Decision for dispute CAC-UDRP-107489

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

Among others, the Complainant owns the following registered trademarks:

European Union Registered Trademark Number 18308753 for the word mark TOTAL ENERGIES, registered on May 28, 2021 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; and

European Union Registered Trademark Number 18488898 for the figurative mark TOTALENERGIES FOUNDATION, registered on October 8, 2021 in Classes 35, 36, 41, and 42.

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

The Complainant is a well-known French multinational integrated energy company, present in over 130 countries, which produces and markets energies on a global scale, including oil and biofuels, natural gas and green gases, renewables, and electricity. The Complainant engages in significant advertising and communications, and is ranked 106th in Brand Finance’s Global 500 2025 annual report on the world’s most valuable and strongest brands. The Complainant owns a Foundation which supports young people as part of the Complainant’s economic, social and societal contribution in France. The said foundation uses the following URL for its official website: “fondation.totalenergies.com”.

The Complainant is the owner of registered trademarks for the mark TOTAL ENERGIES and the mark TOTALENERGIES FOUNDATION, as noted in the Identification of Rights section above. The Complainant is also the owner, among others, of the domain name <totalenergies.com>, registered since March 8, 2014, which is used with a subdomain as shown above to provide the location for the website used by the Complainant’s said Foundation.

According to the corresponding records, the disputed domain name <fondation-totalenergies.com> was registered on January 14, 2025, and the disputed domain name <fondation-total-energies.com> was registered on February 6, 2025. Both disputed domain names do not point to active websites but are configured for e-mail. On January 15, 2025, the disputed domain name <fondation-totalenergies.com> was used to send a phishing e-mail to certain partners of the Complainant. The e-mail concerned reproduced the Complainant’s signature block, including a partial version of the Complainant’s TOTALENERGIES FOUNDATION figurative mark. The said e-mail falsely bore to be signed by, and addressed from, a current member of the Complainant’s Foundation’s Board of Directors on the authority of one of the Complainant’s senior staff, and solicited a financial transaction. On February 11, 2025, the disputed domain name <fondation-total-energies.com> was used in connection with a similar false e-mail to a similar addressee, containing a similar signature block, and addressed from the same sender in a similar manner. The e-mails in both cases attempted to solicit the payment of money by the Complainant’s said partners.

Although the disputed domain names were registered by nominally different registrants, the Complainant asserts that they are subject to common control because they were registered within a short period of time with an identical registrar, the structure of the disputed domain names is identical, and they have been used in the same scheme of fraud with an identical structure of fraudulent e-mail address and content, mentioning the same personnel of the Complainant with an identical signature block representing the Complainant’s TOTALENERGIES FOUNDATION figurative mark.

Complainant:

The disputed domain names are subject to common control due to proximity in registration date, identical structure and identical use in the same scheme of fraud.

The disputed domain names reproduce the Complainant’s TOTALENERGIES prior rights with no alteration, hyphens being irrelevant, and include the term “fondation” being the French equivalent for “foundation”, thus referencing the Complainant’s TOTALENERGIES FOUNDATION trademark. The domain name suffix for each of the disputed domain names may be disregarded for comparison purposes.

The Complainant has not licensed the Respondent to use its trademarks or domain names, nor has it allowed the Respondent to reserve or use domain names incorporating the Complainant’s rights. The Respondent has used both of the disputed domain names in the same fraudulent scheme to impersonate the Complainant, its Foundation, and its employee in order to extort money. Such use can never confer rights or legitimate interests upon the Respondent, and is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under the Policy.

The bad faith of the Respondent may be presumed due to the worldwide reputation and fame of the Complainant in its industrial field, such that the Respondent could not have overlooked the existence of the Complainant’s trademarks when it registered the disputed domain names. The Respondent used the Complainant’s trademarks, logos, and employee names to send fraudulent e-mails, demonstrating prior knowledge of the Complainant and its rights. One of the disputed domain names is registered in the name of one of the members of the Complainant’s Board of Directors and both disputed domain names were used to send e-mails falsely addressed under said member’s name.

Respondent:

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are 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 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.

As a preliminary manner, the Panel finds that the Complainant has made out its case that its Complaint against the two nominally different registrants of the disputed domain names should be consolidated. The Panel accepts the Complainant’s evidence that the disputed domain names are most probably under common control because they were registered within a short time of each other, are structurally similar, target the same aspect of the Complainant’s rights, and were used in the same phishing scheme which featured identical e-mails sent and addressed from each of the two disputed domain names. The composition of the sender’s e-mail address is identical for both of the disputed domain names.

No submissions were received from either of the named Respondents challenging the Complainant’s request for consolidation. The Panel finds that the consolidation would be fair and equitable to all of the Parties, together with it being procedurally efficient. On this topic, see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2. For convenience, the Panel will refer to the nominally different Respondents as “the Respondent” in the remainder of this decision.

The Complainant has demonstrated to the Panel’s satisfaction that it has UDRP-relevant rights in the mark TOTAL ENERGIES and the mark TOTALENERGIES FOUNDATION by virtue of the registered trademarks listed above. To the extent that the TOTALENERGIES FOUNDATION mark is figurative in nature, the textual element, being TOTALENERGIES FOUNDATION, is readily severable from the graphical element (on this topic, see the WIPO Overview 3.0, section 1.10).

The Second-Level Domain of each of the disputed domain names is a variant of the Complainant’s TOTALENERGIES FOUNDATION mark were where the word “foundation” has been moved to the start of the disputed domain names and expressed in French (by removal of the single letter “u”), while spacing has been provided in each of the disputed domain names by hyphens (the only difference between the disputed domain names being the presence or absence of a hyphen between the words “total” and “energies”).

Notwithstanding the adjustment of the word order, the Panel considers that the Complainant’s mark is fully recognizable in the disputed domain names based upon a straightforward side-by-side comparison. The generic Top-Level Domain in respect of each of the disputed domain names, namely “.com”, is typically disregarded for the purposes of the comparison under the first element analysis of the Policy. In these circumstances, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s TOTALENERGIES FOUNDATION trademark.

With regard to the second element of the Policy, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant asserts that it has no relationship with the Respondent. The disputed domain names amount to a variant of the Complainant’s TOTALENERGIES FOUNDATION mark, which seems to be designed to appear like the URL of the Complainant’s Foundation’s website, “fondation.totalenergies.com”, itself corresponding to the Complainant’s TOTAL ENERGIES mark. The Complainant shows that the disputed domain names have both been used in connection with the same fraudulent scheme. Ultimately, the disputed domain names have been used to attempt to confuse the Complainant’s partners into believing that they are associated with the Complainant when they are not. This cannot confer rights and legitimate interests upon the Respondent.

The Respondent has not replied to the Complainant’s allegations and evidence in this case, and has failed to set out any alleged rights or legitimate interests which it might have claimed in the disputed domain names. There are no submissions or evidence on the record which might serve to rebut the Complainant’s prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.

As noted in the consideration of the rights and legitimate interests topic, the disputed domain names appear to the Panel to be an intentionally designed variant of the Complainant’s Foundation’s website’s URL. The evidence before the Panel shows that the Complainant’s TOTAL ENERGIES mark pre-dates the date of registration of the disputed domain names, and is well-known. Said mark is in widespread use worldwide, not least in connection with the Complainant’s primary domain name. The disputed domain names have been used in a manner which is clearly intended to imitate the Complainant’s domain name, and the sub-domain thereof which it uses for its Foundation. The disputed domain names have been used subsequently for e-mails in a phishing scheme, in which the sender of the e-mails has passed itself off as an employee of the Complainant, specifically authorized by a senior named member of the Complainant’s staff. In these circumstances, it is entirely reasonable to infer that the disputed domain names were registered by the Respondent with knowledge of the Complainant and its rights, and with an intent to target these unfairly and illegally. Consequently, there appears to the Panel to be no possible good faith reason for the Respondent to have selected the disputed domain names, and there are demonstrable indications of bad faith present in this case.

In all of these circumstances, the Panel considers that the Complainant has made out a sufficient case of registration and use in bad faith. The Respondent has not filed a Response in this case and therefore has not addressed the Complainant’s assertions of bad faith registration and use to any extent. No explanation has been presented by the Respondent that might have suggested that its actions regarding the disputed domain names were in good faith.

The Panel therefore finds that the disputed domain names have been registered and are being used in bad faith.