WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TOTAL SA v. Chikelv Resources
Case No. D2017-2179
1. The Parties
The Complainant is TOTAL SA of Courbevoie, France, represented by In Concreto, France.
The Respondent is Chikelv Resources of Port Harcourt, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <totaloil-gas.com> (the “Disputed Domain Name”) is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2017. On November 7, 2017, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 7, 2017, the Registrar transmitted by e-mail 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 November 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2017.
On December 8, 2017, the Complainant requested the suspension of the proceedings to enable the Parties to discuss settlement. On December 11, 2017, the proceeding was suspended by the Center. On January 15, 2018, the Complainant requested the Center to reinstitute the proceeding due to the Respondent’s inaction to the settlement process. On the same day, the Center reinstituted the proceeding and informed the Respondent that the updated due date for Response was February 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Parties that it would proceed to Panel Appointment.
The Center appointed Lynda M. Braun as the sole panelist in this matter on March 13, 2018. 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, the world’s fourth largest international oil and gas publically-traded company, a chemicals manufacturer, and international energy company, employs approximately 98,000 employees in business operations in more than 130 countries worldwide. The Complainant has been in business for over ninety years and its business operations range from exploration to the marketing, trading and transportation of petroleum products, and development of next-generation sources. The Complainant is also a major actor in the areas of natural gas and solar energy.
The Complainant is a leader in Africa with 16% retail network with nearly 4,200 service stations and 2 million customers a day. The Complainant operates in 43 countries in Africa and notably in Nigeria, where the Respondent resides. The Complainant has been involved in exploration and production in Nigeria for more than 50 years, and also markets petroleum products and related services in the country.
The Complainant owns numerous trademarks for TOTAL, including trademarks in France, the European Union, and international trademarks in many countries worldwide (the “TOTAL Mark”) since at least 1992. In Global Finance’s 2017 ranking of top global brands, the TOTAL brand is ranked as the 65th most valuable brand.
In addition, the Complainant owns over a thousand domain names incorporating the TOTAL Mark, including the domain name at its official website, “www.total.com”, which it registered on December 31, 1996.
The Respondent registered the Disputed Domain Name on September 18, 2017. The website “www.totaloil gas.com” resolves to a promotional page of the UK2 company, which is the company that hosts the Disputed Domain Name. The website does not contain any content belonging to the Respondent. Moreover, the Respondent appears to be a serial cybersquatter, having registered multiple domain names over the past several years that correspond to, or contain, well-known trademarks, and in particular the trademarks of well-known oil and gas companies1. The Complainant has submitted evidence in the Complaint of such conduct by the Respondent.2
5. Parties’ Contentions
In summary, the Complainant contends that:
- The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
- The Disputed Domain Name was registered and is being used in bad faith; and
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to prevail in this proceeding:
(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 was registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the TOTAL Mark based on both longstanding use and its numerous registered trademarks worldwide. The Disputed Domain Name consists of the TOTAL Mark followed by the hyphenated descriptive words “oil-gas”, and followed by the generic Top Level Domain (“gTLD”) “.com”.
Numerous UDRP decisions have reiterated that the addition of a descriptive or generic word to a trademark is insufficient to avoid confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; Hoffman-La Roche, Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923; Nintendo of America, Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434. In the present case, the descriptive words “oil” and “gas” are associated with the Complainant and its business. See, e.g., Gateway Inc. v. Domaincar, WIPO Case No. D2006-0604 (finding the domain name <gatewaycomputers.com> confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”).
Moreover, the incorporation of a hyphen in the Disputed Domain Name does not impact the analysis of confusing similarity. Nu Mark LLC v. Privacydotlink Customer 3030896 / Garrett Boyd, WIPO Case No. D2017-2084 (panel disregarded the “hyphen” when conducting the confusingly similar analysis).
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may generally be disregarded when assessing whether a disputed domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its TOTAL Mark. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name.
Finally, where a respondent has registered and used a domain name in bad faith (see the discussion below), the respondent cannot for that reason be found to have made a bona fide offering of goods or services.
In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case.
The Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
Bad faith may be found where the Respondent knew of the registration and use of the TOTAL Mark prior to registering the Disputed Domain Name. See Façonnable SAS v. Names4sale, WIPO Case No. D2001‐1365. Such is the case here in which the Respondent registered the Disputed Domain Name long after the Complainant obtained its numerous registrations worldwide for the TOTAL Mark. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant’s trademarks). Moreover, the Respondent’s registration of a domain name containing the TOTAL Mark is evidence of its knowledge of the TOTAL Mark.
In addition, by using the Disputed Domain Name to resolve to a Registrar parking page and having no substantive content on the web page, the Respondent has registered and is using the Disputed Domain Name in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000 0003. The lack of use of a domain name without rights or legitimate interests in that domain name and that coincides with a well-known trademark owned by someone else constitutes bad faith under the Policy. See Itaú Unibanco Holding S.A. v. Valdery Dos Santos Decorações ME, WIPO Case No. D2009-1335; LACER, S.A. v Constanti Gómez Marzo, WIPO Case No. D2001-0177.
Further, the Panel finds that the Respondent used the Disputed Domain Name in bad faith by attempting to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s TOTAL Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent’s registration and use of the Disputed Domain Name indicates that such registration and use was done for the specific purpose of trading on the name and reputation of the Complainant and its well-known TOTAL Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain” and “[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law”.).
Finally, the fact that the Respondent has a history and pattern of bad faith registration of domain names incorporating the trademarks of third parties is further indication that the Respondent registered and used the Disputed Domain Name in bad faith.3
In light of the above, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <totaloil-gas.com> be transferred to the Complainant.
Lynda M. Braun
Date: March 23, 2018
1These include: <halliburton-ae.com>, <shell-turkey.com>, <bhpbilliton-usa.com>, and <petrobras-br-usa.com>.
2In addition, the Respondent has registered another domain name incorporating the TOTAL Mark, <total-uae.com>, which impersonated the Complainant’s Human Resources Department in an effort to offer false recruitment ads and job offers to users and to convince them to provide personal and other information to the Respondent. The Respondent sent fraudulent e-mails to the Complainant’s potential customers without the knowledge or authority of the Complainant in a phishing scheme.
Didn’t total-uae.com have a hyphen? If it did, please don’t delete. If not, deletion is ok.
3Specifically, the Respondent’s improper use of another domain name incorporating the TOTAL Mark, <total.uae.com>, was part of a phishing scheme to deceive the Complainant’s potential customers into believing that they were being contacted by the Complainant. In this phishing scheme, the Respondent sent e-mails to the Complainant’s potential customers under the name of the Complainant to fraudulently induce them to apply for positions at the Complainant. Such a phishing scheme is an indication of bad faith registration and use of that domain name. See CMA CGM v. Diana Smith, WIPO Case No. D2015-1774.