Decision for dispute CAC-UDRP-105288

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant owns several trademarks including the terms “SCHNEIDER ELECTRIC”, such as:

• The international trademark SCHNEIDER ELECTRIC n° 715395 registered since March 15, 1999;
• The international trademark SCHNEIDER S ELECTRIC n° 715396 registered since March 15, 1999;
• The European trademark SCHNEIDER ELECTRIC n° 1103803 registered since March 12, 1999.

The Complainant is also the owner of many domain names which include the trademark SCHNEIDER ELECTRIC such as <schneider-electric.com> registered and used since October 3, 1997.

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's corporate website can be found at www.schneider-electric.com.

The Complainant is featured on the NYSE Euronext and the French CAC 40 stock market index. In 2019, the Complainant revenues amounted to 28.9 billion euros.

The disputed domain name <schneiderelectricltd.com> was registered on March 4, 2023 and redirects to the Registrar’s parking page. MX servers are configured.

COMPLAINANT:

A. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The Complainant states that the disputed domain name <schneiderelectricltd.com> is confusingly similar to its trademark SCHNEIDER ELECTRIC and the addition of term “LTD” (for “limited”) in the disputed domain name is not sufficient to escape the finding that the disputed domain name is confusingly similar to the trademark. It does not change the overall impression of the designation as being connected to the Complainant’s trademark. It does not prevent the likelihood of confusion between the disputed domain name and the Complainant’s trademark.

The addition of the gTLD suffix “.COM” does not change the overall impression of the designation as being connected to the trademark SCHNEIDER ELECTRIC. Forum Case No. FA 153545, Gardline Surveys Ltd v. Domain Finance Ltd. ("The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.").

B. The Respondent has no rights or legitimate interests in respect of the domain name;

According to the WIPO Case No. D2003-0455, Croatia Airlines d. d. v. Modern Empire Internet Ltd.,  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 domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a) (ii) of the UDRP.

According to the Whois information the Respondent is not commonly known by the disputed domain name. Please see for instance NAF Case No. FA 1781783, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Chad Moston / Elite Media Group <bobsfromsketchers.com> (“Here, the WHOIS information of record identifies Respondent as “Chad Moston / Elite Media Group.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”).

The Respondent is not affiliated with nor authorized by SCHNEIDER ELECTRIC in any way. 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 licence nor authorization has been granted to the Respondent to make any use of the Complainant’s trademark SCHNEIDER ELECTRIC®, or apply for registration of the disputed domain name by the Complainant.

The disputed domain name resolves to a parking page. The Respondent has not made any use of disputed domain name since its registration, and this confirms that Respondent has no demonstrable plan to use the disputed domain name. It demonstrates a lack of legitimate interests in respect of the disputed domain name.

Thus, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name <schneiderelectricltd.com>.

C. The domain name was registered and is being used in bad faith

The Complainant trademark SCHNEIDER ELECTRIC is well established. For instance WIPO Case No. D2020-1403, Schneider Electric S.A. v. Whois Privacy Protection Foundation / Sales department (“The Complainant and its trademark are well-known worldwide. The Complainant has been established almost 150 years ago while the disputed domain name was only registered a couple of months ago. The Respondent must have been fully aware of the Complainant and its trademark when it registered the disputed domain name.”).

The disputed domain name resolves to a parking page. The Complainant contends that the Respondent has not demonstrated any activity in respect of the disputed domain name, and it is not possible to 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.

As prior WIPO UDRP panels have held, the incorporation of a mark with a reputation into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use.

The disputed domain name has been set up with MX records which suggests that it may be actively used for email purposes. This is also indicative of bad faith registration and use because any email emanating from the disputed domain name could not be used for any good faith purpose. For instance CAC Case No. 102827, JCDECAUX SA v. Handi Hariyono (“There is no present use of the disputed domain name but there are several active MX records connected to the disputed domain name. It is concluded that it is inconceivable that the Respondent will be able to make any good faith use of the disputed domain name as part of an e-mail address.”).

On these bases, the Complainant concludes that the Respondent has registered and is using the disputed domain name in bad faith.

RESPONDENT: NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED. 

The 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 the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the 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).

The 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).

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.

The disputed domain name registered in 2023 is confusingly similar to the Complainant's trade mark (registered as international and European trade marks since 1999) adding only the generic designation 'ltd' and the gTLD .com which do not prevent said confusing similarity. 

The disputed domain name has not been used so there is no bona fide offering of goods or services or legitimate non commercial fair use. 

The Respondent has not answered the Complaint giving a legitimate reason for registration of the disputed domain name and has not rebutted the prima facie case evidenced by the Complainant as set out herein.

The disputed domain name is being passively held and has been configured for e mail purposes. The incorporation of a mark with a reputation into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use.