TotalEnergies SE v Privacy service provided by Withheld for Privacy ehf /
WIPO Case No. D2022-1799
•01-07-2022
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
TotalEnergies SE v. Privacy service provided by Withheld for Privacy ehf /
Rob Bobby, bobbyB / Williams Tony / GUY DAMAS
Case No. D2022-1799
1. The Parties
The Complainant is TotalEnergies SE, France, represented by In Concreto, France.
The Respondents are Privacy service provided by Withheld for Privacy ehf, Iceland, Rob Bobby, bobbyB,
Türkiye, Williams Tony, United States of America, GUY DAMAS, France.
2. The Domain Names and Registrar
The disputed domain names <totalenergies-invest.com>, <totalenergies-uk.com> and
<totalenergiesuk.com> are all registered with NameCheap, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2022. On May 19, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 19, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 20, 2022, 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 May 25, 2022.
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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the
Complaint, and the proceedings commenced on May 30, 2022. In accordance with the Rules, paragraph 5,
the due date for Response was June 19, 2022. The Respondents did not submit any response.
Accordingly, the Center notified the Respondents’ default on June 20, 2022.
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The Center appointed Edoardo Fano as the sole panelist in this matter on June 23, 2022. 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.
The Panel has not received any requests from the Complainant or the Respondents regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a formal response from the Respondents.
The language of the proceeding is English, being the language of the Registration Agreements, as per paragraph 11(a) of the Rules.
4. Factual Background
The Complainant is TotalEnergies SE, a French company, previously called Total, operating in the energy field and owning several trademark registrations for TOTAL and TOTAL ENERGIES, among which:
- French Trademark Registration No. 1540708 for TOTAL, registered on December 5, 1988;
- French Trademark Registration No. 4727686 for TOTALENERGIES, registered on February 1, 2021;
- International Trademark Registration No. 1601110 for TOTALENERGIES, registered on February 9, 2021;
- European Union Trademark Registration No. 018308753 for TOTAL ENERGIES, registered on May 28,
2021.
The Complainant also operates on the Internet, owning several generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”) including the trademark TOTAL ENERGIES.
The Complainant provided evidence in support of the above.
According to the WhoIs records, the disputed domain names were registered on the following dates:
<totalenergies-uk.com> on July 31, 2021, <totalenergiesuk.com> on September 10, 2021, and
<totalenergies-invest.com> on February 7, 2022. They are currently inactive but when the Complaint was
filed, they all resolved to an identical parking page displaying pay-per-click links related to the energy field.
On May 28, 2021, the Complainant’s company name change from Total to TotalEnergies was announced.
5. Parties’ Contentions
A. Complainant
The Complainant states that the disputed domain names <totalenergies-invest.com>, <totalenergies- uk.com> and <totalenergiesuk.com> are confusingly similar to its trademark TOTAL ENERGIES, as the disputed domain names wholly incorporate the Complainant’s trademark with the addition of the terms “invest” and “uk”.
Further to section 6.1 below, the Complainant argues that the disputed domain names are under common
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control and thus addresses the Respondents in the singular. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names since it is not commonly known by the disputed domain names and it is not making either a bona fide offering of goods or services or a
legitimate noncommercial or fair use of the disputed domain names: the disputed domain names were
resolving to an identical parking page displaying pay-per-click links related to the energy field, that is the
same activity sector of the Complainant, therefore capitalizing on the notoriety of the Complainant.
The Complainant submits that the Respondent has registered the disputed domain names in bad faith, since the Complainant’s trademark TOTAL ENERGIES is distinctive and well known in the energy field. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain
names and the Complainant contends that the use of the disputed domain names in relation to a parking
page with sponsored links to the same field as the Complainant, i.e. the energy field, by creating a likelihood
of confusion with the Complainant’s trademark as to the disputed domain names’ source, sponsorship,
affiliation or endorsement, qualifies as bad faith registration and use.
B. Respondents
The Respondents have made no reply to the Complainant’s contentions and are in default. In reference to paragraphs 5(f) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable
facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with
paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc, WIPO Case
No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL
INTERNATIONAL PLC v. MARK FREEMAN, WIPO Case No. D2000-1080; ALTAVISTA COMPANY v.
GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848; and Confédération Nationale du
Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No.
D2007-0288).
6. Discussion and Findings
6.1 Consolidation of Multiple Respondents
The Complainant has requested consolidation of multiple respondents and stated that all the disputed
domain names belong to the same person or organization. No objection to this request was made by the
Respondents.
Pursuant to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”. The Panel may consider a range of factors to determine whether consolidation is appropriate, such as examining relevant registrant contact information, and any naming patterns in the disputed domain names, or other evidence of respondent affiliation that indicate common control of the disputed domain names.
The Panel notes that all the disputed domain names were resolving to an identical parking page and are registered with the same Registrar, with the same privacy provider, and using the same Host. The Panel finds that there is sufficient evidence that the disputed domain names are subject to common control, and that it would be procedurally efficient, fair, and equitable to all Parties to accept the Complainant’s
consolidation request. The Panel further notes that the Respondents did not object to the consolidation
request. The Panel therefore accepts the Complainant’s consolidation request. Hereinafter, the Panel will
refer to the Respondents in the singular, i.e., “the Respondent”.
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6.2 Substantive Issues
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the
Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of the trademark TOTALENERGIES both by registration and acquired reputation and that the disputed domain names <totalenergies-invest.com>, <totalenergies- uk.com> and <totalenergiesuk.com> are confusingly similar to the trademark TOTALENERGIES.
Regarding the addition of the hyphen and the terms “invest” and “uk”, the Panel notes that it is now well
established that the addition of terms or letters to a domain name does not prevent a finding of confusing
similarity between the disputed domain name and the trademark (see, e.g., Aventis Pharma SA., Aventis
Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai
Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No.
D2000-0713). The addition of the hyphen and the terms “invest” and “uk” does not therefore prevent the
disputed domain names from being confusingly similar to the Complainant’s trademark. See WIPO
Overview 3.0, section 1.8.
It is also well accepted that a gTLD, in this case “.com”, is typically ignored when assessing the similarity between a trademark and a domain name. See WIPO Overview 3.0, section 1.11.
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain
names are identical or confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph
4(a)(i).
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain names.
The Respondent may establish a right or legitimate interest in the disputed domain names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following circumstances, in particular but without limitation:
“(i) before any notice to you of the dispute, your use of, or 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) you (as an individual, business, or other organization) have been commonly known by the domain name,
even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial
gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
According to paragraph 4(a) of the Policy, the Complainant has the burden of proving the three elements of the Policy. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests
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in respect of the disputed domain names according to paragraph 4(a)(ii) of the Policy is potentially quite production to the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
difficult, since proving a negative circumstance is always more complicated than establishing a positive one.
As such, it is well accepted that it is sufficient for the Complainant to make a prima facie case that the
prima facie bona fide offering of goods or services. The disputed domain names were used for a parking page with sponsored links to the energy field, that is the same activity sector of the Complainant, therefore capitalizing on the notoriety of the Complainant.
The Complainant in its Complaint, and as set out above, has established a case that the Respondent, who is not currently associated with the Complainant in any way, is not using the disputed domain names for a legitimate noncommercial or fair use or in connection with a
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain names. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain names, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it.
Moreover, the Panel finds that the composition of the disputed domain names carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that “[…] for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the Respondent has] registered or [the Respondent has] acquired the
domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name
registration to the Complainant who is the owner of the trademark or service mark or to a competitor of
the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly
related to the domain name; or
(ii) that [the Respondent has] registered the domain name in order to prevent the owner of the
trademark or service mark from reflecting the mark in a corresponding domain name, provided that
[the Respondent has] engaged in a pattern of such conduct; or
(iii) that [the Respondent has] registered the domain name primarily for the purpose of disrupting the
business of a competitor; or
(iv) that by using the domain name, [the Respondent has] intentionally attempted to attract, for
commercial gain, Internet users to [the Respondent’s] website or other online location, by creating a
likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or
endorsement of [the Respondent’s] website or location or of a product or service on [the
Respondent’s] website or location”.
Regarding the registration in bad faith of the disputed domain names, the reputation of the Complainant’s
trademark TOTALENERGIES in the energy field is clearly established and the Panel finds that the
Respondent likely knew of the Complainant and deliberately registered the disputed domain names,
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especially because the content of the parking page, to which the disputed domain names resolved, consisted
of providing pay-per-click links to the energy sector, that is to the same market field as the Complainant.
The Panel further finds that the disputed domain names are also used in bad faith since in each relevant website there were pay-per-click links, even in the case where they were automatically generated, referring to the energy sector, and the Respondent was therefore knowingly taking advantage from user confusion.
The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain names in order to attract, for commercial gain, Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy.
Furthermore, the Panel considers that the nature of the disputed domain names, which are almost identical to the Complainant’s trademark with the mere addition of a hyphen and/or of the terms “invest” and “uk”, further supports a finding of bad faith. See, WIPO Overview 3.0, section 3.2.1.
The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and was using the disputed domain names in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel
orders that the disputed domain names <totalenergies-invest.com>, <totalenergies-uk.com> and
<totalenergiesuk.com> be transferred to the Complainant.
/Edoardo Fano/
Edoardo Fano
Sole Panelist
Date: July 1, 2022
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