WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Total S.A. v. Name Redacted

Case No. D2016-1673

1. The Parties

The Complainant is Total S.A. of Courbevoie, France, represented by In Concreto, France.

The Respondent is Name Redacted of the United States of America¹.

2. The Domain Name and Registrar

The disputed domain name <totalhrrecruitment.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 17, 2016. On August 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 20, 2016, the Registrar transmitted by email 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 "Rules").

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2016.

On August 31, 2016, the Center received an email communication from a person matching the named Respondent informing that he had been victim of identity theft. The same person sent further email communications to the Center on September 7, 2016 and September 27, 2016.

On September 7, 2016, the Complainant filed a Supplemental Filing.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on September 28, 2016. 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 is TOTAL S.A., a French company with activities in oil and gas exploration and production, refining, petrochemicals, fuel and lubricant marketing, natural gas and solar energy.

The Complainant owns the following trademark registrations:

The disputed domain name <totalhrrecruitment.com> was registered on November 22, 2015.

5. Parties' Contentions

A. Complainant

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant asserts its trademark TOTAL has achieved a reputation and a certain fame in its field of activity.

The disputed domain name <totalhrrecruitment.com> entirely comprises the trademark TOTAL.

The addition of a descriptive word such as "recruitment" does nothing to remove the likelihood of confusion between the disputed domain name and the Complainant's mark. Moreover, the Complainant asserts that the addition of said word exacerbates the likelihood of confusion.

The element "hr" conveys the idea that the disputed domain name emanates from the human resources department of the Complainant.

That generic Top-Level Domains ("gTLDs") are usually disregarded in evaluating confusing similarity.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant argues that the Respondent has no rights to, or legitimate interests in the domain name.

The Complainant has not authorized, licensed or permitted the Respondent to use any of its trademarks, or to apply for or use any domain name incorporating the Complainant's trademark.

The Respondent is not offering goods or services, and has not a priori made a serious preparation for that purpose.

The Complainant knew of the disputed domain name due to a fraud in which false recruitment ads of the Complainant were being displayed.

An individual informed the Complainant that he had received emails from an address incorporating the disputed domain name, containing a formal letter, which was supposedly issued by the Complainant's office of human resources. In said letter, the individual was being invited to a job interview.

The Complainant argues that the individual was directed to a travel consultant in order to arrange the travel for the supposed job interview, and that during said travel procedures, the individual was requested to transfer USD 1,800 to an account for said travel to take place.

The Complainant argues that its human resources department was not responsible for these messages.

The disputed domain name was used to create an email address to usurp the identity of the Complainant and impersonate its human resources department to obtain commercial gain from fraudulent practices.

The Complainant found a board of complaints on the Internet, in which users explained that the email address incorporating the disputed domain name was being used to send false job offers. The Complainant asserts that said email was associated to the disputed domain name.

The disputed domain name was registered for the sole purpose of impersonating the Complainant and using the reputation of its brands to set up a recruitment fraud.

(iii) The disputed domain name has been registered and is being used in bad faith.

The Complainant argues that by registering the disputed domain name, which is confusingly similar to the Complainant's marks, without any authorization granted by the Complainant, the Respondent has demonstrated its bad faith.

The Respondent's bad faith may be presumed inasmuch the TOTAL marks have acquired a certain reputation and fame in the field of industry in which it has specialized.

The Respondent was necessarily aware of the existence of the Complainant and its exclusive rights to the denomination TOTAL.

Any attempt to use the disputed domain name would inevitably lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent's website among Internet users.

Internet users would inevitably be led to believe that the disputed domain name would be owned, controlled, established by, or somehow associated with the Complainant.

This recruitment fraud proves that the Respondent was necessarily aware of the existence of the Complainant and its rights over the TOTAL mark.

That the disputed domain name has been registered and is used in order to usurp the identity of the Complainant's human resources department in order to obtain an improper profit.

The Complainant's Supplemental Filing

On September 7, 2016, the Complainant submitted a new document, containing the following information:

- That the person named as the Respondent had sent an email to the Center.

- That according to the person named as the Respondent, the disputed domain name had been registered by a third party under a false name.

- That he proposed that the disputed domain name should be transferred to the Complainant, or cancelled.

- That the fraudulent registration of the disputed domain name under a false name, and submitting false contact information, constitute additional grounds to conclude that the Respondent registered said disputed domain name in bad faith.

B. Respondent

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

However, a Response was in fact filed by the person named as the Respondent, stating that he has no interest in the disputed domain name.

The domain has been registered using his name and address, but that he is not the Registrant, Administrator, or the Technical contact for the disputed domain name.

He has submitted a document to ICANN to have his name removed from the WhoIs database in relation to this domain name.

Other than the physical address, the information listed in the WhoIs database is not his contact information and that the email addresses and telephone number that are referenced in the corresponding database do not belong to him.

6. Discussion and Findings

According to the Policy, to qualify for a cancellation or transfer, a complainant must prove each of the elements listed below:

(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 has been registered and is being used in bad faith.

In light of the Response filed by the person named as the Respondent, this appears to be a case of identity theft. Accordingly, all references to the Respondent in this Decision, and the findings of the Panel set out hereafter, refer to the actions of the true person behind the disputed domain name registration, who wrongly used the name of another person as the registrant of the disputed domain name (see Accenture Global Services Limited v. Domains By Proxy, LLC / Name Redacted, WIPO Case No. D2013-2099; and Boehringer Ingelheim Pharma GmbH & Co. KG v. Name Redacted, WIPO Case No. D2012-0890).

Considering that the true person behind the domain disputed name registration has failed to reply to the Complainant's assertions, the Panel may choose to accept the reasonable contentions of the Complainant as true. This Panel will determine whether those facts constitute a violation of the Policy, sufficient to order the transfer of the disputed domain name (see, Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech, WIPO Case No. D2006-0292).

A. Identical or Confusingly Similar

The disputed domain name <totalhrrecruitment.com> is confusingly similar to the Complainant's trademark TOTAL, as it includes said trademark in its entirety.

Although the disputed domain name also includes the letters "hr" and the term "recruitment", said fact does not avoid a finding of confusing similarity of the disputed domain name as compared to the Complainant's trademarks (see, The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137; British Telecommunications public limited company v. Joshua Stone, Openreach Telecom Ltd., WIPO Case No. D2015-0162).

The addition of the gTLD ".com" is immaterial for purposes of assessing confusing similarity. For this reason, the Panel will not take into account the gTLD ".com" (see Diageo p.l.c. v. John Zuccarini, WIPO Case No. D2000-0541).

The Panel finds that the disputed domain name is confusingly similar to the Complainant's TOTAL trademarks. The first requirement of the Policy has been met.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:

(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

According the information and images provided in the Complaint, and the exhibit to said Complaint, at least two Internet users have received messages sent from email addresses incorporating the disputed domain name, in which a third party has impersonated the human resources department of the Complainant, and has offered job opportunities to these individuals.

Consistent with the message sent by an Internet user, which is contained in the same exhibit, in order to gain access to these job opportunities and be interviewed, the recipients of the emails sent from an address incorporating the disputed domain name were instructed to contact a travel agency and arrange the issuance of a visa. The recipients were requested to transfer an amount of money in order to be able to participate in the supposed interview in the United States.

As stated by the Complainant, the messages sent from the email addresses that incorporate the disputed domain name, have no connection to the Complainant, or its human resources department.

According to the evidence contained in the case file, the Respondent wrongfully used the name and identity of another person to register <totalhrrecruitment.com>.

Given the circumstances surrounding this case, the Panel finds that the Respondent has evidently registered the disputed domain name in order to carry out a recruitment fraud scheme.

The use of the disputed domain name as part of a recruitment fraud scheme cannot possibly constitute a finding of rights to, or legitimate interests in the disputed domain name on the side of the Respondent (see, mutatis mutandi, BHP Billiton Innovation Pty Ltd (BHP Billiton Innovation) v. WHOIS Privacy Protection Service Inc. / Gabriel Herbert, WIPO Case No. D2014-1120; The Prudential Assurance Company Limited v. Domain Place, domainplace, WIPO Case No. D2009-1014, and Stora Enso Oyj v. Hoang Nguyen, WIPO Case No. D2010-1757).

Finally, this Panel accepts that the Complainant has presented a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name, thus shifting the burden of production to the Respondent. In the absence of a Response, or any evidence submitted by the Respondent to rebut the Complainant's allegations, this Panel finds that the Respondent has no rights or legitimate interests over the disputed domain name (see, Allianz SE v. Fernando Notario Britez / Oneandone, Private Registration, WIPO Case No. D2013-0279; and Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270).

The second element of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:

(i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.

The Complaint includes evidence that the Complainant's TOTAL trademarks have been widely advertised across the globe, including the United States, a jurisdiction in which the Respondent may be domiciled. The casefile shows that the TOTAL trademarks have acquired a certain reputation in the industry in which the Complainant participates.

As discussed above, the Respondent has used the disputed domain name with the purpose of sending emails associated with the disputed domain name, impersonating the Complainant to carry out fraudulent activities.

By impersonating the Complainant and its human resources department, and asking the alleged potential candidates for a money deposit, the Respondent has deceived Internet users, and exploited the Complainant's goodwill for illegitimate financial gain. According to other UDRP panels, with whom this Panel agrees, evidence of a disputed domain name being used as part of a recruitment fraud scheme constitutes evidence of bad faith (see, Société des Hotels Meridien v. WhoIs Guard / Jim Thiam, WIPO Case No. D2011-1030; and Starwood Hotels & Resorts Worldwide, Inc. The Sheraton LLC, and Sheraton International, Inc. v. PrivacyProtect.org / power mark consult, mark pd, WIPO Case No. D2012-1125).

Presented with similar facts, other panels have decided that the use of a website which is associated with fraudulent activity provides compelling evidence of use and registration of a domain name in bad faith (see, Warwickshire Oil Storage Limited v. WWOSLTD, WIPO Case No. D2016-1482; Grupo Financiero Inbursa, S.A. de C.V v. inbuirsa, WIPO Case No. D2006-0614; and Banca Intesa S.p.A. v. Moshe Tal, WIPO Case No. D2006-0228).

Likewise, in cases specifically concerned with advance fee fraud, previous UDRP panels have found the disputed domain name to have been registered in bad faith where the disputed domain name was used for fraudulent activity (see, La Française des Jeux v. Michael E Wilkins, WIPO Case No. D2009-0898;and Monarch Airlines Limited v. Richard Nani, WIPO Case No. D2012-2484).

The Respondent has impersonated the Complainant by offering potential employment opportunities with the purpose of acquiring illegal economic gains, tarnishing the Complainant's reputation and its trademarks' fame.

Taking into account that the Respondent has not only impersonated the Complainant to implement advanced fee fraud, but that the Respondent has also impersonated the person whose name and identity was used by the Respondent to register the disputed domain name, it is clear that the third element of the Policy has been satisfied.

7. Decision

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

Kiyoshi Tsuru
Sole Panelist
Date: October 12, 2016

¹ The Panel notes that the registrant has fraudulently used a third-party's identity when registering the disputed domain name and has redacted the name of the Respondent. The Panel attaches Annex 1 to this Decision as an instruction to the Registrar, that includes the named Respondent. The Pamel instructs the Center to transmit Annex 1 to the Registrar, but directs the Center not to publish Annex 1 based on exceptional circumstances. See Tetra Laval Holdings & Finance S.A. v. Registration Private, Domains By Proxy LLC / Name Redacted, WIPO Case No. D2016-0783.