WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Equinor ASA v. Whois Privacy Protection Foundation / Rand Water

Case No. D2020-2820

1. The Parties

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

Respondent is Whois Privacy Protection Foundation, Netherlands / Rand Water, United States of America.

2. The Domain Name and Registrar

The disputed domain name <equinoroiluk.com> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2020. On October 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 27, 2020, 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 Complainant on November 10, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 11, 2020.

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 Respondent of the Complaint, and the proceedings commenced on November 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 4, 2020.

The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on December 21, 2020. 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 Equinor ASA, a Norwegian corporation with operations in more than 30 countries around the world, developing oil, gas, wind, and solar energy. Complainant was founded as The Norwegian State Oil Company (Statoil) in 1972.

In 2018, Complainant decided to change its name to “Equinor”. The name change was announced on March 15, 2018 and the news was released worldwide. In addition to the name change, Equinor ASA shifted its focus from oil and gas to renewable energy sources, such as wind and solar power.

In light of the above, noting also the fame of the Statoil mark inherited by the EQUINOR mark as a result of the wide disclosure of the name change, Complainant has filed for the registration of the EQUINOR trademark worldwide in order to protect its rights, as below:

Furthermore, Complainant also owns more than 100 domain name registrations throughout the world containing the EQUINOR mark, as indicated in the Complaint.

At last, it is important to note that the disputed domain name <equinoroiluk.com> was registered on August 13, 2020 – after the registration of Complainant’s marks – and is being used to send non-authorized e-mails on behalf of Complainant advertising job positions in the United Kingdom.

5. Parties’ Contentions

A. Complainant

Complainant submits that the disputed domain name is confusingly similar to its registered trademark EQUINOR. This is because the disputed domain name incorporates the mark EQUINOR in its entirety with the sole addition of the generic terms “oil” and “uk” - since “oil” makes reference to Complainant’s core business and the geographical term “uk” does not provide any distinctiveness to the disputed domain name.
Complainant affirms, thus, that Internet users when seeking information on a website hosted by the disputed domain name or receiving an email from such domain name, would most probably assume a connection with Complainant’s business. However, Respondent is not affiliated or related to Complainant in any way, or licensed or otherwise authorized to use the EQUINOR mark in connection with a website or for any other purpose. Thus, Complainant affirms that the aim of phishing e-mails is to illegally obtain sensitive information or even payment by using the reputation and goodwill of Complainant’s trademark and company name, which can cause serious damage to Complainant and those who receive those fraudulent e-mails.

Complainant also claims that Respondent includes immigration documents to applicants from outside the United Kingdom and documents using Complainant’s logo on the misleading e-mails.

Considering this scenario, Complainant believes that Internet user can be led to think that the website and the e-mails sent under the disputed domain name have a connection with Complainant, which is not true, fulfilling paragraph 4(a)(i) of the Policy and paragraph 3(b)(viii), (b)(ix)(1) of the Rules.

Furthermore, Complainant affirms that Respondent does not have any rights or legitimate interests in respect of EQUINOR trademark and company name, since it has no prior right to EQUINOR sign and is not generally known by the disputed domain name.

Complainant also alleges that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. On the contrary, Respondent is showing a clear intent to take unfair advantage of Complainant’s reputation by making Internet users believe that the disputed domain name is associated with, authorized by, or connected to Complainant. Therefore, paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules would be also fulfilled.

At last, Complainant claims that Respondent intentionally attempts to attract, for commercial gain and sensitive information, Internet users to its website and e-mail, by creating a likelihood of confusion with Complainant and its EQUINOR trademark as to the association, authorization, or connection of the disputed domain name and related e-mail address, which constitutes registration and use in bad faith pursuant to paragraph 4(b) of the Policy.

Thus, Complainant sustains that paragraph 4(a)(iii) and 4(b) of the Policy and paragraph (b)(ix)(3) of the Rules would have been fulfilled.

B. Respondent

Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, in a UDRP complaint, complainants must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following:

(i) the disputed domain name is identical or confusingly similar to a trademark 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 is being used in bad faith.

The burden of proving these elements is upon Complainant.

Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the Complaint, the Panel’s decision shall be based upon the Complaint.

A. Identical or Confusingly Similar

Complainant provided evidence that it owns several trademark registrations and applications worldwide for the sign EQUINOR which predate the registration of the disputed domain name by Respondent.

The Panel finds that, in the present case, Complainant’s trademark is clearly recognizable in the disputed domain name. The addition of the terms “oil” and “uk” after Complainant’s trademark in the disputed domain name does not prevent a finding of confusing similarity. See sections 1.7 and 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark and that the requirements of the first element of paragraph 4(a) of the Policy are satisfied.

B. Rights or Legitimate Interests

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0 as follows: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

In this case, noting the facts and contentions listed above, the Panel finds that Complainant has made a prima facie demonstration that Respondent lacks rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not replied to Complainant’s contentions, that burden has not been discharged, and the Panel has considered Complainant’s prima facie case to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name.

The Panel finds that Respondent’s use of the disputed domain name incorporating Complainant’s trademark with the addition of the terms “oil” and “uk” does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant has provided evidence that the disputed domain name has been used in connection with a fraudulent scheme; such fraudulent use can never confer rights or legitimate interests on the Respondent. See section 2.13 of the WIPO Overview 3.0.

Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed evidence of the registration and use of a domain name in bad faith. Those circumstances include: “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

Firstly, the Panel finds that it is likely that Respondent had knowledge of Complainant’s rights to the trademark EQUINOR at the time of registration of the disputed domain name, especially because: (i) Complainant trademark was first registered in 2018, while the disputed domain name was registered by Respondent only in 2020; (ii) Respondent uses without authorization in the misleading e-mails it sends not only the word mark EQUINOR, but also Complainant’s trademarked logo; (iii) the term “equinor” is highly distinctive and it not used in any other circumstance but to make reference to Complainant’s business; and (iv) the term “oil” makes reference to Equinor’s core business and the term “uk” refers to the location where job positions are being advertised through the disputed domain name seemingly on Complainant’s behalf.

It is therefore clear that Respondent was aware of Complainant’s business and had the intention of making a misleading association with Complainant when registering the disputed domain name.

The evidences also show that Respondent was likely trying to attract, for commercial gain and sensitive information, Internet users to its website, by creating a likelihood of confusion with Complainant when using the distinctive and well-known term “equinor” in the disputed domain name.

Furthermore, Complainant provided evidence that the disputed domain name has been used to send deceptive emails seemingly on behalf of Complainant to obtain sensitive information from prospective job applicants; such use is clear evidence of bad faith. See section 3.4 of the WIPO Overview 3.0.

Lastly, the Panel notes that, in conjunction with all of the abovementioned, the fact that Respondent did not present a reasonable response to the Complaint reinforces the conclusion that Respondent acted in bad faith.

Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy. As such, the Panel finds that Complainant has satisfied 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 <equinoroiluk.com> be transferred to the Complainant.

Gabriel F. Leonardos
Sole Panelist
Date: January 4, 2021