WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Total Fina Elf S.A. v. Salvador Preckler Arias

Case No: D2002-0257

The Complainant is Total Fina Elf S.A., a company with limited liability, incorporated under the laws of France, with its place of business at 2 Place de la Coupole, La Défense 6, Courbevoie, 92400, France, represented by Mr. David Taylor, attorney–at–law (Paris Bar), Lovells, France.

The Respondent is Salvador Preckler Arias, with his address at 4A General O’Donnell, Santa Cruz de Tenerife, Islas Canarias, 38004, Spain.

The disputed domain names are:

<totalfinaelf.info> with Registrar eNom, Inc.

<total-fina-elf.info> with Registrar Alldomains.com

<total-fina-elf.net> with Registrar Iholding, Inc. D/B/A Dotregistrar.com

<totalfina.info> with Registrar DomainZoo.com, Inc.

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").

The Complaint was received by the Center by email on March 18, 2002, and in hardcopy on March 19, 2002.

The Complaint was acknowledged received by the Center on March 19, 2002.

On March 22, 2002, registration details were sought from each of the Registrars.

Between March 22, 2002 and March 29, 2002, all of the Registrars replied confirming that the respective disputed domain names are registered in the name of the Respondent and at the address mentioned above and that the language of the Service Agreement is English.

eNom, Inc. confirmed that the domain name <totalfinaelf.info> is locked. Alldomains.com confirmed that the domain name <total-fina-elf.info> is active. Domainzoo.com, Inc. confirmed that the domain name <totalfina.info> is active. iHolding, Inc. d/b/a Dotregistrar.com confirmed that the domain name <total-fina-elf.net> is put on hold.

On April 3, 2002, the Center satisfied itself that the Complainant complied with all formal requirements (including payment of the prescribed fee) and on that same date, the Center formally dispatched copies of the Complaint by post / courier (with enclosures) to the Respondent at the address as recorded with the Registrar and by e-mail and facsimile (without attachments). The Center also sent (i) copies of the material by the same methods to the Respondent’s administrative, billing and technical contacts at the addresses recorded by the respective Registrar, and to the Respondent’s attorney as indicated in the Complaint, and (ii) included with the material dispatched to the Respondent and to those contacts a letter dated April 3, 2002, containing notification of the commencement of this administrative proceeding. The latter notification (including the complaint without attachments) was on the same date also copied to the Complainant, to the respective Registrar and to ICANN.

The Respondent did not file a response. On April 25, 2002, the Center notified the Respondent by post / courier at the address as recorded with the respective Registrar and by e-mail of the consequences of his default. Copy of this notification was sent to the Complainant by e-mail.

The Complainant elected to have the case decided by an administrative Panel consisting of a single member. The Respondent did not elect a three - member Panel pursuant to the Rules, Paragraph 5(c) and the Center appointed Yves Van Couter on May 6, 2002. On the same date the Center transmitted the case file to the Panel and notified the parties of the projected decision date of May 20, 2002.

The Panel finds that the Center has adhered to the Policy and the Rules in administering this case.

Having carefully examined the evidence submitted, the Panel finds the following facts to be established:

- The Complainant, TOTAL FINA ELF S.A. is one of the world’s leading international petroleum companies with operations in over 100 countries.

- The Complainant is the owner of the following trade marks, copies of which appear at exhibit A16 to the Complaint:

- TOTAL FINA ELF n° 303710800 registered on June 21, 2000, for classes 1, 2, 3, 4, 5, 9, 11, 16, 17, 19, 35, 36, 37, 38, 39, 40, 41 and 42.

- TOTAL FINA n° 78084399 registered on March 5, 1999, for classes 1, 2, 3, 4, 5, 9, 16, 17, 19, 35, 36, 37, 39, 40, 41and 42.

- TOTALFINA n° 80721299 registered on August 5, 1999, for classes 1, 2, 3, 4, 5, 9, 16, 17, 19, 35, 36, 37, 39, 40, 41and 42.

- TOTALFINA n° 1291483 filed on August 27, 1999, for classes 1, 2, 3, 4, 5, 9, 16, 17, 19, 35, 36, 37, 39, 40, 41and 42.

- TOTAL FINA ELF N° 1 732 916 filed on June 30, 2000, for classes 1, 2, 3, 4, 5, 9, 11, 16, 17, 19, 35, 36, 37, 38, 39, 40, 41 and 42.

- The domain name <totalfinaelf.info> was registered by the Respondent on September 15, 2001; the domain name <total-fina-elf.info> was registered by the Respondent on September 18, 2001; the domain name <total-fina-elf.net > was registered by the Respondent on August 20, 2000; the domain name <totalfina.info> was registered by the Respondent on September 22, 2001.

- Hence, the Complainant’s aforementioned trade marks predate the registrations of the domain names by the Respondent.

- It is not contested that the Complainant’s trade marks are well-known worldwide.

- It is not contested that the Respondent is not and has never been a licensee of the Complainant and that the Respondent is not and has never been authorized by Complainant to use the trademarks.

- On January 18, 2002, the counsel to the Complainant, Mr. David Taylor, sent a letter by e-mail and by registered post to the Respondent pointing out the trade mark rights of the Complainant and requesting the Respondent to provide him with the following undertakings:

3. In the event that you (i.e. Respondent) do not agree to a transfer of the domain name to our client before a period of 14 days from your receipt of this letter, by email or registered post, we will initiate the appropriate action for the transfer of this domain name." (Exhibit A11 to the Complaint)

- On January 28, 2002, counsel to the Complainant received a letter from the counsel to the Respondent. Counsel to Complainant states that this letter is not added to the Exhibits to the Complaint as it was marked "Without Prejudice" and that such marking implies that the content of the letter cannot be disclosed.

- At the time the Complaint was filed:

- the domain name <totalfinaelf.info> did not resolve to an active website;

- the domain name <total-fina-elf.info> pointed to a holding page provided by Alldomains.com;

- the domain name <total-fina-elf.net> pointed to a holding page provided by Dotregistrar.com;

- the domain name <totalfina.info> pointed to a holding page provided by DomainZoo.com

(Exhibits A12 to A15 to the Complaint)

- Not having been able to obtain the voluntary transfer of the domain names at stake from the Respondents, the Complainant filed the present Complaint on March 18, 2002.

- From the information obtained from the Registrars it appears that two of the domain names concerned are active one is locked and one is put on hold.

The Complainant requests the Panel to issue a decision that the domain names <totalfinaelf.info>, <total-fina-elf.info>, <total-fina-elf.net> and <totalfina.info> be transferred to the Complainant. The Complainant invokes the following legal grounds as a basis for the requested relief:

The Complainant contends that the relevant parts of the domain names concerned are identical with or at least confusingly similar to its various trade marks TOTAL FINA ELF, TOTAL FINA and TOTALFINA:

- The domain name <totalfinaelf.info> is clearly identical to the Complainant's trade mark TOTAL FINA ELF. The adjunction of the letters "www" and the suffix .info do not distinguish the domain name from the Complainant's trade mark TOTAL FINA ELF.

- The domain name <total-fina-elf.info> is clearly identical to the Complainant's trade mark TOTAL FINA ELF. The adjunction of hyphens between the textual elements and the suffix .info do not distinguish the domain name from the Complainant's trade mark TOTAL FINA ELF.

- The domain name <totalfina.info> is clearly identical to the Complainant's trade marks TOTAL FINA and TOTALFINA. The adjunction of the letters "www" and the suffix .info do not distinguish the domain name from the Complainant's trade marks TOTAL FINA and TOTALFINA.

- The domain name <total-fina-elf.net> is clearly identical to the Complainant's trade mark TOTAL FINA ELF. The adjunction of hyphens between the textual elements and the suffix .net do not distinguish the domain name from the Complainant's trade mark TOTAL FINA ELF.

The Complainant refers to Magnum Piering, Inc. v. Mudjackers, WIPO Case No  D2000-0413 at page 6:

The Complainant also refers the Panel to Nikon Inc. and Nikon Corporation v. Technilab Inc., WIPO Case No. D2000-1774.

The Complainant alleges that there is nothing, which distinguishes the domain names at stake from the Complainant's trade marks TOTAL FINA ELF, TOTAL FINA and TOTALFINA, they wholly incorporate the Complainant’s registered trade marks, and are identical and confusingly similar for the purposes of the Policy, paragraph 4(a) (i).

The Complainant alleges that the Respondent has no rights and legitimate interests in respect of the Disputed Domain Names. The Respondent does not have any trade mark rights to the Disputed Domain Names and has never been authorized or otherwise permitted by the Complainant to use any of its trade marks or to apply for or use any domain name incorporating the terms of the Complainant's trade marks.

The Complainant's trade mark rights TOTAL FINA ELF, TOTAL FINA and TOTALFINA pre-date the registration by the Respondent of the Disputed Domain Names.

The Complainant registered TOTAL FINA ELF as a French trade mark on June 21, 2000 and as a Community trade mark on June 30, 2000. The Respondent registered the domain named <total-fina-elf.net> on August 12, 2000, <totalfinaelf.info> on September 15, 2001, and <total-fina-elf.info> on September 18, 2001.

In addition the Complainant registered TOTALFINA as a French trade mark on August 5, 1999, and as a Community trade mark on August 27, 1999, and the trade mark TOTAL FINA as a French trade mark on March 5, 1999. The Respondent registered the domain name <totalfina.info> on September 22, 2001.

The Complainant further contends that the Respondent is unable to rely on any of the circumstances prescribed in the Policy, paragraph 4(c) (i) (ii) and (iii):

i) Bona Fide use of domain name

Firstly, the Respondent cannot assert that, before it had notice of the dispute, its use of or demonstrable preparations to use the domain names was in connection with a bona fide offering of goods and services.

None of the domain names are currently being used by the Respondent:

<totalfinaelf.info> does not currently resolve to an active website.

<total-fina-elf.info> currently points to holding page provided by Alldomains.com.

<total-fina-elf.net> currently points to holding page provided by DotRegistrar.com.

<totalfina.info> currently points to holding page provided by DomainZoo.com.

Furthermore, there is nothing to suggest that the Respondent has demonstrably prepared to use the Disputed Domain Names in connection with a bona fide offering of goods and services.

ii) Commonly known by domain name

Secondly, pursuant to paragraph 4(c) (ii), the Respondent cannot assert that, it is commonly known by the domain names. The Respondent has no competing name or trade mark rights to these domain names.

iii) Legitimate non commercial or fair use

Thirdly, pursuant to paragraph 4(c) (iii), the Respondent cannot assert that it is making a legitimate non commercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's trade marks TOTAL FINA ELF, TOTAL FINA and TOTALFINA.

None of the domain names are currently being used. In any event, if the domain names had been used by the Respondent, such use would be illegitimate because it would be based upon the misappropriation of the Complainant's trade mark rights.

By knowingly choosing domain names which solely consist of the Complainant's trade marks, the Respondent has intentionally created a situation which is at odds with the legal rights of the Complainant. Such a situation negates any arguments that the Respondent may have to rights and legitimate interests in respect of the disputed domain names.

The Complainant alleges that the Disputed Domain Names have been registered and are being used in bad faith.

i) Bad faith registration

In the present proceedings, the Complainant's trade marks TOTAL FINA ELF, TOTAL FINA and TOTALFINA are well-known worldwide and the Respondent must have been aware of this reputation when he registered the domain names in issue. This repute extends to over 100 countries worldwide, including Spain where the Respondent is based. The Respondent cannot therefore argue that he was not aware of these trade marks.

Furthermore, the Complainant contends that the trade marks TOTAL FINA ELF, TOTAL FINA and TOTALFINA are invented and non generic. The Respondent's decision to register the domain names could not have been purely accidental.

The Complainant therefore submits that the Respondent's decision to register the domain names was, primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant, for valuable consideration in excess of its out-of pocket costs directly related to the domain names. Indeed the notoriety of the Complainant's trade mark rights are such that a prima facie presumption is raised that the Respondent registered the domain name for the purpose of selling them. (The Complainant refers to Arthur Guinness Son & Co. Ltd v Steel Vertigogo, WIPO Case No. D2001-0020).

Moreover, the fact that the Disputed Domain Names are not currently being used, indicates the Respondent's 'wait and see' approach towards the domain names. The Complainant submits that a prima facie presumption is raised that the Respondent registered the domain name for the purpose of selling them. Indeed, one of the domain names, <total-fina-elf.net>, points to the registrar site DotRegistrar.com, and mentions the following words:

This domain is registered at Dotregistrar.com by a customer and parked temporarily until the owner establishes a permanent site. To contact the owner of the domain "total-fina-elf.net", please email [email protected].

Just below the above message, the email address of the Respondent is repeated in bold large letters.

The Complainant contends that such wording is clearly inviting an approach from potential purchasers including the Complainant to transfer the domain names for a sum in excess of its out of pocket costs in registering them.

In addition, the Complainant contends that the pointing of 3 of the domain names to registrar holding pages may cause detriment to the Internet users wishing to access information on the Complainant. Visitors may perceive that the Complainant is associated with the registration of these domain names, and further, in the case of <total-fina-elf.net>, that the Respondent is connected in some way with the Complainant. The Respondent's actions in registering the Complainant's trade marks as the domain names means that the Complainant loses a certain amount of control over its brand and reputation on the internet. Furthermore, the Complainant has not authorized the Registrars to which the domain names are pointed, to advertise its domain name registration services on the back of the Complainant's trade mark rights, goodwill and worldwide reputation.

The Complainant further contends that the Respondent has registered the domain names in order to prevent Complainant from reflecting its trade marks in the corresponding domain names.

The Complainant refers to Nikon Inc. and Nikon Corporation v Technilab Inc.,WIPO Case No. D2000-1774 at page 6:

"the number of domain names that Respondent registered that contain Complainants' marks gives rise to the inference that Respondent has registered the domain names in order to prevent Complainant from reflecting their marks in the corresponding domain names".

And further in that same Decision:

The complainant contends that in the current dispute, the Respondent has, by registering the domain names, prevented the Complainant from reflecting its trade mark rights in these domain names, and has engaged in a pattern of such conduct. The fact that the Respondent has registered 4 domain names, on 4 different dates with 4 different registrars points strongly to a pattern of conduct designed to prevent the Complainant from reflecting its trade marks in these domain names.

Concerning the .info domain names, the Complainant states that although it did not itself register any of the domain names, during the sunrise period, this does not mean that the Respondent is entitled to rely on this fact to claim either rights or legitimate interests in registering the domain names or to claim that such registration lacked bad faith. There is nothing in the UDRP rules stating that a failure to use a sunrise period to register a domain name is detrimental to the rights of the Complainant in an administrative proceeding. The strength of the Complainant's trade mark rights extends beyond the availability of the sunrise period for .info domain names.

The registration by the Respondent of the domain names incorporating the exact trade marks owned by the Complainant with knowledge of such trade mark rights was in bad faith because it was done with evident prior knowledge of the Complainant's trade mark rights.

ii) Bad Faith Use

The Complainant contends that, although the Disputed Domain Names are not currently being used, such non use constitutes passive bad faith. Indeed there is no evidence whatsoever that the Respondent has any actual or contemplated good faith use of the domain names.

The Complainant refers to Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003 in which was determined that registration together with "inaction" can constitute bad faith use in certain circumstances.

In Telstra, the following two circumstances were mentioned by the Panel in finding that passive bad faith use existed since:

- the Complainant's trademark had a strong reputation and was widely known, as evidenced by its substantial use in Australia and in other countries;

- the Respondent provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name.

In the current dispute, the Complainant's trade mark rights have a strong reputation and there is no evidence of any actual or contemplated good faith use of the domain name.

The repute and non generic nature of the Complainant's trade mark rights is such that the Respondent must have had prior knowledge of these trade mark rights. Such actual or constructive knowledge accompanied with passive use of domain names constitutes bad faith use for the purpose of paragraph 4 (a) (iii).

The Complainant refers the Panel to Expedia; Inc. v European travel Network, WIPO Case No. D2000-0137 and Document Technologies v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 and Compagnie Générale des établissements Michelin-Michelin & Cie V. Mikkel Nielsen, WIPO Case No D2001-0660.

The Complainant concludes that it is not plausible to conceive of any actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, and the current non use by the Respondent of the Disputed Domain Names amounts to bad faith registration and use.

The Respondent did not file any response.

Under paragraph 15(a) of the Rules, the Panel must decide this Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

To qualify for transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:

(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 domain name; and

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

From the absence of any response filed by the Respondent, the Panel concludes that the Respondent does not deny the facts which the Complainant asserts, nor the conclusions which the Complainant asserts can be drawn from those facts.

Essential or virtual identity is sufficient for the purposes of the Policy: see The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc., WIPO Case No. D2000-0113, Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., WIPO Case No. D2000-0802 and Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102.

Panels have held that for purposes of assessing the confusing similarity between domain names and trademarks, top-level domain extensions, spaces, hyphens and punctuation are ignored. See Micron Electronics, Inc. v. Frank Holden d/b/a Magical Islands Sounds, NAF Case No. FA0103000096797.

Furthermore, in several decisions it was held that the addition of a hyphen to a mark makes a disputed domain name identical to the mark at issue. See Cytodyne Technologies, Inc. v. Royco a/k/a/ Jeffrey Roy, NAF Case No. FA0110000101317, InfoSpace.com v. Tenenbaum Ofer, WIPO Case No. D2000-0075, Chernow Communications, Inc. v. Kimball, WIPO Case No. D2000-0119, Columbia Sportswear Co v. Keeler, WIPO Case No. D2000-0206.

The Panel therefore holds that:

- The domain name <totalfinaelf.info> is identical to the Complainant's trade mark TOTAL FINA ELF.

- The domain name <total-fina-elf.info> is identical to the Complainant's trade mark TOTAL FINA ELF.

- The domain name <totalfina.info> is identical to the Complainant's trade mark TOTALFINA.

- The domain name <total-fina-elf.net> is identical to the Complainant's trade mark TOTAL FINA ELF.

No challenge has been leveled with respect to any of the Complainants contentions;

The Panel therefore concludes that the Respondent has no right or legitimate interest in respect of the domain names at stake.

Paragraph 4(b) of the Policy sets out, without limitation, certain circumstances which, if found are deemed to be evidence of use and registration in bad faith. The four factors listed in paragraph 4(b) are not exclusive but merely intended to assist the parties in establishing the strengths or weaknesses of their position (See Clerical Medical Investment Group Limited v. Clericalmedical.com, WIPO Case No. D2000-1228).

A finding of bad faith may be made where the Respondent "knew or should have known" of the registration and use of the trademark prior to registering the domain name: SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport, NAF Case No. FA0094956. Likewise Marriott International, Inc. v. John Marriot, NAF Case No. FA0094737; 163972 Canada Inc. v. Sandro Ursino, DeC Case No. AF-0211 and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com, NAF Case No. FA0095037.

Based on the evidence submitted, the Panel holds that the Respondent knew of or should have known of the Complainant’s trademarks at the time the Respondent registered the Domain Names given the widespread use and fame of the Complainant’s marks and the fact that the trademarks are invented and non generic.

There is no need for the Panel to investigate the other contentions of the Complainant as the situation mentioned above is in itself sufficient to proof bad faith registration.

Having held that the Respondent has no rights or legitimate interests in the domain names and considering the widespread use and fame of the Complainants’ trademarks and the fact that the Respondent does not actively use the domain names, the Panel concludes that the Respondent can reasonably only have had two reasons to register the domain names: either for the purpose of selling them, either for the purpose of deliberately preventing the Complainant from reflecting its trademarks in the corresponding domain names.

Therefore, the Panel holds that, although the domain names are not currently being used, such non use constitutes passive bad faith (see Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003, where the Panel held that registration together with inaction can constitute bad faith use in certain circumstances, e.g. when" the Complainants trademark has a strong reputation and was widely known" and "the Respondent provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name".)

The Panel therefore concludes that the Respondent registered and uses the domain names at stake in bad faith.

7. Decision

Pursuant to paragraphs 4 (i) of the Policy and 15 of the Rules, the Panel directs that the domain names <totalfinaelf.info>, <total-fina-elf.info>, <totalfina.info> or <total-fina-elf.net> be transferred from the Respondent to the Complainant.