been the subject of another UDRP proceedings, in which he was found to have registered and used two domain names in bad faith. This demonstrates a pattern of bad faith conduct.
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed 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 Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and are being used by the Respondent in bad faith.
The Panel accepts that the Complainant has rights in the EQUINOR trade mark, based on its trade mark registrations in Norway.
The Disputed Domain Name incorporates the Complainant’s EQUINOR trade mark in its entirety, the only difference being the inclusion of the prefix "bids-". The word "bids" is a generic word, and it is well established that where the distinctive and prominent element of a disputed domain name is a complainant's mark, and the only difference is a generic term that adds no distinctive element, then such a generic term does not negate the confusing similarity between the disputed domain name and the mark (see Oakley, Inc. v. Joel Wong/BlueHost.com – INC, WIPO Case No. D2010-0100, The Coca-Cola Company v. Whois Privacy Service, WIPO Case No. D2010-0088, and Diageo Ireland v. Guinnessclaim, WIPO Case No. D2009-0679). The Panel finds that EQUINOR is the distinctive component of the Disputed Domain Name and the addition of "bids-" does little to distinguish it from the Complainant’s EQUINOR trade mark.
It is also well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain extension, in this case ".com", may generally be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
In light of the above, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant registered and began using the EQUINOR trade marks before the Disputed Domain Name was registered and has not authorised or granted any right to the Respondent to use its EQUINOR trade mark. Accordingly, the Panel is of the view that a prima facie case is established and it is for the Respondent to prove he has rights or legitimate interests to the Disputed Domain Name. Since the Respondent has submitted no Response, the Panel will assess whether or not the Respondent has any rights in the Disputed Domain Name (or lack thereof) based on the inferences that can be reasonably drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to him of the dispute, the Respondent's use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was 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 he has acquired no trade mark 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 trade mark or service mark at issue.
The Panel accepts that the Respondent has not provided any evidence to demonstrate that he has become commonly known by the Disputed Domain Name, or a name corresponding to it.
The Disputed Domain Name resolves to an escrow website that facilitates domain name transactions (i.e. “www.escrow.com”). It is conceivable that the Respondent earns some form of revenue each time a user visits the Disputed Domain Name and is redirected to “www.escrow.com”. This cannot amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Disputed Domain Name. The Disputed Domain Name is confusingly similar to the Complainant's well-known EQUINOR trade mark, and use of the Disputed Domain Name will inevitably mislead users into believing that the Disputed Domain Name is associated with the Complainant and may divert users to the Disputed Domain Name, enabling the Respondent to make a commercial gain. It is also clear that the Respondent intends to sell the Disputed Domain Name in return for commercial gain, which cannot amount to a right or legitimate interest in respect of the Disputed Domain Name (see paragraph C below).
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
When contacted by the Complainant, the Respondent offered to sell the Disputed Domain Name for USD 5,000, presumably in US dollars, as the Respondent is based in the United States. The selling price is more than the reasonable out-of-pocket expenses in relation to the acquisition of the Disputed Domain Name. The Respondent also informed the Complainant that he had acquired the Disputed Domain Name for the purpose of reselling it. Whilst in certain circumstances being in the business of registering and selling domain names might not in itself be a breach of the Policy (e.g. where the domain name solely incorporates a generic term), this is only on the condition that they do not encroach on a third party’s trade mark rights. In this case, the Disputed Domain Name incorporates the Complainant’s EQUINOR trade mark, which is a well-known mark that has no generic meaning other than in relation to the Complainant. The Respondent has also not provided any explanation as to why he chose to register the Disputed Domain Name or presented any evidence of good faith registration or use. Instead, the Respondent offered to sell the Disputed Domain Name to the Complainant, and confirmed that he had registered it for the purpose of selling it. The Panel therefore believes that the Respondent’s main motive for registering the Disputed Domain Name was opportunistic, namely to take advantage of the Complainant’s reputation in the EQUINOR trade mark, in order to sell the Disputed Domain Name for commercial gain.
Further, there is at least one previous UDRP case to which the Respondent has also been a party, and where it was found that the Respondent had registered domain names incorporating a well-known mark belonging to another party in bad faith (see Exxon Mobil Corporation v. Daniel Klog, NAF Case No. 1680750). The Panel concludes that this previous case together with the present case indicate that the Respondent is involved in the business of registering domain names that are confusingly similar to well-known marks in order to sell them for profit or to confuse users into believing that the domain names are connected with the trade mark owner and thus derive commercial gain. This further corroborates the finding of bad faith on the part of the Respondent.
For the reasons stated above, the Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith.
The Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
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 <bids-equinor.com> be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Date: December 10, 2018