WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Total S.A. v. Frank Marinaro
Case No. D2007-1728
1. The Parties
The Complainant is Total S.A. of Courbevoie, France, with internal representation by its legal division.
The Respondent is Frank Marinaro of New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain name <total-career.net> (the “Domain Name”) is registered with Melbourne IT trading as Internet Names Worldwide (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on November 22, 2007, and in hard copy on November 26, 2007. The Center transmitted its request for registrar verification to the Registrar on November 26, 2007. The Registrar responded the same day, confirming that it was the registrar and the Respondent was the registrant of the Domain Name, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the registration, that the Domain Name would remain locked during this proceeding, and that the registration agreement was in English and contained a submission to the jurisdiction of the courts as provided in the Policy. The Registrar provided the contact details in respect of the registration and stated that it had not received a copy of the Complaint.
The Center verified that the Complaint satisfied the formal requirements of the Policy, 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 28, 2007. The notification was sent to the Respondent at the contact details held by the Registrar by courier and email. The courier reported that the package had been safely delivered and no indication of non-delivery was received in relation to the email. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 18, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 24, 2007.
The Center appointed Jonathan Turner as the sole panelist in this matter on January 10, 2008. 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.
Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant is one of the world's leading international petroleum companies with operations in over 130 countries and 111,000 employees spread over five continents. The Complainant has registered TOTAL as a trademark in numerous countries.
In view of the extent of its global recruitment needs, the Complainant set up an online recruitment website in 1998. The website was originally launched at the address “www.careers.elf.com”, but this was changed to “www.careers.total.com” in 2003 following the Complainant’s change of name. The Complainant invested over 200,000 Euros in a new version of the website when it was re-launched in 2003. The new website was praised by various articles in the French press and was awarded a prize by Le Monde Informatique in 2004. This website has more than 300,000 visitors each month and has received more than 300,000 resumes from job applicants per year since 2003 through the centralized application system which it provides.
The Domain Name was registered by the Respondent on April 10, 2007, and was pointed at a website with a homepage headed “Welcome to Total Oil Company Career Web Site” together with a photograph of two workers wearing helmets similar to a photograph on the Complainant’s website. The page continued with the words: “Total offers numerous opportunities to professionals of all nationalities. On our site you will find vacancies written in the language necessary for the position being offered. Recruitment process will generally take place in Nigeria”. This reproduced text on the Complainant’s website, except that the words “in Nigeria” were used by the Respondent instead of “where the position is located” in the Complainant’s text.
The Respondent’s home page went on to state: “Several applicants have told us that recruitment organizations had approached them and requested payment in exchange for purportedly processing their application for a job at Total. Please be advised that Total, its subsidiaries and the organizations that it entrust with its recruitment requirements do not and will not ask for money […]. In other words, if a recruitment organization requests payment please be advised that they are not working on our behalf”.
The Respondent’s home page identified the provider of the site as “Total Recruitment Department” and set out various links purporting to offer “current vacancies in Total Oil Company” in different areas such as “Oil and Gas” and “Export/Import”.
The Respondent’s website was subsequently inactivated following the Complainant’s request to Microsoft, whose “Office Live” service had been used to register the Domain Name.
5. Parties’ Contentions
The Complainant contends that it has registered rights in the mark TOTAL and that the Domain Name is confusingly similar to this mark, particularly in view of the operation of the Complainant’s recruitment website at “www.careers.total.com”.
The Complainant further submits that the Respondent does not have any rights or legitimate interests in respect of the Domain Name or any corresponding name. The Complainant maintains that the Respondent’s use of the Domain Name for a website with “fake” references to “Total Oil Company” and “Total Recruitment Department” is not a fair use such as to give rise to rights or legitimate interests in the Domain Name.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith. In particular, the Complainant submits that the Respondent intentionally attempted to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website, as referred to at paragraph 4(b)(iv) of the Policy.
As mentioned above, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights, (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name, and (iii) that the Domain Name was registered and is being used in bad faith. These requirements will be considered in turn.
A. Identical or Confusingly Similar to Mark in which Complainant has Rights
It is clear that the Complainant has registered rights in the mark TOTAL. The Panel considers that the Domain Name is confusingly similar to this mark, since it consists of the mark together with a hyphen, the descriptive term “career” and the generic top level domain suffix. The likelihood of confusion is increased by the fact that the Complainant operates a well-publicised and extensively used website at “www.careers.total.com”. Internet users seeking this site are liable to assume that the Domain Name relates to this site and to the Complainant. The first requirement of the Policy is satisfied.
B. Rights or Legitimate Interests
The Panel considers that the Respondent has not used the Domain Name or any corresponding name in connection with a bona fide offering of goods or services. Nor has it made legitimate non-commercial or fair use of the Domain Name. On the contrary, it is apparent that the Respondent has used the Domain Name in bad faith, illegitimately and unfairly for a website which is designed to reinforce the deception of internet users initiated by the similarity of the Domain Name with the Complainant’s mark. As described above, the Respondent’s website contains material which indicates, contrary to the fact, that it is an official website of the Complainant.
The Panel is also satisfied that the Respondent is not commonly known by the Domain Name or any corresponding name and that there is no other basis on which the Respondent can claim to have rights or legitimate interests in respect of the Domain Name or a corresponding name. The second requirement of the Policy is satisfied.
C. Registered and Used in Bad Faith
It is evident from the content of the Respondent’s website that it was aware of the Complainant and its careers website. It is also clear that the Respondent’s website was designed to reinforce the confusion of internet users seeking the Complainant’s website who have been diverted by reason of the confusing similarity of the Domain Name to the Complainant’s mark. It is reasonable to infer that this was done with the intention of commercial gain, for example through click-through commissions and/or inducing the Complainant to purchase the Domain Name in order to limit the damage to its business. It is also reasonable to infer that the Domain Name was registered with this intention.
The Panel concludes that the Domain Name was registered in bad faith and was being used in bad faith until the Complainant intervened with Microsoft to stop it. Although the Policy requires that the Domain Name “is being used in bad faith”, it cannot be interpreted as requiring the bad faith use to be continuing in all cases at the date of the Complaint. Such an interpretation would create a gaping hole in the Policy in cases where either the Respondent takes evasive action or (as here) the Complainant takes steps to mitigate its damage. The condition must refer to the position prior to any such steps being taken. In any case, the continued holding of the Domain Name by the Respondent is in itself a passive use of the Domain Name which, in the circumstances of this case, is in bad faith. The third requirement of the Policy is satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <total-career.net> be transferred to the Complainant.
Dated: January 13, 2008