Case number | CAC-UDRP-105330 |
---|---|
Time of filing | 2023-04-04 10:13:38 |
Domain names | schnieder-electrics.com |
Case administrator
Name | Olga Dvořáková (Case admin) |
---|
Complainant
Organization | SCHNEIDER ELECTRIC SE |
---|
Complainant representative
Organization | NAMESHIELD S.A.S. |
---|
Respondent
Organization | conglomerates ships |
---|
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 trademark registrations for “SCHNEIDER ELECTRIC”, including the international trademark n. 715395 “SCHNEIDER ELECTRIC” (with design), registered since 15 March 1999 for goods and services in classes 06, 09, 11, 36, 37, 39, and 42.
The Complainant also owns various domain names incorporating the term “SCHNEIDER ELECTRIC”, including the domain name <schneider-electric.com> registered and used since 3 October 1997.
The disputed domain name <schnieder-electrics.com> was registered on 1 February 2023, i.e., the Complainant’s trademark registration cited above predates the registration of the disputed domain name.
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'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 2021, the Complainant revenues amounted to 28.9 billion Euro.
The Complainant has no business or other relationship with the Respondent. The Complainant has not granted a license (or any other authorization) to the Respondent to use the trademark “SCHNEIDER ELECTRIC”, or to apply for registration of the disputed domain name.
The Complainant contends that, given the distinctiveness and reputation of the Complainant's “SCHNEIDER ELECTRIC” brand, it is inconceivable that the Respondent could have registered the disputed domain name without actual knowledge of the Complainant's trademark rights.
The disputed domain is not used for an active website, but MX records (and corresponding email servers) are configured for the disputed domain name.
Complainant´s contentions are summarised above.
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 Center notified the Respondent about the proceedings both via available e-mail contacts and via postal services on address provided by the Registrar of the disputed domain name. The Center received a message that thy physical letter was delivered but the Respondent is not seated on the address provided in the Registrar verification. According to the Center´s information, the Respondent accessed the online platform on April 13, 2023.
The disputed domain name is confusingly similar to the Complainant’s well-known and distinctive trademark “SCHNEIDER ELECTRIC”. Merely (i) reversing the letters “e” and “i” in the word “SCHNEIDER” and (ii) using the plural “ELECTRICS” instead of the original singular “ELECTRIC” 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 name does not resolve to an active website, 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 differences between the trademark owner’s legitimate domain name and the disputed domain name are (i) the reversed order of two letters and (ii) an additional “s” at the end, is a typical pattern used for abusive “typosquatting” registrations;
(iv) since MX records for the disputed domain name have been activated there is a high risk that the disputed domain name will be used for phishing activities; and
(v) 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.
- schnieder-electrics.com: Transferred
PANELLISTS
Name | Thomas Schafft |
---|