Decision for dispute CAC-UDRP-108324

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 has submitted evidence, which the Panel accepts, showing that it is the registered owner of the trademarks bearing “TOTAL”, “TOTAL ENERGIES” and “TotalEnergies”, inter alia, the following:

- French trademark n° 1540708, registered on December 5, 1988;

- European Union trademark n° 018395480, registered on June 25, 2021;

- European Union trademark n° 018392838, registered on June 26, 2021;

- European Union trademark n° 018308753, registered on May 28, 2021;

- International trademark n°1601110, registered on February 9, 2021.

Moreover, the Complainant is also the owner of the domain names bearing the signs “TOTAL”, “TOTAL ENERGIES” and “TotalEnergies” such as the domain names <totalenergies.com> registered since March 8, 2014, <totalenergies.fr> registered since June 29, 2017, <totalenergiesrenouvelables.com> registered since September 30, 2022 and <totalenergiesrenouvelables.fr> registered since May 2, 2022.

The Complainant TotalEnergies SE was originally created under the name of Compagnie Française des Pétroles and registered before the French Companies Registry on March 28, 1924. The Complainant produces and markets oil and biofuels, natural gas and green gases, renewables, and electricity, operating worldwide in around 120 countries through a large Group, and numerous subsidiaries. TotalEnergies SE’s business includes all aspects of the energy industry from production to marketing, as well as in the development of next generation energy activities (biomass, wind). It is also a major actor of natural gas and solar energy operator. The Complainant owns numerous subsidiaries worldwide and notably the French Company “TotalEnergies Renouvelables France” which is specialized in the development, construction, operation, and management of electricity production assets from renewable sources in France (solar, wind, hydro, etc.).

The Complainant holds the trademark registrations “TOTAL”, “TOTAL ENERGIES” and “TotalEnergies” and domain names bearing these trademarks.

On November 3, 2025; the Respondent registered the disputed domain name <totalenergies-renouvelables-fr.com>. It is currently inactive at the date of this decision, and there is a warning that the connection is not private and it is possible that the information can be stolen by accessing such website.

COMPLAINANT:

1. THE DISPUTED DOMAIN NAME IS CONFUSINGLY SIMILAR

The Complainant explains that the disputed domain name is confusingly similar to the Complainant’s trademark “TotalEnergies” as it includes the Complainant’s trademark and trade name TotalEnergies SE identically. The addition of a dash and the elements “renouvelables-fr”, when combined with the terms “totalenergies”, is claimed to directly refer to the Complainant’s subsidiary “TotalEnergies Renouvelables France”, which further increases the risk of user confusion. The Complainant further states that the French common term “renouvelables” as well as the ISO code FR directly evoke the Complainant’s field of activity, namely the renewable energy sector, and its geographical location, i.e. France, thereby increasing the likelihood of confusion with the Complainant’s earlier rights. The Complainant also refers to several previous panel decisions where it was found confusing similarity with its trademarks as an example to the current case.

Moreover, the Complainant states that the Top-Level Domain “TLD” is not likely to avoid the risk of confusion that may exist between the signs in question as also decided by the past panels but more importantly it was claimed that the use of the identical “.com” extension in combination with an identical domain string is a strong indicator of deliberate mimicry.

2. NO RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DISPUTED DOMAIN NAME

The Complainant states that the Respondent is neither affiliated nor authorized by the Complainant in any way. Moreover, the Complainant alleges that neither license nor authorization has been granted to the Respondent to use the Complainant’s trademarks. It is claimed that a simple search on Google reveals that all results for "totalenergies renouvelables" refer to the Complainant.

It was asserted that the Respondent has already been involved in other fraudulent domain names reservations such as in the CAC case no. CAC-UDRP-107393 <total-energies-se.com> and WIPO case no. D2024-4183 <totalenergies-fr.com>. As a consequence, it is stated that the Respondent has a history of registering domain name comprising the well-known mark and company TotalEnergies and TotalEnergies SE and using the malicious domain name for fraudulent activities.

In consequence, the Complainant argues that the Respondent cannot possibly acquire a right or have a legitimate interest in the disputed domain name.

3. THE DISPUTED DOMAIN NAME WAS REGISTERED AND IS USED IN BAD FAITH

The Complainant states that the reservation of a domain name identical or highly similar to a trademark in which the Complainant has rights while the Respondent has no right to the domain name or legitimate interests in this respect and without authorization, demonstrates in itself that the Respondent is in bad faith.

Moreover, the Complainant also claims that since its trademarks are well-known and acquired a worldwide reputation in the field of industry in which it specializes since several decades, the Respondent could not have ignored the existence of the Complainant’s trademarks at the time of the registration of the disputed domain name, with which it is confusingly similar. Also, the Complainant points out that a simple Google search would have necessarily forwarded the Respondent to the websites of the Complainant, which predate the disputed domain name and are also well-known. Also, the addition of the element “renouvelables-fr”, when combined with the terms “totalenergies”, is claimed to directly refer to the Complainant’s subsidiary “TotalEnergies Renouvelables France”, which further increases the risk of confusion.

The Complainant also contends that the disputed domain name is used for the creation of a messaging server. More than that, the Respondent has unlawfully used the disputed domain name to impersonate the Complainant by sending fraudulent e-mails for fake requests for quotation. This deceptive conduct aimed to exploit the Complainant’s reputation and illegitimately trade on its fame for gaining money, while misleading the public/service provider into believing that it is the Complainant. The Complainant states that at least one entity has been scammed, for an important amount and this entity has contacted the Complainant to explain the situation. These elements correspond to a well-known phishing tactic whereby such falsifications are intended to deceive recipients into unknowingly communicating with the fraudulent actor and due to this fraudulent use, the Complainant had to publicly inform the users on its own website of this scam attempt.

The disclosure of the Respondent’s data through this UDRP is said to confirm that the information provided is false and cannot clearly identify him, which is evidence of bad faith, since the recorded data are indicated incomplete address, relating to both France and Turkey. This mix of elements is also found I the French phone number, which includes a Turkish country code. Moreover, the Complainant claims that the Respondent is the prior owner of domain names in other cases where the bad faith of the Respondent has been recognized by the panels, for other domain names related to the Complainant (CAC-UDRP-107393 <total-energies-se.com>; WIPO case no. D2024-4183 <totalenergies-fr.com>) but also for another famous French company BOUYGUES (WIPO case no. D2023-3756 <bouygues-idf.com>; WIPO case no. D2023-2090 <bouygues-batiments-idf.com>). It is claimed that this demonstrates that the Respondent has a pattern of fraudulent activities using the same false data for several domains with similar constructions (trademark + additional term).

Finally, the Complainant highlighted that the Respondent is using a proxy/domain privacy service for the disputed domain name. It is claimed that, as repeatedly confirmed by WIPO Panels, use of a privacy or proxy registration service to shield a respondent’s identity and elude or frustrate enforcement efforts by a legitimate complainant demonstrates bad faith use and registration of a disputed domain name.

In view of the explanations, the Complainant suggests that inference may be drawn therefore that in some way the Respondent hoped to capitalize on the reputation and rights of the Complainant. The registration and use of the disputed domain name was made for phishing and impersonation purposes.

As a conclusion, the Complainant alleges that the disputed domain name is registered and used in bad faith.

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. 

The Complaint was filed in English, but the language of the registration agreement is Turkish.

Paragraph 11(a) of the Rules stipulates that: "[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding".

The Panel has duly considered the circumstances of this case. While there is a language requirement foreseen in paragraph 11(a) of the Rules, the Panel has to find the balance for ensuring that the proceeding takes place with due expedition and for the parties to be treated fairly and given a fair opportunity to present their case under Paragraph 10(b) and (c) of the Rules. The Panel is of the view that the language requirement should not cause any undue burden on the parties or undue delay (see Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). It has been taken into account that no Response has been filed and there was no counter request from the Respondent, and in any case, English is an internationally common language. Consequently, the Panel believes that the Respondent would not be prejudiced if English is adopted as the language of the proceeding and decided to continue the proceeding in English.

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In this context, the Panel also notes that the burden of proof is on the Complainant to make out its case and past UDRP panels have consistently said that a Complainant must show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.

For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:

1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. the disputed domain name has been registered and is being used in bad faith.

The Panel will therefore deal with each of these requirements in turn.

1. IDENTICAL OR CONFUSINGLY SIMILAR

The Policy simply requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of registration of “TOTAL”, “TOTAL ENERGIES” and “TotalEnergies” trademarks.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks and trade name, and the addition is not sufficient to vanish the similarity. On the contrary, the addition of “renouvelables-fr”, when combined with the terms “totalenergies”, indeed directly referring to the Complainant’s subsidiary “TotalEnergies Renouvelables France”, further increases the risk of user confusion.

Moreover, the addition of the gTLD “.COM” is not enough to abolish the similarity.

The Panel is of the opinion that the Internet users will easily fall into false impression that the disputed domain name is an official domain name of the Complainant. The Panel recognizes the Complainant's rights and concludes that the disputed domain name is confusingly similar with the Complainant's trademark. Therefore, the Panel concludes that the requirements of paragraph 4(a)(i) of the Policy is provided.

2. NO RIGHTS OR LEGITIMATE INTERESTS

Under paragraph 4(a)(ii) of the Policy, the complainant has the burden of establishing that the respondent has no rights or legitimate interests in respect of the domain name.

It is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to the respondent of the dispute, the use or making 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 of the dispute (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

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

Thus, if the respondent proves any of these elements or indeed anything else that shows that it has a right or legitimate interest in the domain name, the complainant will have failed to discharge its burden of proof and the complaint will fail. The burden is on the complainant to demonstrate a prima facie case that the respondent does not have rights or legitimate interests in the domain name. Once the complainant has made out a prima facie case, then the respondent may, inter alia, by showing one of the above circumstances, demonstrate rights or legitimate interests in the domain name.

The Complainant contends that the Respondent has nothing to do with the Complainant and any use of the trademarks “TotalEnergies” and “TOTAL ENERGIES” must be authorized by the Complainant and there is no such authorization. Moreover, the disputed domain name has no relation with the Respondent, and the Respondent is not commonly known as the disputed domain name.

In the absence of a response, the Panel accepts the Complainant’s allegations as true that the Respondent has no authorization to use the Complainant’s trademark in the disputed domain name and that it is used for fraudulent purposes.

Hence, as the Complainant has made out its prima facie case, and as the Respondent has not demonstrated any rights or legitimate interests as illustrated under paragraph 4(c) of the Policy, nor has the Panel found any other basis for finding any rights or legitimate interests of the Respondent in the disputed domain dame, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

3. BAD FAITH

The Panel concludes that the Complainant's “TOTAL ENERGIES” and “TotalEnergies” trademarks are of distinctive character and well-known. Therefore, the Panel is of the opinion that due to the earlier rights of the Complainant in the “TOTAL ENERGIES” and “TotalEnergies” trademarks, the Respondent was aware of the Complainant and its trademark at the time of registration of the disputed domain name (see e.g., Ebay Inc. v. Wangming, WIPO Case No. D2006-1107). Referring to Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226, the Panel believes that the awareness of the Complainant’s trademarks at the time of the registration of the disputed domain name is to be considered an inference of bad faith registration.

Moreover, the disputed domain name <totalenergies-renouvelables-fr.com> is currently inactive. Regarding inactive domain names, section 3.3 of the WIPO Overview 3.0 provides the following: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding. While panellists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (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 concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” Besides, although there is no present use of the disputed domain name, the fact that there is MX record connected to the disputed domain name suggests that the Respondent will not be able to make any good faith use of the disputed domain name as part of an e-mail address and the actual fraudulent e-mails sent by using the e-mail extension/signature block of the disputed domain name for phishing purposes shows the use in bad faith clearly. The fact that an actual fraud happened, a scam reported by a third party and that the Complainant had to put out a public warning are also considered important.

In addition, it can be seen clearly from a previous panel decisions involving both the Complainant and the Respondent (WIPO Case no. D2024-4183, <totalenergies-fr.com> and CAC-UDRP-107393 <total-energies-se.com>), in which the disputed domain name was also used for e-mails the same as the present case, the panels found that there are fraud and impersonation, thus bad faith.

The Respondent did not provide any evidence of any possible good faith use of the disputed domain name. The Respondent’s data being false and shielded is also considered. All evidence and all the above circumstances point out to clear bad faith.

Therefore, in light of the above-mentioned circumstances in the present case, the Panel finds that the disputed domain name has been registered and is being used in bad faith and that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.