TotalFinaElf E&P USA, Inc. v. Marilyn
Farnes
Claim Number: FA0207000117028
PARTIES
Complainant
is TotalFinaElf E&P USA, Inc.,
Houston, TX (“Complainant”) represented by Karen
P. Flynn. Respondent is Marilyn Farnes, Tuscaloosa, AL
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <tfelf.com>,
registered with Verisign.
PANEL
The
undersigned certifies that he has acted independently and impartially and, to
the best of his knowledge, has no known conflict in serving as Panelist in this
proceeding.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 24, 2002; the Forum received a hard copy of the
Complaint on July 29, 2002.
On
July 26, 2002, Verisign confirmed by e-mail to the Forum that the domain name <tfelf.com> is registered with Verisign
and that Respondent is the current registrant of the name. Verisign has verified that Respondent is
bound by the Verisign registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
August 1, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 21,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@tfelf.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
September 9, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed the Honorable Charles K.
McCotter, Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to
employ reasonably available means calculated to achieve actual notice to
Respondent.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Respondent’s
<tfelf.com> domain name is confusingly similar to Complainant’s
TOTAL FINA ELF mark.
Respondent
has no rights or legitimate interests in the <tfelf.com> domain
name.
Respondent
registered and used the <tfelf.com> domain name in bad faith.
B.
Respondent
Respondent has failed to submit a
Response in this proceeding.
FINDINGS
Complainant is in the business of
exploration and production of oil and natural gas in the United States and in
certain offshore locations in the Gulf of Mexico. Complainant is an indirect subsidiary of TotalFinaElf, the fifth
largest oil company in the world.
TotalFinaElf is a company that resulted from the merger of Total and
Fina in June 1999 and then later with Elf Aquitaine S.A. in the fall of
1999. Since the merger, Complainant, as
a subsidiary of TotalFinaElf, asserts it has used the TOTAL FINA ELF service
mark.
Complainant claims to use the TOTAL
FINA ELF service mark to identify its off-shore platform wells, and that the
service mark is prominently featured on the company’s business locations and
its production facilities. In addition,
Complainant claims it uses the TOTAL FINA ELF service mark on its letterhead,
invoices and business cards.
Complainant goes on to state that an
organization, trading under the pseudo name TotalFinaElf InTech Department,
sent a solicitation for a long-term contract for the purchase of computer
components. The mailing further
explains that TotalFinaElf is now looking for technology suppliers in the United
States. Furthermore, the mailing is
apparently sent from a person identified as Luc Lambert. Complainant notes that TotalFinaElf has no
department labeled “InTech Department” and that Luc Lambert is not employed by
TotalFinaElf.
Complainant appears to believe that
Respondent is Luc Lambert because the mailing asks for proposals to be sent to
the email address it@tfelf.com.
However, Respondent, as evidenced by the WHOIS information page, is
Marilyn Farnes. The WHOIS information
page has Marilyn Farnes listed as the Administrative Contact, not Luc
Lambert.
Notwithstanding ownership of the
registration rights in the <tfelf.com> domain name, the domain
name is used as a means to link Internet users to the website of TotalFinaElf,
Complainant’s parent company, <totalfinaelf.com>. Complainant contends that it has not
authorized any person to use the <tfelf.com> domain name to link
to <totalfinaelf.com>.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to
“decide a complaint on the basis of the statements and documents submitted in
accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
cancelled or transferred:
(1) the domain name registered by the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights; and
(2) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(3)
the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Although Complainant asserts rights in
the TOTAL FINA ELF service mark through the 1999 mergers of Total, Fina and
Elf, Complainant provides no evidence of the service mark’s use. Complainant does contend to use the service
mark for various purposes, including, inter alia, for the company’s
letterhead, invoices and business cards.
Complainant, however, does not support its assertions with a shred of
evidence. Complainant does not supply
the Panel with a letterhead, invoice or business card. Rather, Complainant’s only submission of
evidence is the mailing that was sent out by the non-existent TotalFinaElf
InTech Department. Furthermore,
Complainant does not provide the Panel with any proof of registration or
application to register the TOTAL FINA ELF service mark with any authorized
trademark or service mark governing body.
Additionally, the domain name <tfelf.com>
is not identical or confusingly similar to the claimed service mark, TOTAL FINA
ELF.
In order to bring a claim under the
Policy, Complainant must establish a prima facie case. Complainant’s first hurdle is to provide
proof of valid, subsisting rights in a mark that is similar or identical to the
domain name in question. To prove such
rights in a mark, Complainant must provide relevant, credible and admissible
evidence. Complainant has not done so
and, therefore, Complainant does not have standing to bring the claim. See FRH Fries Rechenzerntrum v.
Ingenieruburo FRH, FA 102945 (Nat. Arb. Forum Jan. 18, 2002) (determining
that Complainant has not proven by a preponderance of the relevant, admissible
and credible evidence that the domain name in question is identical to a
trademark in which Complainant has rights despite Complainant’s mark being the
dominant feature of Complainant’s trade name).
The Panel finds that since Complainant
has not submitted sufficient evidence to establish standing, the issues of
rights or legitimate interests and bad faith need not be addressed.
DECISION
The claim is denied for failure to
establish Policy ¶ 4(a)(i) and the requested relief is DENIED.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: September 16, 2002
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