WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Total S.A. v. Gustavo Cerda

Case No. D2011-2073

1. The Parties

1.1 The Complainant is Total S.A. of Paris, France, represented by Gide Loyrette Nouel, France.

1.2 The Respondent is Gustavo Cerda of Tucson, Arizona, United States of America.

2. The Domain Names and Registrar

2.1 The disputed domain names <totalsa.net> and <totalsa.org> (the “Domain Names”) are registered with CSL Computer Service Langenbach GmbH dba Joker.com (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2011. On November 25, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. In two emails dated November 28, 2011, the Registrar provided the Center with its verification response confirming that the Respondent was listed as the registrant and providing the contact details in relation to each of the Domain Names.

3.2 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”).

3.3 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 23, 2011.

3.4 On January 6, 2012, the Center sent an email to the Registrar expressing concern that the Domain Names appeared to have entered their Redemption Period and requesting clarification as to the status of the Domain Names. The fact that the Domain Names had been frozen was confirmed in an email from the Registrar to the Center on January 10, 2012.

3.5 On January 3 2012, the Center sent a further email, this time to an email address appearing in the Who Is record for the Domain Names. It recorded that although the Complaint appeared already to have been successfully delivered by email and hard copy to the Respondent, it had not previously been sent to that additional email address. It, therefore, stated that the Respondent had a further three days to indicate to the Center whether it intended to participate in these proceedings. An automated email response was received by the Center in response to that email. No substantive response was forthcoming.

3.6 The Center appointed Matthew S. Harris as the sole panelist in this matter on January 25, 2012. 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

4.1 The Complainant is a well-known oil company. Although based in France, it has operations in over 130 countries. It can trace its history back to the 1920s and adopted its current name in May 2003. Its annual report for 2010 recorded global sales of EUR 159 billion.

4.2 The Complainant is the owner of various trade marks around the world that comprise or incorporate the term “Total”. They include:

(i) International trade mark no R402,409 (relying on a French priority mark dated April 25, 1973) for the stylized text TOTAL in classes 1, 3, 4, 19 designating various European and Asian countries; and

(ii) United States registered trade mark no 2,999,615 filed on June 13, 2003 and registered on September 27, 2005 in classes 1, 4, 17, 19, 35, 36, 37, 39, 40, 42, 43 for the following device:

4.3 The Complainant is also the owner of various domain names including <total.com> and <total.eu>.

4.4 According to the publically available WhoIs database, both of the Domain Names were registered on June 26, 2010.

4.5 On May 20, 2011 an email purporting to be from the Complainant’s Chief Financial Officer was sent from an email address using the <totalsa.org> domain name to Hudson Valley Petroleum LLC. In fact the email was “fake” and had not been authorised by the Complainant.

4.6 As at the date of this decision, no substantive website is displayed from the Domain Names (although the <totalsa.net> Domain Name resolves to a holding page of an ISP named “Wannafind”).

5. Parties’ Contentions

A. Complainant

5.1 In its Complainant the Complainant refers to the fake email sent to Hudson Valley Petroleum using the <totalsa.org> Domain Name. It claims this is just one of a large number of fake emails using that Domain Name that have been sent further to various Internet frauds and phishing scams. In this respect it provides a copy of a report in French from a French bailiff.

5.2 The Complainant also contends that at one point the <totalsa.org> Domain Name was being used to host a website that was a copy of the Complainant’s genuine corporate site. It claims that the reason why there is currently no active website operating from this Domain Name is that it wrote to the ISP host of that site and as a consequence the websites “www.totalsa.org” and “www.totalsa.net” were blocked.

5.3 The Complainant refers to its registered trade marks and contends that each case of the Domain Names comprise its TOTAL mark combined with the letters “sa” and the relevant TLD. It maintains that the letters “sa” are being used in the Domain Names as an abbreviation of “société anonyme”; a form of company under French law. Accordingly, “totalsa” is said to be a reference to Total S.A. i.e. the Complainant’s full corporate name. In the circumstances, the Domain Names are said to be confusingly similar to the Complainant’s marks.

5.4 The Complainant asserts that the Respondent has no trade mark rights in the term “total” having conducted searches at WIPO and Office of Harmonization for the Internal Market (OHIM) and in the United States, United Kingdom, French Canadian, German, Japanese and Australian trade mark registries. It confirms that it has not authorised the Respondent to use its trade marks and denies that the Respondent is known by the Domain Name or is using the Domain Name in connection with a bona fide offering of goods and services.

5.5 On the issue of bad faith the Complainant contends that the Respondent’s use of the Domain Names as part of email addresses used in connection with “scam of phishing” activities amounts to bad faith. It relies in this respect on Halifax plc v. Sontaja Sunducl, WIPO Case No. D2004-0237 and Samsung Electronics Co., Ltd. v. Albert Daniel Carter, WIPO Case No. D2010-1367. It also claims that the Respondent has acted contrary to Article 5(v) of the Registration Agreement that applies to the Domain Names. It also refers to the Respondent’s failure to respond to a letter before the Complaint was filed which is also said to evidence bad faith.

B. Respondent

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

6. Discussion and Findings

6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.

6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules as set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that:

(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and

(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)).

6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.

A. Identical or Confusingly Similar

6.4 The Panel accepts that each of the Domain Names can most sensibly be understood as a combination of the word “Total” with the letters “sa” and the “.net” and “.org” TLDs. Further the Panel accepts that each of the Domain Names is confusingly similar (as that term is understood under the Policy) to the Complainant’s marks that comprise the word “Total” in stylized text. Each of the Domain Names incorporates the word represented in such marks in its entirety and the addition of the letters “sa” does not so detract from the word “Total” that the Domain Names would no longer be read as incorporating the same. Indeed, it accepts the Complainant’s contention that the addition of these letters are most likely to be read as a reference to “société anonyme”.

6.5 Given that finding, it is not necessary to consider whether the Domain Names are also confusingly similar to the Complainant’s marks that comprise the word “Total” in combination with a circular mark of the sort of which United States registered trade mark no 2,999,615 is an example. However, the Panel is of the view that the Domain Names are confusingly similar to these marks as well. In the case of these marks the word “Total” is the sole textual and a prominent element of the marks. There is also no suggestion that the word “Total” is solely descriptive of any of the goods and services in respect of which the mark is registered (as to which see the analysis of the three member panel in Jobs on the Net Limited, Andrew Middleton v. International New Media Limited, WIPO Case No. D2011-1531).

6.6 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests and Registered and Used in Bad Faith

6.7 This is a case where it is both more convenient and sensible to consider the issues of rights or legitimate interests and bad faith together. The Complainant’s contention is ultimately a straight forward one. It contends that the Domain Names were registered and have since then been used as part of a scheme to impersonate the Complainant with a view to the furtherance of various scams and frauds.

6.8 If true, such activity cannot provide a right or legitimate interest in the Domain Names and is positive evidence of a lack of that right or interest. Further, the registration and use of a domain name for such a purpose are clear examples of bad faith registration and use.

6.9 The Panel is persuaded that this was indeed the motivation of the Respondent in this case. First, there is the Domain Names themselves. The Panel accepts that the most natural reading of the Domain Names is as a reference to the full corporate name to the Complainant. Second, there is the fact that the <totalsa.org> Domain Name has been used as part of an email address for at least one email that falsely claimed to have been sent from the Complainant’s Chief Financial Officer. Third, there is the undisputed claim of the Complainant claim that the <totalsa.org> Domain Name has been used to host a website that copied the Complainant’s corporate website.

6.10 As far as the Panel can tell there is no direct evidence before it that would suggest that the <totalsa.net> Domain Name has been used at all. However, the facts that save for having a different TLD, it is identical the <totalsa.org> Domain Name, it was registered on the same day and it was registered in the name of the same registrant, make it reasonably clear that both Domain Names were registered together as part of the same enterprise. They therefore stand or fall together.

6.11 The Panel would have preferred that parts of the Complainant’s case were evidenced somewhat more fully. For example, part of the Complainant’s evidence to support its contention that the Domain Names have been used for emails used to further various fraudulent activities takes the form of a French language bailiff’s report. The Panel appreciates that the use of such reports is common in French litigation, but it is not particularly helpful in proceedings that are being conducted in English under the Policy. Further, many of the exhibits to that report as annexed to the Complaint are illegible. Also, although the Panel has no reason to disbelieve the Complainant’s claim that the <totalsa.org> Domain Name had been used to host a website that copied the Complainant’s corporate website, the Complainant does not exhibit a screenshot or print out that clearly evidences this.

6.12 That this evidence is not as full and easy to follow as it might have been, is a concern where, as here, the allegation being made against a respondent is of one fraud and dishonesty. In all cases under the Policy a complainant must prove its case on the balance of probabilities. The test is no different when fraud or dishonesty is alleged. However, as many legal systems have recognised, the more serious the allegation, the less likely it is to be true and therefore the more cogent the evidence must be before the balance of probabilities test is satisfied¹.

6.13 Nevertheless, such material as has been provided by the Complainant is consistent with and broadly supportive of the Complainant’s contentions. By way of example, although the Complainant does not exhibit a copy of the website that is said to be a copy of its own site, it does exhibit a copy of an email dated October 4, 2011 that appears to have been sent to the “abuse team” of the ISP hosting that site. In that email it complains about the “web site totalsa.org [that] encapsulates our corporate web site “www.total.com” by using frames”.

6.14 In the circumstances the Complainant has made out the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

7. Decision

7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <totalsa.net> and <totalsa.org> be transferred to the Complainant.

Matthew S. Harris
Sole Panelist
Dated: February 8, 2011

¹ For example, English lawyers are likely to be familiar with the following comments of Lord Nicholls in the case of In re H (Minors) [1996] AC 563 (at 586):

"... the more serious the allegation the less likely it is that the event occurred and, hence, the stronger should be the evidence before the court concludes that the allegation is established on the balance of probability. Fraud is usually less likely than negligence. Deliberate physical injury is usually less likely than accidental physical injury. ... Built into the preponderance of probability standard is a generous degree of flexibility in respect of the seriousness of the allegation. Although the result is much the same, this does not mean that where a serious allegation is in issue the standard of proof required is higher. It means only that the inherent probability or improbability of an event is itself a matter to be taken into account when weighing the probabilities and deciding whether, on balance, the event occurred. The more improbable the event, the stronger must be the evidence that it did occur before, on the balance of probability, its occurrence will be established."