TotalFinaElf E&P USA, Inc. v. Marilyn Farnes
Claim Number: FA0207000117028
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.
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.
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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to 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.
Respondent has failed to submit a Response in this proceeding.
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 email@example.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>.
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.
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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