On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No. 102283
Time of Filing 2019-01-02 09:39:17
Disputed domain name IPO-SCHNEIDER-ELECTRIC.COM
Case Administrator
Name Iveta Špiclová
Complainant
Organization SCHNEIDER ELECTRIC INDUSTRIES SAS
Authorized Representative
Organization Nameshield (Enora Millocheau)
Respondent
Organization Schneider Electric
Other Legal Proceedings
The Panel is not aware of any other legal proceedings related to the disputed domain name.
Identification of rights
According to the evidence submitted by Complainant, Complainant is the owner of the international trademark nr. 715395 SCHNEIDER ELECTRIC registered on 15 March 1999.
Factual Background
FACTS ASSERTED BY COMPLAINANT AND NOT CONTESTED BY RESPONDENT:

According to the evidence submitted by Complainant, Complainant is a French industrial group founded in 1871 with an international dimension, which manufactures and offers products of power management.

The disputed domain name <ipo-schneider-electric.com> was registered on 1 July 2016 and is held by Respondent.

According to the information provided by Complainant the disputed domain name redirects to the website of Complainant.

The trademark registration of Complainant has been issued prior to the registration of the disputed domain name.

According to Complainant the disputed domain name is confusingly similar to Complainant's trademark. The addition of the term “ipo”, the gTLD ".com" and the dash "-" is not sufficient to escape the finding that the disputed domain name is confusingly similar to its trademark and it does not change the overall impression of the designation as being connected to the trademark of Complainant.

According to Complainant, Respondent has no rights or legitimate interest in the disputed domain name. Respondent is not related in any way with the business of Complainant. Complainant does not carry out any activity for, nor has any business with Respondent. Given the distinctive character of the disputed domain name, Respondent could not have used it without harming Complainant's prior rights. According to the disclosure of registrant by the Registrar, Respondent is identified as “Schneider Electric”. Complainant contends that Respondent attempts to pass itself off as Complainant. Further, the website in relation with the disputed domain name points to Complainant’s website. By using the disputed domain name a likelihood of confusion with Complainant is created. Use of the disputed domain name to pass off as Complainant is not considered a bona fide offering of goods and services or a legitimate non-commercial or fair use.

According to Complainant the disputed domain name is registered and is being used in bad faith. Given the distinctiveness of Complainant's trademark and its reputation, it is reasonable to infer that Respondent has registered the disputed domain name with full knowledge of Complainant's trademark. The disputed domain name redirects to Complainant’s website. Redirection to a complainant’s own website, by a domain name that contains its trademark, is typically considered bad faith use of the domain name. According to Complainant Respondent registered and uses the disputed domain name in bad faith as Respondent attempts to attract Internet users to the disputed domain name by creating a likelihood of confusion among Internet users by passing itself off as Complainant for commercial gain.
 
NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.
Rights
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 Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).
No rights or legitimate interests
Complainant has, to the satisfaction of the Panel, shown 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).
Bad faith
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).
Procedural Factors
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.
Principal Reasons for the Decision
In the opinion of the Panel the disputed domain name is confusingly similar to Complainant's trademark. Many UDRP decisions have found that a disputed domain name is identical or confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark or the principal part thereof in its entirety. Complainant has established that it is the owner of a trademark registration for SCHNEIDER ELECTRIC. The disputed domain name incorporates the entirety of the well-known SCHNEIDER ELECTRIC trademark as its distinctive element. The addition of the term “ipo” and the sign "-" is insufficient to avoid a finding of confusing similarity as the SCHNEIDER ELECTRIC trademark remains the dominant component of the disputed domain name. The top-level domain “com” in the disputed domain name may be disregarded.

The Panel notes that Complainant’s registration of its trademark predates the creation date of the disputed domain name.

In the opinion of the Panel Complainant has made a prima facie case that Respondent lacks rights or legitimate interest in the disputed domain name. Complainant has not licensed or otherwise permitted Respondent to use its trademark or to register the disputed domain name incorporating its mark. Respondent is not making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of Complainant. Respondent is not commonly known by the disputed domain name nor has it acquired trademark rights. Complainant has no relationship with Respondent. According to the undisputed submission of Complainant the disputed domain name redirects to the website of Complainant; such redirection is not considered a bona fide offering of goods and services or a legitimate non-commercial or fair use.

Respondent did not submit any response.

Under these circumstances, the Panel finds that Respondent has no rights or legitimate interest in the disputed domain name.

The Panel finds that the disputed domain name has been registered and is being used in bad faith. Respondent knew or should have known that the disputed domain name included Complainant’s well-known SCHNEIDER ELECTRIC mark. The Panel notes that there is currently no active website at the disputed domain name and only a redirection to the website of Complainant. Such use of the disputed domain name does not prevent the Panel from finding registration and use in bad faith. The Panel further notes that the undeveloped use of the website at the disputed domain name which incorporates Complainant’s trademark in its entirety indicates that Respondents possibly registered the disputed domain name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademark of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location, which constitutes registration and use in bad faith.

Finally, according to the information provided by the Registrar, the Whois information about the disputed domain name mentions the Registrant City as “Le Hive”, the Registrant Postal Code as “92500”, the Registrant Country as “France” and the Registrant Phone as “+91.1234567898”. In the view of the Panel, this information is obviously false. There is no “Le Hive” city in France. In actual practice “Le Hive” refers to the four capital letters of the Hall of Innovation and Showcase of Energy of Complainant (in French: “Hall d’Innovation et Vitrine de l’Energie”; translation in English: “Hall of Innovation and Showcase of Energy”). The Postal Code “92500” is the postal code of Rueil-Malmaison, the city where the headquarters of Complainant in France is located. The Phone number “+91.1234567898” is the 91 country code for India in combination with a non-existing number. In the view of the Panel such obvious false and misleading registration information is an additional demonstration of the bad faith of Respondent.
Decision
For all the reasons stated above, the Complaint is Accepted
and the disputed domain name(s) are to be
IPO-SCHNEIDER-ELECTRIC.COM Transferred to Complainant
Panellists
Name Dinant T.L. Oosterbaan
Date of Panel Decision 2019-01-27
Publication of the Decision
Publish the Decision