TotalEnergies SE v Foulfoin Jacques Philippe

WIPO Case No. D2024-4183

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

TotalEnergies SE v. Foulfoin Jacques Philippe

Case No. D2024-4183

1. The Parties

1.1	The Complainant is TotalEnergies SE, France, represented by In Concreto, France.
1.2	The Respondent is Foulfoin Jacques Philippe, Türkiye.

2. The Domain Name and Registrar

2.1 The disputed domain name <totalenergies-fr.com> (the “Domain Name”) is registered with Aerotek

Bilisim Taahut Sanayi Ve Ticaret Ltd Sti. (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2024. At that time publicly available WhoIs details did not identify the registrant of the Domain Name.

3.2 On October 11, 2024, the Center transmitted by email to the Registrar a request for registrar

verification in connection with the Domain Name. On October 14, 2024, the Registrar transmitted by email to
the Center its verification response disclosing the underlying registrant details in respect of the Domain

Name.

3.3 The Center sent an email to the Complainant on October 14, 2024, providing the registrant and

contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the

Complaint. The Complainant filed an amended Complaint on October 18, 2024.

3.4 The Center verified that the Complaint together with the amended 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 “Supplemental Rules”).

3.5 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the

Complaint, and the proceedings commenced on October 25, 2024. In accordance with the Rules, paragraph
5, the due date for Response was November 14, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on November 18, 2024.

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3.6 The Center appointed Matthew S. Harris as the sole panelist in this matter on November 20, 2024.

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

4.1 The Complainant, is a company incorporated in France on March 28, 1924. Initially, it used the name

“Compagnie Française des Pétroles”. It first adopted the term “Total” as part of its name on June 21, 1985,
and adopted its present name “TotalEnergies SE” on May 28, 2021.

4.2 The Complainant is a well-known energy company that operates globally in the fields of oil and

biofuels, natural gas and green gases, renewables, and electricity. It is, for example the second largest LNG (Liquefied Natural Gas) player in the world. Companies in the Complainant’s group operate in 130 countries, including in the United States of America and in China.

4.3 The Complainant is the owner of numerous registered trade marks around the world that comprise or incorporate the terms “Total” or “Total Energies”. They include:

(i) French registered trade mark No. 1540708 for TOTAL as a word mark filed on December 5, 1988, in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 13, 14, 15, 16, 17, 18, 19, 20, 21, 28, 29, 30, 31, 32, 33, and 34;

(ii) European Union registered trade mark No. 018308753 for TOTAL ENERGIES as a word mark filed on

September 17, 2020, and 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;

(iii) International trade mark No. 1601110 registered on February 9, 2021, in classes 1, 4, 7, 9, 37, 39, and

40 and which has proceeded to grant to at least some degree in over 70 countries or territories and which
takes the following form:

(iv) International trade mark No. 1601092 registered on May 18, 2021, in classes 1, 2, 3, 4, 5, 6, 7, 9, 11,

12, 14, 16, 17, 18, 19, 20, 21, 25, 28, 35, 36, 37, 38, 39, 40, 41, 42, 43, and 45 to and which has proceeded
to grant to at least some degree in over 80 countries or territories and which takes the following form:

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5. Parties’ Contentions

A. Complainant

5.1 The Complainant contends that it has satisfied each of the elements required under the Policy for a

transfer of the Domain Name.

5.2 Notably, the Complainant contends that its registered trade marks are recognisable in the Domain

Name and that the Domain Name is, therefore, confusingly similar to its marks. It further contends that the
Respondent has no right or legitimate interest in the Domain Name, and that the fraudulent use of the
Domain Name demonstrates that the Domain Name has been both registered and used in bad faith.

5.3 The Complainant also observes that there is what it describes as a “inconsistency” in the registration details provided by the Respondent in that it uses an address identifying a city in France which is said to be in the country of Türkiye.

B. Respondent

5.4 The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

6.1 It is generally accepted that the first element functions primarily as a standing requirement. The

standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward
comparison between the Complainant’s trade mark and the Domain Name. WIPO Overview of WIPO Panel
Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

6.2 The Panel finds the Complainant has shown rights in registered trade marks for TOTALENERGIES as well as trade marks in respect of which that term is a significant part. WIPO Overview 3.0, section 1.2.1.

6.3 The Panel also accepts that the Domain Name can only be sensibly understood as the term

“totalenergies” in combination with the letters “fr” (which is likely to be understood as the country code for

France), and “.com” generic Top-Level Domain (“gTLD”).

6.4 Accordingly, the entirety of the Complainant’s mark is clearly reproduced in its entirely and is

recognisable within the Domain Name and the Panel accepts that the Domain Name is confusingly similar to

the Complainants’ mark for the purposes of the Policy. WIPO Overview 3.0, sections 1.7 and 1.9.

6.5 Although the addition of other terms (in this case the letters “fr”) may bear on assessment of the

second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing
similarity between the Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0,

section 1.8.

6.6 The Panel, therefore, finds the first element of the Policy has been established.

B. Rights or Legitimate Interests, and Registered and Used in Bad Faith

6.7 It is usual for panels under the Policy to consider the issues of rights or legitimate interests, and

registration and use in bad faith in turn. However, in this case it is more convenient to consider those issues
together. WIPO Overview 3.0, section 2.15.

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6.8 The Domain Name can only sensibly be understood as a reference to the Complainant as its TOTAL

ENERGIES marks combined with the country code “fr” for France, which is the country in which the
Complainant is based. As such the Domain Name inherently impersonates the Complainant.

6.9 It is also clear that the Domain Name has been deliberately registered in order to falsely impersonate in emails the Complainant or companies in the Complainant’s group and employees of those companies, in furtherance of a fraud directed to the recipients of those emails.

6.10	There is obviously no right or legitimate interest in holding a domain name for the purpose of
a domain name is or has been used for such a purpose is evidence that no such right or legitimate interest exists. Further, the registration and use of a domain name for such a purpose provide a clear-cut example of registration and use in bad faith (see section 3.4 of the WIPO Overview 3.0). The Respondent’s use of the	furtherance of a fraud through impersonation (see section 2.13 of the WIPO Overview 3.0), and the fact that evidencing bad faith registration set out in paragraph 4(b)(iv) of the Policy.
6.11 In the circumstances, the Panel finds that the second and third elements of the Policy have been
established.
7. Decision
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the
Panel orders that the Domain Name <totalenergies-fr.com> be transferred to the Complainant.
/Matthew S. Harris/ Matthew S. Harris Sole Panelist Date: November 27, 2024

4.4 The Complainant operates a number of websites promoting its business and activities, the main one of

which uses the domain name <totalenergies.com>. It also holds a large portfolio of domain names that
contain the terms “total” or “total energies”, including <totalenergies.group>, <totalenergies.fr> and

<total.com>, which all resolve to the main websites of the Complainant.

4.5 The Domain Name was registered on February 21, 2024. A webpage has operated from the Domain
Name since registration displaying what appeared to be a picture of a work man on ropes descending into a
large chasm, over which is displayed the text of the Domain Name and that stated that “Our website is under
construction”. The Domain Name has also been used as part of an email address in emails sent in May
2024 that purported to come from an employee of the Complainant who declared himself to be the “Chef de
Service Achat” of Total Energies Marketing France and which invited the recipient to tender to supply the
Complainant with certain products.