Decision for dispute CAC-UDRP-108978

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is the owner of the French word trademark MAUREL & PROM, Registration No. 4937414, filed on February 15, 2023 and registered on June 16, 2023, in Class 35 for wholesale and retail services relating to petroleum and gas products and energy.

The Complainant also operates its business through the domain names <maureletprom.com>, registered on September 9, 2009, and <maureletprom.fr>, registered on July 9, 2002.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant, MAUREL ET PROM, is a company specializing in the extraction of oil and natural gas, principally in Gabon and Tanzania. The Complainant states that it has a history of almost two centuries and an important portfolio of assets focused on Africa and Latin America. The Complainant states that it had 707 employees in 2021.

The disputed domain name <maurelprom.com> was registered on June 18, 2026. The Complainant states that the disputed domain name redirects to a parking page and that MX servers are configured for the disputed domain name.

The Complainant contends that the disputed domain name is confusingly similar to its MAUREL & PROM trademark. It asserts that the disputed domain name incorporates the trademark in its entirety and that the addition of the ".com" gTLD does not prevent a finding of confusing similarity. The Complainant further refers to previous UDRP decisions concerning its MAUREL & PROM trademark, including ETABLISSEMENTS MAUREL ET PROM v. Raymond Todd, CAC-UDRP-105898, <maureletsprom.com>, and ETABLISSEMENTS MAUREL ET PROM v. Nony313 Pucelle, WIPO Case No. D2023-4594, <maureletprom.net>.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It asserts that the Respondent is not identified in the WHOIS information by the disputed domain name and is not commonly known by it. The Complainant further asserts that the Respondent is not related to the Complainant in any way; that the Complainant does not carry out any activity for, nor have any business relationship with, the Respondent; and that the Respondent has not been licensed or otherwise authorized to use the Complainant's trademark and associated rights or to register the disputed domain name.

The Complainant further contends that the disputed domain name redirects to a parking page and that the Respondent has not used the disputed domain name or demonstrated any plan to use it. On this basis, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. It asserts that the disputed domain name is almost identical to its trademark and that the Respondent is located in France. Given what the Complainant describes as the distinctiveness and reputation of its rights, it submits that the Respondent registered the disputed domain name with knowledge of the Complainant's prior rights.

The Complainant further asserts that the disputed domain name is not actively used, but resolves to a parking page, and contends that there is no plausible actual or contemplated active use that the Respondent could make of the disputed domain name that would be legitimate. The Complainant additionally relies upon the configuration of MX servers for the disputed domain name, which it states suggests that the disputed domain name may be actively used for email purposes.

Accordingly, the Complainant requests transfer of the disputed domain name.

COMPLAINANT

The Complainant’s contentions are set out above.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

RESPONDENT

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

THREE ELEMENTS THE COMPLAINANT MUST ESTABLISH UNDER THE POLICY

According to paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements to obtain an order that a disputed domain name should be transferred or cancelled:

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

(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.

The Panel has examined the evidence available to it and has come to the following conclusions concerning the satisfaction of the three elements of paragraph 4(a) of the Policy in these proceedings:

(A) THE COMPLAINANT'S RIGHTS AND CONFUSING SIMILARITY OF THE DISPUTED DOMAIN NAME TO THE COMPLAINANT'S RIGHTS

The Complainant has demonstrated registered trademark rights in the MAUREL & PROM trademark. The relied-upon trademark predates the registration of the disputed domain name by more than three years.

A registered trademark constitutes sufficient evidence of rights for the purposes of paragraph 4(a)(i) of the Policy. The Panel therefore finds that the Complainant possesses rights in the MAUREL & PROM trademark.

The disputed domain name <maurelprom.com> reproduces two elements of the Complainant's trademark, MAUREL and PROM, in their entirety and in the same order, merely omitting the ampersand separating them. In the same fashion, it differs from the Complainant’s official domain names only by the omission of the conjunction "et" - French for “and”.

The Panel considers the Complainant's MAUREL & PROM trademark to remain clearly recognizable within the disputed domain name. The omission of the ampersand or conjunction separating the two verbal elements does not prevent a finding of confusing similarity.

The Panel notes that a previous panel reached a finding of confusing similarity between the Complainant's MAUREL & PROM trademark and the domain name <maureletsprom.com>, which similarly reproduced the principal verbal elements of the trademark with a minor variation. See ETABLISSEMENTS MAUREL ET PROM v. Raymond Todd, CAC-UDRP-105898.

The ".com" gTLD is generally disregarded for purposes of the confusing similarity assessment as it is a technical requirement of domain name registration.

Accordingly, the Panel concludes that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

(B) THE RESPONDENT'S LACK OF RIGHTS OR LEGITIMATE INTERESTS IN THE DISPUTED DOMAIN NAME

The second element of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests in the disputed domain name.

The generally adopted approach when considering the second element is that, where a complainant makes out a prima facie case that a respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating such rights or legitimate interests. The overall burden of proof nevertheless remains with the Complainant. See WIPO Overview of WIPO Panel Views on Select UDRP Questions (“WIPO Overview 3.1”), section 2.1.

The Panel has considered whether the record discloses any basis upon which the Respondent could claim rights or legitimate interests in the disputed domain name.

First, paragraph 4(c)(i) of the Policy contemplates circumstances in which, before notice of the dispute, a respondent has used, or made demonstrable preparations to use, a domain name in connection with a bona fide offering of goods or services.

The evidence here shows that the disputed domain name resolves to a standard webpage generated by the Registrar or hosting provider, LWS. The page states that the disputed domain name has been registered through LWS and predominantly promotes the Registrar's own hosting, domain name, VPS and related services.

The Panel does not consider that this evidence demonstrates any bona fide offering of goods or services by the Respondent. There is no evidence of an independent business operated by the Respondent under the name "Maurel Prom", nor of preparations by the Respondent to use that name in connection with any bona fide business. The Registrar-generated holding page does not, by itself, constitute such use by the Respondent.

Second, paragraph 4(c)(ii) concerns circumstances in which the Respondent has been commonly known by the disputed domain name, even in the absence of trademark rights.

The Respondent is identified as "Zoubier HARBAOUU". Nothing in that name corresponds to "Maurel Prom". There is no evidence before the Panel that the Respondent operates a business under that name, possesses trademark or other rights in that expression, or has otherwise been commonly known as "Maurel Prom".

Third, paragraph 4(c)(iii) permits a respondent to demonstrate rights or legitimate interests through legitimate non-commercial or fair use of a disputed domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the trademark at issue.

There is likewise no evidence of such use here. The disputed domain name has not been shown to be used for criticism, commentary, news reporting, education, a fan site, or any other form of legitimate non-commercial or fair use.

The Panel has also considered whether the composition of the disputed domain name itself might support some plausible independent legitimate interest. On the evidence before the Panel, however, the combination is highly significant. It reproduces, in the same sequence, both distinctive verbal components of the Complainant's MAUREL & PROM trademark, while merely removing the connecting ampersand or conjunction. It is also confusingly similar to the Complainant's longstanding <maureletprom.com> domain name apart from the omission of "et". The Complainant's <maureletprom.com> domain name has been registered since 2009 and its <maureletprom.fr> domain name since 2002.

These circumstances are reinforced by the fact that the Respondent is located in Paris, France, where the Complainant is also headquartered. Further, the Respondent registered the disputed domain name many years after the Complainant began operating under its corresponding name and domain names and more than three years after registration of the relied-upon MAUREL & PROM trademark.

None of these circumstances, viewed individually, would necessarily be determinative of the second element. In their totality, however, and in the absence of any evidence suggesting an independent reason for the Respondent's selection of the particular combination "maurelprom", the Panel finds that the Complainant has made out the required prima facie case.

The burden of production therefore shifts to the Respondent to demonstrate rights or legitimate interests in the disputed domain name. No Response has been filed and there is consequently no explanation before the Panel for the Respondent's selection of the disputed domain name, nor any evidence of rights or legitimate interests capable of rebutting the Complainant's prima facie case.

The Panel therefore concludes, on the balance of probabilities, that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

(C) BAD FAITH REGISTRATION AND USE OF THE DISPUTED DOMAIN NAME

The third element requires the Complainant to show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may constitute evidence of registration and use in bad faith. Accordingly, bad faith may be established on other grounds having regard to the totality of the circumstances.

The Panel finds, on the balance of probabilities, that the Respondent registered the disputed domain name with knowledge of, and in order to target, the Complainant and its MAUREL & PROM trademark.

The Complainant's trademark predates the registration of the disputed domain name by more than three years. Further, the Complainant's use of its corresponding name and domain names substantially predates the disputed domain name: <maureletprom.fr> was registered in 2002 and <maureletprom.com> in 2009. The disputed domain name reproduces both verbal components of MAUREL & PROM, in precisely the same order, while omitting only the conjunction or ampersand separating them. It similarly differs from the Complainant's longstanding <maureletprom.com> domain name only by omission of the two-letter French conjunction "et". Further, the Respondent is located in Paris, France, where the Complainant is also headquartered.

Taking these circumstances together, the Panel finds it more probable than not that the Respondent was aware of the Complainant when registering the disputed domain name. In the absence of any Response or other evidence providing an alternative explanation for the Respondent's choice of this particular combination, the Panel finds that the disputed domain name was registered in bad faith.

As to use in bad faith, the evidence indicates that the disputed domain name presently resolves to a standard Registrar-generated holding page rather than to a website independently developed by the Respondent. The Panel therefore does not base its finding of bad faith use on impersonation, fraudulent activity, or an affirmative attempt by the Respondent to pass itself off as the Complainant, none of which has been established on the evidence before the Panel.

However, it is well established that the non-use or passive holding of a domain name does not, in itself, prevent a finding of bad faith under the Policy. As first articulated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the question of whether passive holding constitutes bad faith requires consideration of the particular circumstances of the case and the Respondent's conduct.

This approach is reflected in section 3.3 of the WIPO Overview 3.1, which identifies as relevant factors: “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s taking active steps to conceal its identity or (iv) the use of false or inaccurate contact details (noted to be in breach of the respondent’s registration agreement)”. These factors are not cumulative requirements, and the Panel must consider the totality of the circumstances.

Applying these principles, the Panel notes in particular that the Respondent has failed to submit a Response and has therefore provided no explanation for its selection of the disputed domain name and no evidence of actual or contemplated good-faith use.

Further, on the record before it, the Panel finds it difficult to conceive of a plausible good-faith use of the disputed domain name by the Respondent. This is particularly so given the distinctive combination of the terms "Maurel" and "Prom", the close correspondence between the disputed domain name and the Complainant's trademark and longstanding domain names, and the absence of any explanation from the Respondent for its selection of that combination.

The Panel is mindful that not every instance of passive holding constitutes bad faith and that the circumstances identified in Telstra and section 3.3 of the WIPO Overview 3.1 must be considered in their totality. In particular, there is no evidence here that the Respondent provided false contact information or took affirmative steps to conceal its identity. The absence of these factors does not preclude a finding of bad faith where, as here, the remaining circumstances support such a conclusion.

The Panel also notes the Complainant's evidence that MX records have been configured for the disputed domain name. While the existence of MX records does not, without more, establish that the disputed domain name has actually been used for email or for any fraudulent purpose, it demonstrates the technical capacity for the disputed domain name to be used for email and forms part of the circumstances considered by the Panel.

Taking the circumstances as a whole, the Panel finds, on the balance of probabilities, that the Respondent's passive holding of the disputed domain name constitutes bad faith use within the meaning of paragraph 4(a)(iii) of the Policy.

Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.