Decision for dispute CAC-UDRP-105537

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”:

• 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 <schneiderelectric.com> registered since 1996. The Complainant has provided evidence to this Panel of all the rights mentioned above. 

The Complainant “Schneider Electric SA” is a French manufacturer and distributor of various electrical products, founded in 1871, and relates to the electrical distribution and automation, control solutions for energy and infrastructure, industry, buildings and residential. It is a French industrial business trading internationally and reached a revenue amounting to 34 billion EUR last year (2022). 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 disputed domain name <fr-schneiderelectric.com> was registered on June 8, 2023 and resolves to an inactive page. 

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.

Under the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

This Panel finds that the disputed domain name <fr-schneiderelectric.com> is confusingly similar to the Complainant's trademark SCHNEIDER ELECTRIC. Indeed, the disputed domain name includes it in its entirety.

This Panel agrees with the Complainant that the addition of the geographical abbreviation “FR”, which stands for the country France, is not sufficient to escape the finding that the disputed domain name is confusingly similar to the trademarks SCHNEIDER ELECTRIC. This argument has been continuously established in previous UDRP Decisions (see as a way of example: WIPO Case No. D2003-0888, Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin). 

Hence, to the satisfaction of this Panel, 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).

B. Rights or Legitimate Interests

This Panel notes that, under the Policy, 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 respective domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

This Panel notes that the Respondent did not reply to the Complainant’s contentions, and as such, none of the facts alleged by the Complainant were contested. 

This Panel takes into consideration that the Respondent is not called or known for “SCHNEIDER ELECTRIC” or anything similar, nor does it appear to be trading under that related name. This Panel also notes that the Complainant has not authorized nor licensed the Respondent to use its trademark, as well as is in any way affiliated with the Complainant. Furthermore, there is no record showing that the Respondent has ever stated or confirmed any rights or legitimate interests in said name.

As per the use of the domain name, this Panel notes that the disputed domain name is currently inactive and does not seem to have ever been used. The Complainant confirms that the Respondent has no demonstrable plan to use the disputed domain name, which has not been contested by the Respondent.

For all the above reasons, on the basis of the available evidence in this case, especially the absence of a Response to the Complainant's contentions in this proceeding, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

C. Registered and Used in Bad Faith

This Panel found that the notoriety of the Complainant and its trademark have already and previously been considered as "famous and well-known" in past UDRP Decisions. See for ease of reference, as a way of example WIPO Case No. D2016-0760, Schneider Electric v. Sophie Dupont for <schneider-electric-france.com>; WIPO Case No. D2004-0554 for <electric-schneider.com>.

The Panel finds that the Complainant’s SCHNEIDER ELECTRIC trademark is well-known and the Respondent must have known about it before the disputed domain name was registered (especially as the Respondent's location is France). This is apparent as the disputed domain name <fr-schneiderelectric.com> includes the Complainant's trademark SCHNEIDER ELECTRIC in its entirety, as well as from the addition of the letters "fr", which refers directly to the Complainant, who is a French industrial business (trading internationally).

Furthermore, the Panel confirms that the disputed domain name resolves to an inactive page (as stated above). Based on the evidence presented in this case, this Panel agrees with the Complainant's contentions that the Respondent has not demonstrated any activity in respect of the disputed domain name, and that it is not possible to conceive any plausible actual active use of the domain name by the Respondent that would not be illegitimate (such as by being a passing off, or an infringement of the Complainant’s rights under trademark law).

As prior UDRP panels have held, the incorporation of a famous and well-known marks into a domain name, coupled with an inactive website, may amount as evidence of bad faith registration and use. (See previous UDRP Cases for ease of reference, WIPO Case No. D2000-0003, Telstra Corporation Limited v. Nuclear Marshmallows). 

Based on all the above, this Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <fr-schneiderelectric.com> be transferred to the Complainant.