FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:
The Complainant, which was founded in 1871, is a French industrial business trading internationally. It manufactures and offers products for power management, automation, and related solutions. The Complainant is featured on the NYSE Euronext and the French CAC 40 stock market index. In 2019, the Complainant revenues amounted to 27.2 billion euros.
I. The disputed domain name is confusingly similar to the protected mark
The Complainant states that the disputed domain name is confusingly similar to its trademark SCHNEIDER ELECTRIC. Indeed, the addition of generic term “MARKET” in the disputed domain name is not sufficient to avoid the likelihood of confusion with the Complainant’s trademark. It is well-established that “a domain name that wholly incorporates a Complainant’s registered trademark may be sufficient to establish confusing similarity for purposes of the UDRP”.
Moreover, the Complainant contends that the addition of the generic Top-Level Domain suffix “.COM” does not change the overall impression of the designation as being connected to the trademark SCHNEIDER ELECTRIC of the Complainant. It does not prevent the likelihood of confusion between the disputed domain name and the Complainant, its trademark and its domain names associated.
Thus, the disputed domain name is confusingly similar to the Complainant's trademark SCHNEIDER ELECTRIC®.
II. The Respondent does not have any rights or legitimate interest in the disputed domain name
The Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a) (ii) of the Policy.
The Complainant asserts that the Respondent “Tekniker Elektrik“ is not known as the disputed domain name. Past panels have held that a Respondent was not commonly known by a disputed domain name if the Whois information was not similar to the disputed domain name. Thus, the Respondent is not known as the disputed domain name.
The Complainant contends that the Respondent is not affiliated with nor authorized by the Complainant in any way. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant does not carry out any activity for, nor has any business with the Respondent.
Neither license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademark, or apply for registration of the disputed domain name by the Complainant.
Finally, the disputed domain name points to a website purporting to be an online store selling the Complainant’s others Competitors’ products. A reseller or distributor may be making a bona fide offering of goods and services and thus have rights or legitimate interests in a domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903 (“Oki Data”), including:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the website to sell only the trademarked goods;
- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
The Complainant finds the Respondent did not place any statement or disclaimer disclosing accurately its relationship with the Complainant. Further, the website under the disputed domain name also contained the Complainant’s logo as well as its product images. With such a view, the Complainant finds that the use of the disputed domain name does not meet the Oki Data criteria and thus, does not constitute a bona fide use.
Thus, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name <schneiderelectricmarket.com>.
III. The disputed domain name has been registered and is being used in bad faith
The disputed domain name is confusingly similar to the Complainant’s well-known trademark. Also, in consideration of the use of the disputed domain name and the contents of the website thereunder, the Complainant is of the view that the Respondent obviously knew of the Complainant and its trademarks when it registered the disputed domain name, and the Complainant considers the registration is an attempt by the Respondent as to take advantage of the Complainant’s goodwill.
The Complainant contends that any Internet users seeking to purchase the Complainant’s SCHNEIDER ELECTRIC products would very likely mistakenly believe that the Respondent is either connected to or associated with the Complainant, while no such connection exists in fact. Such misleading behavior is indicative of bad faith. By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 website or location or of a product or service on the website or location.
On these bases, the Complainant concludes that the Respondent has registered and is using the disputed domain name in bad faith.
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