The disputed domain name is confusingly similar to the Complainant’s well-known and distinctive trademark “SCHNEIDER ELECTRIC”. Duplicating the single letter “i” in the word “SCHNEIDER” does not change the overall impression of the designation as being almost identical to the trademark “SCHNEIDER ELECTRIC”.
The Panel further finds that the Complainant successfully submitted prima facie evidence that the Respondent has neither made any use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, nor is making a legitimate non-commercial or fair use of the disputed domain name, nor is commonly known under the disputed domain name. This prima facie evidence was not challenged by Respondent.
The Panel also finds that the Complainant successfully submitted prima facie evidence that the Respondent was aware of the Complainant's rights in the well-known designation “SCHNEIDER ELECTRIC” when registering the disputed domain name. Again, this prima facie evidence was not challenged by Respondent, which supports the conclusion that the disputed domain name was REGISTERED in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).
Given the fact that the disputed domain merely resolves to the registrar’s parking page, the primary question of this proceeding is whether or not the Respondent has also USED the disputed domain name in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy). The Complainant's case regarding such bad faith use is that the Respondent is effectively engaged in “passive holding” of the disputed domain name within the terms originally established by Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The panel in Telstra noted that the question as to which circumstances of “passive holding” may constitute use in bad faith cannot be answered in the abstract. This question may only be determined on the basis of the particular facts of each case. A panel should give close attention to all the circumstances of the Respondent's behaviour, and a remedy can be obtained under the Policy only if those circumstances show that the Respondent's passive holding amounts to acting in bad faith (cf. Sanofi-aventis v. Gerard Scarretta, WIPO Case No. D2009-0229; Mount Gay Distilleries Limited v. shan gai gong zuo shi, CAC Case No. 100707; RueDuCommerce v. TOPNET, CAC Case No. 100617; INFRONT MOTOR SPORTS LICENCE S.r.l. v. VICTOR LEE, CAC Case No. 100385).
With this approach in mind, the Panel has identified the following circumstances as material to the issue in the present case:
(i) The Complainant's trademark is highly distinctive. Given the Complainant's market position its trademark is widely known and has a strong reputation;
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name, nor can the Panel conceive of any such good faith use;
(iii) the registration of domain names that are almost identical to the domain name which a trademark owner uses for its own website (in this case <schneider-electric.com>), where the only difference between the trademark owner’s legitimate domain name and the disputed domain name is the duplicated letter “i” in “SCHNEIDER”, is a typical pattern used for abusive “typosquatting” registrations; and
(iv) taking into account the nature of the disputed domain name the Panel cannot conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law.
Given all of these circumstances the Panel finds that the manner in which the disputed domain name is being used constitutes use in bad faith. The requirements of paragraph 4(a)(iii) of the Policy are therefore met.
|