The Complainant is Equinor ASA, Norway, represented by Valea AB, Sweden.
The Respondent is Ronny Sørensen, Norway.
The disputed domain name <equinortm.com> (the “Domain Name”) is registered with One.com A/S (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2020. On July 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 30, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 30, 2020, 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 August 4, 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 the Respondent of the Complaint, and the proceedings commenced on September 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2020. The Respondent did not submit any response. The Respondent sent an email in Norwegian on July 30, 2020, and the Complainant chose to suspend the proceeding based on that email. The proceeding was suspended on August 8, 2020, and reinstituted on September 2, 2020, as requested by the Complainant. Accordingly, the Center notified the Parties of the commencement of Panel appointment on October 7, 2020.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on October 12, 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.
The Complainant is a Norwegian corporation, formerly known as Statoil ASA. The Complainant is an international energy company with operations in more than 30 countries around the world developing oil, gas, wind and solar energy. The Complainant has grown up along with the emergence of the Norwegian oil and gas industry dating back to the late 1960s. It was founded as The Norwegian State Oil Company (Statoil) in 1972 and the Norwegian State holds 67 per cent of the shares.
The Complainant changed its name to Equinor in 2018. In parallel to the name change, EQUINOR trademark applications have been filed worldwide, among them Norwegian trademark registration No. 298811, registered June 12, 2018.
The Complainant is the owner of more than 100 domain name registrations throughout the world containing the EQUINOR mark distributed among generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”).
According to the Complainant, the Respondent registered the Domain Name on July 7, 2020. At the time of drafting the Decision, the Domain Name resolved to an “under construction” webpage by the Registrar.
The Complainant provides evidence of trademark registrations. The Complainant argues that the Domain Name incorporates the entirety of the trademark and company name EQUINOR and a suffix “tm” that can mean for example trademark or team. The Complainant finds that this generic term is not sufficient to overcome the confusing similarity with respect to the Complainant’s trademark that remains the dominant and only distinctive element in the Domain Name.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant asserts that the Respondent is not affiliated with the Complainant or with any of its subsidiaries in any manner, nor is the Respondent an authorized distributor or reseller of the Complainant’s products. The Respondent has not been granted any license to use the EQUINOR trademark nor was the Respondent otherwise authorized by the Complainant to use the trademark. There is no evidence of the Respondent’s use of, or preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering. The Domain Name redirects to a parked webpage.
The Complainant believes it is evident from the composition of the Domain Name that the Respondent chose to register a name that is confusingly similar to the Complainant’s trademark and registered company name. The Respondent was fully aware of the fact that he incorporated well-recognized and distinctive trademark in which the Respondent had no prior rights. There is a risk that fraudulent emails may be distributed through email accounts created from the Domain Name. The Complainant has experienced numerous phishing attacks from similar domain names in the last year. The use of a privacy service is further indication of bad faith. The Respondent has refused the Complainant’s offer to pay the actual registration costs of a domain name more fitting the use alleged by the Respondent. It is clear from the refusal and the Respondent’s reply, that the Respondent is willing to give up the Domain Name for valuable consideration in excess of the documented out-of-pocket costs directly related to the Domain Name.
The Respondent has not filed a formal Response, but communicated with the Complainant by email, including one email in Norwegian of July 30, 2020, with an explanation for the choice of domain name, a follow up email in English of August 3, 2020, and longer email in English on August 4, 2020.
In the first email, the Respondent claims the Complainant owns the rights to Equi and Nor, “only if used together in Equinor. The words alone “can be used freely”, and explains that the Domain Name “is made up of two meanings and is not comparable to Equinor”. According to the Respondent, he has “used Equi and Nortm as two independent words put together. Equi (pronounced Aequi) and the meaning is Ekverne, who were ancient warriors, and Nortm (figure from World of Warcraft). The Respondent offered no documentation, but he stated “I do not want to elaborate on what the plans are for the domain other than that a lot of work has been done and that we are approaching a release for something we believe in”.
In the second email, the Respondent refused the Complainant’s offer for a settlement:
“For my part, it is not relevant to transfer this domain to your client with the proposed solution. It is you and your client who have contacted me to transfer a domain that is not initially for sale. If it is to be transferred to your client, you must come up with a decent offer. It is not relevant to create a hybrid of this domain name for the project it is planned to be used for, nor to sign any clauses that place restrictions on what the project can work with. If your client comes up with an offer that I think is acceptable, I will find a completely different name for the project and change parts of the concept”.
From the third email:
“Your Client still doesn’t own the words Equi and Nortm separately or put together in one word – equinortm. You make many serious and directly erroneous assumptions in your case presentation. You divide the name of the domain so that it fits into a series of arguments so that a committee will decide in your client's favor, the name should not be divided so that it has the meaning you insinuate it has. That your client has put together two words as you show in one attachment confirms that they do not own the words separately. In the document UDRP – you write that it is confusingly similar to your client's name. Although similar, it has a completely different meaning, this is often the case when choosing Latin words in a composition with everyday words as youre client has done. In my case, the Latin word is put together with the name of a virtual figure (Nortm). At the same time you send me an email and offer me to use Equinor in the domain: “aEQUINORtm.com”. This is difficult and confusing for me to understand. You also write that the domain is registered and is being used in bad faith. This is a serious accusation, I want to remind you that it is you who contact me to get the domain. I have not approached you to make money on a domain registered in bad faith as you write”.
Then, in the same email of August 4, 2020, the Respondent shares his plans for the use of the Domain Name. As the project is not yet public, the Panel will in this decision refer to it as the environmental project and not go into detail.
“The name Equi Nortm symbolizes the hopeless struggle the little one fights against the big one to bring about change. It is the battle for change and environmental commitment that is in question. It is not your claims about evil/bad intentions, it is assumptions that are at your own expense. If you and your client want the domain that you are now trying to hijack by force, you should rather come up with a decent offer and we will find another name for this project. We have many other projects underway as well and have invested in several domains. Most recently, two weeks ago, we purchased a USD 4,000 domain for an upcoming project”.
According to the Registrar, the registration agreement for the Domain Name is in Norwegian. The Complainant requests for English to be the language of the administrative proceedings. The Complainant underlines that the language of the registration agreement at the website of the Registrar is English, the Respondent has answered to the Complainant’s email in English, and translation of the Complaint into Norwegian would put an undue financial burden on the Complainant and delay resolution of the dispute.
Pursuant to paragraph 11 of the UDRP Rules, the Panel may determine the language of the proceedings, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5. See also paragraph 10 of the UDRP Rules that grants the Panel the authority to conduct the proceedings in a manner it considers appropriate while also ensuring that the parties are treated with equality, and that each party is given a fair opportunity to present its case.
There is evidence showing that the Respondent understands English, including prior correspondence between the parties in English. It would constitute an unnecessary burden and delay to request the Complaint translated into Norwegian. The Panel speaks Norwegian and the Panel has assessed the complete case file, including the correspondence from the Respondent in Norwegian. The Respondent has not made any request as to the language of the proceedings. Based on the above, the Panel determines the language of the proceeding/decision to be English.
The Complainant has established that it has rights in the trademark EQUINOR.
The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name incorporates the entirety of the trademark and company name EQUINOR, with the suffix “tm”. The addition does not prevent confusing similarity between the Domain Name and the Complainant’s trademark. For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the gTLD “.com”; see WIPO Overview 3.0, section 1.11.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
The Complainant has not granted any authorization to the Respondent to register the Domain Name containing the Complainant’s trademark or otherwise make use of its mark. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered trademark rights. There is no evidence of the Respondent’s 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. As much as the Respondent’s plans for an environmental project are admirable, it does not give him the right to register a domain name that most internet users undoubtedly will connect to the Complainant.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
The Domain Name is confusingly similar to the well-known trademark EQUINOR. It is particularly well-known in Norway where also the Respondent is situated. The Panel finds it likely that the Respondent was aware of the Complainant when he registered the Domain Name. The Panel is not convinced by the Respondent’s explanation. Even if the Respondent’s plans for an environmental project were genuine, it does not explain his choice of a Domain Name confusingly similar to the Complainant’s trademark and business name.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <equinortm.com> be transferred to the Complainant.
Date: October 14, 2020
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