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and Mediation Center
Total S.A. v. PayaHost Web Solutions
Case No. DIR2004-0001
1. The Parties
The Complainant is Total S.A., La Dйfense, Courbevoie of France, represented by Lovells, France.
The Respondent is PayaHost Web Solutions, Tehran, Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <total.ir> is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2004. On October 1, 2004, the Center transmitted by email to IRNIC a request for registrar verification in connection with the domain name at issue. On October 3, 2004, IRNIC 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. The Center verified that the Complaint satisfied the formal requirements of the .IR Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IR Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for .IR 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 October 7, 2004. In accordance with the Rules, paragraph 5(a), the due date for the Response was October 27, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 28, 2004.
However, on October 29, 2004, there was exchange of e-mail between the Center and the Respondent the contents of which will be considered by the Panel for the present decision.
The Center appointed Thomas Legler as the sole panelist
in this matter on November 3, 2004. 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,
4. Factual Background
On February 9, 2000, TOTAL FINA S.A. acquired the company Elf Aquitaine and changed its name to TOTAL FINA ELF S.A. On May 6, 2003, the company name was changed to TOTAL S.A., the Complainant in the present proceedings. The Complainant indicates that it is one of the world’s leading international petroleum companies with operations in over 100 countries. Its activities cover the entire range of the petroleum industry, from the exploration, development and production of petrol and gas, to the refining and distribution of petroleum products. The Complainant discovered in July 2004, that its trademark TOTAL and company name had been registered under .ir ccTLD by the Respondent. The Iranian NIC does not provide information as to the date of the registration of domain names in their Whois reports.
The Complainant is one of the world’s leading international petroleum companies with operations in over 100 countries.
It is the owner of the following trademarks pursuant to the exhibits produced by the Complainant:
- international wordmark TOTAL no. 813234 registered on September 2, 2003, for classes 1, 3, 4, 5, 17, 19, 35, 36, 37, 39, 40, 42 and 43;
- design trademark TOTAL no. 591228 registered on August 3, 1992, for classes 1, 2, 3, 4, 5, 9, 11, 16, 17, 19, 37, 39, 41 and 42;
- Iranian national wordmark TOTAL registered under no. 51332 on June 12,1997, and renewed for a period of 10 years as from June 12, 1999, for class 4.
Respondent is a seller of domain names. At the time when the Complainant filed
its Complaint, the Domain Name pointed to a website which indicated on the first
page that the Disputed Domain Name is for sale (Complainant’s Annex 3).
5. Parties’ Contentions
Complainant submits that it has been known under the name TOTAL since 1985, in connection with its goods and services. Over the years it has spent a substantial sum of money advertising under the name TOTAL and the country in which the Complainant’s activities are most developed is Iran.
The Complainant holds that the Domain Name is identical to several trademarks in which the Complainant has rights. Therefore, it considers having satisfied paragraph 4 (a)(i) of the Policy. Pursuant to the Complainant, the Respondent does not have any trademark rights to the Domain Name and has never been authorized or otherwise permitted by the Complainant to use any of its trademarks or to apply for or use any domain name incorporating the terms of the Complainant’s trademarks.
The Respondent’s use of the Domain Name is not in connection with a bona fide offering of goods or services. Persons visiting <total.ir> encounter a webpage offering to sell the Domain Name. Respondent is not commonly known or identified by the name TOTAL and Respondent does not operate a business or other organization commonly known as TOTAL, or offers any goods or services under the name TOTAL.
Finally, the Complainant contends that the Respondent is not making legitimate non-commercial or fair use of the Domain Name. Instead, it is seeking to make money from the Domain Name by offering it for sale.
Pursuant to the Complainant, the fact that the Domain Name is for sale is clear evidence of Respondent’s bad faith. This is also shown by the fact that the Respondent has registered a number of other domain names which are identical to well-known brands such as <bbc.ir> or <cocacola.ir>. This falls within paragraph 4(b)(ii) of the Policy which states that such a circumstance is evidence of the registration and use of a domain name in bad faith. Respondent cannot argue that he had no knowledge of the Complainant’s activity as Iran is one of the largest producers of oil in the world and that the Respondent is also the registrant of the domain name <rahant.com> which hosts the website of an Iranian company named “Rahantavan Co.” which acts as an intermediary in Iran and notably for companies in the oil industry. It is also submitted by the Complainant that the Respondent must have had the Complainant in mind when registering the Domain Name, not only in view of the worldwide renown of the Complainant, but additionally in view of the Complainant’s activities and registered trademark rights in Iran.
For the above reasons the Complainant concludes that the Respondent has registered the disputed Domain Name with prior knowledge of the Company TOTAL S.A. and is no trying to sell the Domain Name which constitutes bad faith within the purpose of the Policy.
In consideration of the foregoing, the Complainant asks for the transfer of the Domain Name to TOTAL S.A.
The Respondent did not file a formal response.
However, on October 29, 2004, Mr. Mohammad Maadani from PayaHost Web Solutions exchanged emails with the Center and Complainant’s counsel.
Mr. Maadani indicates that he did not know TOTAL S.A. and registered the Domain Name TOTAL as a “general word”. However, he indicated to be prepared to transfer the Domain Name to the Complainant if its registration and transfer fee would be paid back.
The Complainant replied that it would only be willing
to settle the dispute if the Domain Name was transferred to it at no cost and
that its legal fees for preparing the Complaint would be reimbursed by the Respondent.
Moreover, the Complainant repeated its main arguments already put forward in
6. Discussion and Findings
To qualify for a cancellation or a transfer of the Domain Name, the Complainant must prove each element of paragraph 4(a) of the Policy, namely:
- the disputed Domain Name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the Domain Name; and
- the Domain Name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar
The Domain Name is identical to Complainant’s international and Iranian wordmark TOTAL. Hence the Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
It is undisputed that the Respondent does not have any trademark rights to the Domain Name and has never been authorized or otherwise permitted by the Complainant to use any of its trademarks or to apply for or use any domain name incorporating Complainant’s trademark. It is also clear from the facts that the Respondent is not commonly known by the Domain Name (paragraph 4(c)(ii) of the Policy) nor can it claim any legitimate non-commercial or fair use of the Domain Name in the sense of paragraph 4(c)(iii) of the Policy.
The question remains whether the Respondent may invoke paragraph 4(c)(i) of the Policy providing for a legitimate use of a domain name in connection with a bona fide offering of goods or services. Complainant rejects such a view since Respondent seeks to make money from the Domain Name by offering it for sale on its website.
However, the Panel reminds that selling domain names is in itself not prohibited and may amount to a bona fide offering of services. This is in particular the case where a company registers and tries to sell common terms. In this context, the Panel notes that the mark TOTAL has less distinctive character although it is not descriptive for the products and services for which it has been registered and has to be considered as a well-known trademark.
In view of that well-known character and the fact that the Respondent must have been aware of it (see below C.), the Panel concludes that the sale of the Domain Name in question cannot be considered as a bona fide offering.
Consequently, the Respondent has not demonstrated any rights or legitimate interests in the Domain Name.
C. Registered or Used in Bad Faith
As indicated above, the Policy requires that the Domain Name has been registered or is being used in bad faith (paragraph 4(a)(iii) of the Policy). The Panel has serious doubts as to Respondent’s allegation that it did not think of Complainant when it registered the Domain Name. Indeed, TOTAL S.A. is one of the largest oil companies in the world and its trademarks have to be considered as well-known. Complainant’s trademark is also registered in Iran, Respondent’s country of origin. The Panel concurs with the Complainant that Respondent cannot argue that it had no knowledge of Complainant’s activity, as Iran is one of the largest producers of oil in the world and as the Respondent is also the registrant of the Domain Name <rahant.com> which hosts the website of an Iranian company linked to the oil industry. Moreover, a diligent seller of domain names should have conducted a trademark data base search which would have easily shown that the disputed Domain Name could not be registered without conflicting with Complainant’s trademark rights.
Finally, the Panel notes that the fact that Respondent has also registered the well-known brand <cocacola.ir> demonstrates that it engages in a non-legitimate sale of domain names indicating its bad faith intentions.
Consequently, the Complainant has also shown that the Respondent has registered
the Domain Name in bad faith.
For all the foregoing reasons the Panel orders that the domain name <total.ir> be transferred to the Complainant.
Dated: November 15, 2004