The Complainant is Equinor ASA, Norway, represented by Valea AB, Sweden.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Daniel Klog, United States.
The disputed domain name <equinorbids.co> is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2020. On July 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, 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 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 July 30, 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 July 31, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 21, 2020.
The Center appointed Edoardo Fano as the sole panelist in this matter on August 28, 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.
On August 26, 2020, the Complainant asked whether it would be possible to consolidate this proceeding with another proceeding against the same Respondent in which a separate complaint has been filed. Because of the expedited nature of these proceedings under the UDRP, absent unusual circumstances, and noting that the Center received such request after the notification of the Complaint in these proceedings, the Panel does not find it convenient or appropriate to consolidate these two separate proceedings, and has therefore decided not to do so.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules, and the Supplemental Rules and without the benefit of a response from the Respondent.
The Complainant is Equinor ASA (formerly known as Statoil ASA), a Norwegian company operating in more than 30 countries around the world in the field of energy. The Complainant announced the change of its name and adoption of the mark EQUINOR in March 2018, and owns several trademark registrations for EQUINOR, among which the following ones:
- International Trademark Registration No. 1444675 for EQUINOR, registered on July 4, 2018;
- European Union Trademark Registration No. 017900772 for EQUINOR, registered on January 18, 2019.
The Complainant operates on the Internet at several websites, the main one being “www.equinor.com”.
The Complainant provided evidence in support of the above.
The disputed domain name <equinorbids.co> was registered on July 6, 2020, and according to the records provided by the Complainant, the website at the disputed domain name is consisted of a parking page of the Registrar with no developed content.
The Complainant states that the disputed domain name <equinorbids.co> is confusingly similar to its trademark EQUINOR, as the word “bids” is descriptive and not distinctive.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, nor is the Respondent commonly known by the disputed domain name. The Complainant asserts the Respondent is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark EQUINOR is distinctive and internationally known. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain name and the Complainant contends that the registration and use of the disputed domain name, with the purpose of intentionally attempting to create a likelihood of confusion with the Complainant’s trademark, qualifies as bad faith registration and use. Furthermore, this is confirmed by the fact that the additional word “bids” in the disputed domain name refers to a business activity of the Complainant. Finally, the Respondent has registered other disputed domain names showing a pattern of conduct, two of them concerning the same trademark EQUINOR, namely <bids-equinor.com> and <equinor-bids.com>.
The Respondent has made no reply to the Complainant’s contentions and is in default. In reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080; Altavista Company v. Grandtotal Finances Limited et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(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 Panel finds that the Complainant is the owner of the trademark EQUINOR both by registration and acquired reputation and that the disputed domain name <equinorbids.co> is confusingly similar to the trademark EQUINOR.
Regarding the addition of the word “bids”, the Panel notes that it is now well established that the addition of descriptive terms or letters to a domain name does not prevent a finding of confusing similarity between the domain name and the trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. [email protected], WIPO Case No. D2000-0713). The addition of the word “bids” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark.
It is also well accepted that a country-code Top-Level Domain (“ccTLD”), in this case “.co”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
The Respondent has failed to file a Response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent, who is not currently associated with the Complainant in any way, is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it.
Moreover, the Panel finds that the composition of the disputed domain name carries a risk of implied affiliation. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 2.5.1.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [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; or
(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
Regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark EQUINOR in the field of energy is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain name, <equinorbids.co>, especially because within the disputed domain name the word “bids”, a dictionary term referring to a business activity of the Complainant, is added to the Complainant’s trademark EQUINOR.
As regards the use in bad faith of the disputed domain name, pointing to a website consisting of a parking page of the Registrar with no developed content, the Panel considers that bad faith may exist even in cases of so-called “passive holding”, as found in the landmark UDRP decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the circumstances of this case, the Panel finds that such passive holding amounts to bad faith. Moreover, considering the Respondent’s pattern of bad faith conduct based on its other trademark-abusive domain name registrations targeting the Complainant (e.g., Equinor ASA v. Daniel Klog, WIPO Case No. D2018-2441), the Panel also finds that the Respondent has registered the disputed domain name in order to prevent the Complainant reflecting the mark in a corresponding domain name in accordance with paragraph 4(b)(ii) of the Policy.
The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been 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 <equinorbids.co> be transferred to the Complainant.
Date: August 31, 2020
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