WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Equinor ASA v. Elvis P Reyes

Case No. D2020-1996

1. The Parties

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

The Respondent is Elvis P Reyes, United States of America.

2. The Domain Name and Registrar

The disputed domain name <equinorsolutions.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2020. On July 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 30, 2020, 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 August 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 25, 2020.

The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on September 3, 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

The Complainant is an energy company operating in more than 30 countries developing oil, gas, wind and solar energy. The Complainant was founded as the Norwegian State Oil company in 1972 and its name change to EQUINOR was announced on March 15, 2018 as a part of its global strategy on extending to renewable energy.

The Complainant has been using the trademark EQUINOR since early 2018 and holds many trade and service mark applications and registrations in many countries, including EUIPO registration with the number 017900772 for EQUINOR, registered on January 18, 2019 for the classes 1, 2, 4, 6, 7, 9, 16, 17, 19, 25, 28, 35, 36, 37, 39, 40, 41, and 42.

The Complainant holds several domain names composed of or including EQUINOR trademark since 2018.

The Respondent has registered the disputed domain name with the Registrar on July 11, 2020. According to the current record, the Respondent is a physical person domiciled in Houston Texas. The disputed domain name is currently inactive.

5. Parties’ Contentions

A. The Complainant

The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s trademark EQUINOR, as it incorporates the trademark in its entirety, and that the addition of the generic word “solutions” reinforces the association between the disputed domain name and the Complainant’s trademark.

The Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name, mainly because the Complainant has neither licensed nor otherwise authorized the Respondent to use its marks or to apply for or use any domain name incorporating the trademark EQUINOR and the Respondent does not appear to be known by the disputed domain name.

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant claims that the Respondent is using the disputed domain name with the aim to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademark and for the purpose of disrupting the Complainant’s business and targeting the Complainant’s trademark. According to the Complainant, there is high risk that fraudulent e-mails are being distributed from the disputed domain name as the MX records are setup.

B. The Respondent

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

6. Discussion and Findings

6.1. Effect of the Default

Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

As there are no exceptional circumstances for the failure of the Respondent to submit a formal Response, the Panel infers that the Respondent does not deny the facts asserted and contentions made by the Complainant. Therefore, asserted facts that are not unreasonable will be taken as true and the Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant (Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441).

6.2. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested:

(i) the disputed 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 disputed domain name; and

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

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The term “EQUINOR” is the distinctive part of the Complainant’s trade name since 2018 and the Complainant holds several trademark registrations for EQUINOR.

The disputed domain name <equinorsolutions.com> integrates the Complainant’s EQUINOR trademark as the dominant element of the disputed domain name and the addition of the word “solutions” does not prevent a finding of confusing similarity.

As regards the generic Top-Level Domain “.com”, it is typically disregarded under the confusing similarity test.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The onus is on the Complainant to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and it is then for the Respondent to rebut this case.

The Panel accepts the Complainant’s submissions that the Respondent does not appear to be known by the disputed domain name, has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, is not making a legitimate noncommercial or fair use of the disputed domain name, and has no consent from the Complainant to use its trademark.

The Respondent has not filed a Response.

The Complainant has made out its prima facie case under this element of the Policy and the Respondent has failed to rebut it. Accordingly, the Complainant succeeds in relation to the second element of the Policy.

C. Registered and Used in Bad Faith

Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

The Respondent has registered the disputed domain name but has not put it to any use. The Respondent is holding the disputed domain name passively. It has long been held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark, without obvious legitimate use, does not necessarily prevent a finding of bad faith in line with the requirements of paragraph 4(a)(iii) of the Policy (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The Complainants contends that the MX records for the disputed domain name has been setup and that there is high risk that fraudulent e-mails can be sent through the disputed domain name. The Panel, in the view of the absence of any explanation from the Respondent, comes to the conclusion that the Complainant’s assertion is reasonable.

Lastly, considering the Panel’s finding under the second element, the Panel finds that the registration and use of the disputed domain name falls under the circumstances described under paragraph 4(b)(iv) of the Policy, namely, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by seeking to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by the Complainant.

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 <equinorsolutions.com> be transferred to the Complainant.

Emre Kerim Yardimci
Sole Panelist
Date: September 20, 2020