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Total S.A. v. LaPorte Holdings [2005] GENDND 1049 (22 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Total S.A. v. LaPorte Holdings

Case No. D2005-0483

1. The Parties

The Complainant is Total S.A., Courbevoie, France, represented by Lovells, France.

The Respondent is LaPorte Holdings, Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <careerstotal.com> is registered with NameKing.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2005. On May 3, 2005, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain name at issue. On May 5, 2005, NameKing.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 10, 2005. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2005.

The Center appointed Petter Rindforth as the Sole Panelist in this matter on June 8, 2005. 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.

The Projected Decision Date was June 22, 2005. The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in English.

4. Factual Background

The Complainant is a leading international petroleum company, tracing its origins back to the 1920’s, and with operations in over 130 countries. Complainant has grown in recent years through two mergers, that of Total and Petrofina (creating Totalfina) and Totalfina and Elf Aquitaine (creating TotalfinaElf). In May 2003, TotalfinaElf changed its name to Total. The Complainant is the world’s fourth largest oil and gas group and is also a major player in the chemical industry. In 2004, global sales amounted to 122,700 million euros.

The Complainant currently has over 110,000 employees spread over five continents. In view of the scale of its global recruitment needs, it set up an online recruitment website in 1998, originally launched as “www.careers.elf.com” but changed in 2003 to “www.careers.total.com”. The Complainant’s 200 recruitment staff therefore have convenient access to curriculum vitaes from applicants in over 170 countries via the website, which enables the centralization of job offers and job applications (a copy of Complainant’s Brochure of “Energy Resources & Human Resources” provided as Annex A3 of the Complaint). Approximately 300,000 resumes are received per year via the website, whereof many are from candidates in Nigeria. 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 (copies of articles - in French - from Le Monde Informatique, Courrier Cadres and Le Journal du Net provided as Annex A4 of the Complaint).

The Complainant is the registered proprietor of several trademark registrations, such as:

IR No. 813,234 “TOTAL”, registered on September 2, 2003, in respect of goods and services in Intl. Classes 1, 3, 4, 5, 17, 19, 35, 36, 37, 39, 40, 42 and 43, covering over 50 countries.

IR No. 591,228 “TOTAL” (figurative), registered on August 3, 1992, in respect of goods and services in Intl. Classes 1, 2, 3, 4, 5, 9, 11, 16, 17, 19, 37, 39, 41 and 42, covering over 20 countries.

Computer printouts from Trademarks are provided as Annex A6 of the Complaint.

The Respondent registered the disputed Domain Name <careerstotal.com> on October 8, 2003. No specific information is provided about the Respondent’s business activities except for what is stated below by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant only recently became aware of the Disputed Domain Name, which is currently pointing to a website containing various recruitment related links with titles such as “Job Vacancies”, “Employment Opportunities” and “Careers”. There is also a link entitled “Nigeria” (screen capture of the website provided as Annex A5 of the Complaint).

Complainant argues that <careerstotal.com> is confusingly similar to the Complainant’s registered trademark TOTAL, and points out that the fact that the Disputed Domain Name is <careerstotal.com> rather than <totalcareers.com> is significant, as the word “total” when placed after the word careers is clearly not being used in its generic sense, but in its trademarked sense. Many Internet users would therefore be confused and assume that the website associated with the disputed Domain Name is in some way connected with the Complainant.

In this respect, the Complainant refers to several previous UDRP cases, such as Heineken Brouwerijen B.V. v. Mark Lott, WIPO Case No. D2000-1487, where the Panel stated that “The domain name of the Respondent is composed of the word ‘planet’, which is a common term of English language, and the well-known mark HEINEKEN… In view of the fame of the well-known mark HEINEKEN the Panel is satisfied that, independently of the activities which may be connected with the domain name ‘planetheineken’, that domain name is likely to create confusion with potential users into the belief that a site operated under that domain name was operated or sponsored or otherwise affiliated with the Complainant. This is the more true as in view of the meaning of the word ‘planet’ the sequence ‘planetheineken’ is likely to create with potential users the impression that under that domain a kind of world of Heineken will be found, i.e. some place created around the beer brewer and the beer beverages HEINEKEN”. (A copy the case is provided as Annex B1 of the Complaint).

The Complainant further states that the Respondent has no rights or legitimate interests in respect of the Domain Name. A preliminary search by the Complainant revealed no trademark rights for TOTAL, in the name of the Respondent, within the European Community, the US or other searched countries.

The Respondent has never been authorized or otherwise licensed or permitted by the Complainant to use any of its trademarks, nor is the Respondent affiliated with the Complainant in any way. Respondent is not commonly known by the Domain Name.

There is nothing to suggest that the Respondent has demonstrably prepared to use the disputed Domain Name in connection with a bona fide offering of goods and services. According to the Complainant, Respondent’s use of a website to provide links to other services in such a way as to take advantage of Complainant’s goodwill, is not considered to be a bona fide offering in accordance with the Policy.

The Respondent is not making a legitimate non-commercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademarks. Complainant states that in light of the strong reputation and notoriety of it’s trademark and website at “www.careers.total.com”, it is inconceivable that the Respondent would not have been aware of the Complainant’s rights before his registration of the Disputed Domain Name.

The Complainant asserts that the Disputed Domain Name has been registered and is being used in bad faith.

The Respondent has 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. This is evidenced by the fact that the Respondent’s website contains not only prominent links relating to recruitment, but also a link entitled “Nigeria”. Over 50,000 resumes have been received by the Complainant from candidates based in Nigeria since February 2004 via the website “www.careers.total.com”. The Respondent’s decision to register the Disputed Domain Name cannot be a coincidence. Users seeking the Complainant’s website who inadvertently forget to insert the dot in between the words “careers” and “total” will in fact type the Disputed Domain Name and thus be connected to the Respondent’s website. The Complainant supports this statement by referring to Compagnie Générale des Etablissements Michelin CGEM - Michelin & Cie, Michelin Recherche et Technique S.A. v. Horoshiy Inc., WIPO Case No. D2004-0752 (provided as Annex B7 of the Complaint). In the said case, the Panel stated that “Respondent’s use of domain names containing the Complainants’ famous trademarks… for ‘click-through’ revenue generating sites which provide income to the Respondent by inducing Internet users to click through to sponsored links” was use in bad faith.

Since 2004, Respondent has been involved in a number of UDRP cases (a list of over 50 cases provided as Annex A7 of the Complaint). According to the Complainant, the Respondent did not reply to any of the complaints in question and each time the domain name at issue was ordered to be transferred. Complainant states that the entity behind the Respondent - LaPorte Holdings and it’s aliases - has “in fact been ordered to transfer domain names in over 136 different Panel decisions”. The Complainant therefore concludes that Respondent is engaged in a pattern of bad faith domain name registrations.

The Complainant requests, in accordance with paragraph 4(i) of the Policy, that the Administrative Panel issue a decision that the Domain Name be transferred to the Complainant, Total S.A.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainants must prove each of the following:

(i) that the Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant claims to be the owner of the mark TOTAL in a great number of countries worldwide. The Panel notes that this claim is not supported by translated copies of Certificates of Registrations, but only by printouts from a private company’s database for International Registrations. According to the website of the said database, it “should not be used as the sole basis for clearing a new name or for filing a trademark application”. Even if such printouts are not as reliable as a copy of the official Certificates, the Panel is nevertheless prepared - in this particular case - to accept Annex A6 as a proof of Complainant’s trademark rights in TOTAL, especially as TOTAL is also a well-known trademark in the oil and gas industry.

The relevant part of the Domain Name is “careerstotal”. The Panel concludes that the Domain Name consists of the word “careers”, followed by the trademark TOTAL. “Careers” is a generic addition to the mark, which is as such insufficient to distinguish Respondent’s Domain Name from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Limited. v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 (March 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term), see also Heineken Brouwerijen B.V. v. Mark Lott, WIPO Case No. D2000-1487 (cited by the Complainant).

In addition, the generic term “careers”, combined with TOTAL, directly refer to the extensive online recruitment services of the Complainant and thus add to the conceptual similarity between the Domain Name and the trademark TOTAL. See Space Imaging LLC v. Brownell, AF-0298 (eResolution September 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business).

Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s trademark TOTAL.

B. Rights or Legitimate Interests

The Respondent is not an authorized agent or licensee of the Complainant’s products and has no other permission to apply for any domain name incorporating Respondent’s trademark. The Respondent is not commonly known by the Domain Name.

By not submitting a response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.

The Respondent is not making a legitimate non-commercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademarks. On the contrary, the circumstances of the case strongly indicate that the Respondent was well aware of the existence of the Complainant’s mark and website before the registration of the Disputed Domain Name (see further below under “Registered and Used in Bad Faith”).

The Panel therefore concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

The Domain Name consists of the word “careers” followed by the mark TOTAL, therewith creating a domain name that is almost identical to the Complainant’s own domain name: <careers.total.com> – <careerstotal.com>.

In addition, the Disputed Domain Name points to a website with a number of job recruiting links, creating further similarities with the Complainant’s services. These links are presumed to be sponsored.

It is obvious to this Panel that the Respondent has registered and is using the Domain Name to intentionally attract, for commercial gain, Internet users to the said website, by creating a likelihood of confusion with the Complainant’s mark and the job recruiting services of the Complainant, provided by Complainant via its awarded website at “www.careers.total.com”.

Respondent is also engaged in the business of registering domain names consisting of others’ trademarks. The list of previous cases (Annex A7) speaks for itself and shows a flagrant pattern of bad faith conduct.

Given the above circumstances, the Panel concludes that the Domain Name is both registered and used in bad faith.

The Panel concludes that the Complainant has succeeded in proving the three elements within paragraph 4(a) of the Policy.

7. Decision

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, <careerstotal.com>, be transferred to the Complainant.

P-E H Petter Rindforth
Sole Panelist

Dated: June 22, 2005