Decision for dispute CAC-UDRP-107180

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

The Complaint is based amongst others on European Union Trademark "TOTAL ENERGIES" (verbal) no. 018308753, registered on 28 May 2021 for goods and services in classes 1, 2, 3, 4, 5, 6, 7, 9, 11, 14, 16, 17, 18, 19, 20, 21, 25, 28, 35, 36, 37, 38, 39, 40, 41, 42, 43 and 45.

It results from the Complainant's undisputed allegations that it produces and markets energies on a global scale, operating worldwide in more than 130 countries. It also claims to be a major actor of natural gas and a world-leading solar energy operator.

The two disputed domain names <totalenergies-purchasemanager.com> and <totalenergies-project.com> have been registered respectively on 5 and 30 September 2024.

Both disputed domain names are being used to create messaging servers with various IP addresses (which are identical for both domain names) and to send fraudulent requests for quotations to third parties. These requests were purportedly sent by the Complainant's Canadian subsidiary and displayed the Complainant's logo.

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

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names areidentical 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 names (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are 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.

1.
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark.

The Complainant's registered trademark TOTAL ENERGIES is included identically in both disputed domain names. The Panel considers that, despite the addition of the terms "-purchasemanager" and "-project" in a second position within the disputed domain names, the domain names are confusingly similar to the Complainant's mark. In fact, the Complainant's mark, placed at the beginning of the domain names and separated by a hyphen from the following terms, is clearly recognisable in both disputed domain names and the addition of those additional elements does not prevent a finding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy.

2.
In the absence of any Response, or any other information from the Respondent indicating the contrary, the Panel further holds that the Complainant successfully presented its prima facie case and that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

In particular, the Respondent is not affiliated with nor authorized by the Complainant in any way, and it is not related to the Complainant’s business. In addition, the Respondent is not commonly known by the disputed domain names pursuant to paragraph 4(c)(ii) of the Policy. Furthermore, it results from the undisputed evidence provided by the Complainant that the disputed domain names are being used for fraudulent activity, i.e. requests for quotations to third parties allegedly sent by the Complainant's Canadian subsidiary and showed the Complainant's logo. The Panel considers this activity to be illegal. Past panels have categorically held that the use of a domain name for illegal activity, such as impersonation/passing off, or other types of fraud, can never confer rights or legitimate interests on a respondent.

3.

Finally, the Panel finds that the disputed domain names have been registered and are being used in bad faith. It is indeed satisfied that the Respondent has registered the disputed domain names for the mere purpose of creating a risk of confusion and diverting Internet users to its website (see paragraph 4(b)(iv) of the Policy).

The Respondent used the disputed domain names to create messaging servers with various IP addresses (which are identical for both domain names) to send fraudulent requests for quotations to third parties. These requests were purportedly sent by the Complainant's Canadian subsidiary and displayed the Complainant's logo. Past panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the Complainant’s actual or prospective customers. The Panel shares this view.

The finding of bad faith registration and use is supported by the further circumstances resulting from the case at hand which are:

(i) the high degree of distinctiveness and the worldwide reputation of the Complainant’s mark;

(ii) the Respondent’s failure to submit a response or to provide any evidence of actual or contemplated good faith use; and

(iii) the Respondent concealing its identity behind a privacy shield.

The disputed domain names should be transferred to the Complainant.