WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Equinor ASA v. WhoisGuard Protected, WhoisGuard, Inc. / Daniel Groommer

Case No. D2019-2104

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Daniel Groommer, Czech Republic.

2. The Domain Name and Registrar

The disputed domain name <equin0r.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 August 29, 2019. On August 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 29, 2019, 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 September 3, 2019, 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 September 4, 2019.

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 September 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2019.

The Center appointed Cherise Valles as the sole panelist in this matter on October 9, 2019. 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 energy company founded in 1972 with operations in more than 30 countries around the world developing oil, gas, wind and solar energy.

The Complainant was formerly known as Statoil ASA until March 15, 2018, when it announced a change of name. As the change of name was widely publicized, the term EQUINOR then became known to those who had previously been aware of the Complainant’s STATOIL trademarks.

The Complainant owns a number of trademarks in jurisdictions around the world for the term EQUINOR, including the following:

- European Union Trademark No. 017900772 for EQUINOR, registered on January 18, 2019, in classes 1, 2, 4, 6, 7, 9, 16, 17, 19, 25, 28, 35, 36, 37, 39, 40,41 and 42; and

- International TrademarkNo. 1444675 for EQUINOR, registered on July 4, 2018, in classes 1, 2, 4, 6, 7, 9, 16, 17, 19, 25, 28, 35, 36, 37, 39, 40,41 and 42.

The Complainant also owns and operates more than 100 domain names incorporating the term EQUINOR, including <equinor.com>, <equinor.cz> and <equinorenergy.com>.

The disputed domain name was registered on February 2, 2019 and redirects to the Complainant’s main corporate website at “www.equinor.com”.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

- The disputed domain name is confusingly similar to the Complainant’s registered trademark, EQUINOR, in light of the fact that it wholly incorporates the Complainant’s mark with only one letter being misspelled, and there is a deliberate misspelling of the Complainant’s trademark.

The Respondent lacks rights or legitimate interests in the disputed domain name.

- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.

The disputed domain name has been registered and is being used in bad faith.

- The Complainant asserts that the disputed domain name has been registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.

The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:

(i) the 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 respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

The Complainant has the burden of proof in establishing each of these elements.

The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant.

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.

The Complainant is the sole and exclusive owner of multiple registrations worldwide for the term EQUINOR as indicated in Section 4 above. The disputed domain name is virtually identical to the Complainant’s trademark, differing only from the Complainant’s trademark in the replacement of the letter O in EQUINOR with a number 0. The letter O and the letter 0 are highly similar and can be easily confused with each other. Such misspellings are considered by UDRP panels to be confusingly similar for the purposes of the first element. See, e.g., Fuji Photo Film U.S.A. v. LaPorte Holdings, WIPO Case No. D2004-0971.

The generic Top-Level Domain (“gTLD”) “.com” is not to be taken into account when assessing whether a domain name is identical or confusingly similar to a trademark.

In the light of the foregoing, the Panel finds that the disputed domain name <equin0r.com> is confusingly similar to the Complainant’s registered trademark and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent):

“[a]ny 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 your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you 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 (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 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 Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

Previous UDRP panels have established that in order to shift the burden of production to the respondent, it is sufficient for the complainant to make a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not satisfied this burden. In the absence of a Response or assertion that any such right or legitimate interest exists, this must lead to a presumption that the Respondent is unable to show that such a right or legitimate interest exists.

There has never been any relationship between the Complainant and the Respondent. The Respondent is not licensed, or otherwise authorized to register or use the Complainant’s EQUINOR marks in any manner whatsoever, including in, or as part of, the disputed domain name. The term “equin0r” is not descriptive in any way, nor does the combination of words and numerals have any generic, dictionary meaning. To the best of the Complainant’s knowledge, the Respondent is not commonly known as “equin0r”.

There is no evidence that the Respondent is using the disputed domain name in connection with any legitimate non commercial or fair use without intent for commercial gain. Moreover, the disputed domain name redirects to the Complainant’s website at “www.equinor.com”, adding to the risk of confusion outlined at section C below.

In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) the 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 the respondent has engaged in a pattern of such conduct;

(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 its 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 its website or location.

The Respondent registered the disputed domain name as a deliberate misspelling of the Complainant’s marks following the Complainant’s change of name and corresponding publicity. This suggests that the Respondent registered the disputed domain name in bad faith deliberately to create a likelihood of confusion between the disputed domain name and the Complainant’s EQUINOR marks.

It is apparent from the composition of the dispute domain name that the Respondent cannot have been ignorant of the rights held by the Complainant in the EQUINOR marks. The disputed domain name is likely to attract Internet users seeking to access the Complainant’s website at “www.equinor.com”. Moreover, at the time of registration of the disputed domain name, the Complainant was known in more than 30 countries. Previous UDRP panels have found that a respondent’s actual or constructive knowledge of a complainant’s rights in a domain name at the time of registration reinforces a finding of bad faith.

The Respondent’s registration and use of the disputed domain name incorporating the Complainant’s EQUINOR marks indicates a deliberate attempt to confuse Internet users and mislead them into believing that the disputed domain name was somehow associated with, authorized by or connected to the Complainant. Given that the disputed domain name redirects to the Complainant’s website at “www.equnor.com”, and a MX (mail exchange) record has been linked to the disputed domain name, in the absence of any explanation from the Respondent, the Panel finds that it is likely that the disputed domain name was registered for illegitimate purposes.

Finally, the Respondent’s use of a privacy service when registering the disputed domain name is further evidence of bad faith.

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name 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 <equin0r.com> be transferred to the Complainant.

Cherise Valles
Sole Panelist
Date: October 22, 2019