Decision for dispute CAC-UDRP-106592

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 has proven to be the owner of the SCHNEIDER ELECTRIC trademark.

The Complainant is, inter alia, the owner of the following trademarks: 

International trademark registration no. 715395 “SCHNEIDER ELECTRIC” (device), registered on March 15, 1999;

International trademark registration no. 715396 “SCHNEIDER ELECTRIC” (device), registered on March 15, 1999; 

EUTM registration no. 001103803 “SCHNEIDER ELECTRIC” (device), registered on September 9, 2005.

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 is www.schneider-electric.com. The corresponding domain name was registered on April 4, 1996.

The Complainant is featured on the NYSE Euronext and the French CAC 40 stock market index. In 2023, the Complainant revenues amounted to 36 billion euros.

The disputed domain name was registered on April 4, 2024.

The disputed domain name is currently inactive. Previously however, according to the documents submitted by the Complainant, it resolved to a parking page. 

COMPLAINANT:

1. The disputed domain name is confusingly similar to the Complainant's trademark

The Complainant contends that the disputed domain name <schneiderelectrictech.com>is confusingly similar to its well-known and distinctive trademark SCHNEIDER ELECTRIC.
The Complainant further affirms that the addition of the term “tech” to the SCHNEIDER ELECTRIC trademark is not sufficient to avoid the finding that the disputed domain name is confusingly similar to the Complainant’s trademark.

2. The Respondent does not have any rights or legitimate interest in the disputed domain name.

The Complainant contends that the Respondent is not commonly known by the disputed domain name and that the Respondent is not affiliated with or authorized by the Complainant in any way. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and is not related to the Complainant’s business in any way. The Complainant does not carry out any activity for, nor has any business dealings with, the Respondent. The Complainant further contends that the disputed domain name resolved to a parking page, and that the Respondent did not make any use of the disputed domain name.

3. The disputed domain name has been registered and is being used in bad faith

The Complainant contends that owing to the renown of the Complainant’s trademarks, it is presumable that the Respondent had actual knowledge of the Complainant’s distinctive trademarks.
The Complainant further contends that, owing to the distinctiveness of the SCHNEIDER ELECTRIC trademark, it is reasonable to infer that the disputed domain name was chosen by the Respondent having the trademark of the Complainant in mind. 

The Complainant also claims that the disputed domain name has been set up with MX records, which suggests that it may be actively used for e-mail purposes, and quoting previous CAC Case No. 102827, JCDECAUX SA v. Handi Hariyono, the Complainant affirms “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.”.

RESPONDENT:

The Respondent affirms that it is a company specializing in marketing and communication, claims to have registered the disputed domain for one of their clients, and that they are not responsible for it. They further affirm that the disputed domain name was available and therefore if the Complainant wanted it, they should have registered it.
No evidence and/or claims regarding rights to or legitimate interests in the disputed domain name are submitted.
In addition, there is no indication of any use or planned use of the disputed domain name. 

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.

A) Confusing similarity

The Panel agrees with the Complainant's assertions that the addition of the generic term, “tech”, does not prevent the disputed domain name from being confusingly similar to the Complainant’s trademarks.

B) Lack of legitimate rights or interests

The disputed domain name is a distinctive, non-descriptive name. It is unlikely that the Respondent registered the disputed domain name without having the Complainant firmly in mind. The Complainant’s assertions that the Respondent is not commonly known by the disputed domain name and is not affiliated with nor authorized by the Complainant are sufficient to constitute a prima facie demonstration of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent. The burden of evidence therefore shifts to the Respondent to show, using tangible evidence, that it does have rights or legitimate interests in the disputed domain name. The Respondent has made no attempt to do so. Indeed, the Respondent has affirmed that it registered the disputed domain name on behalf of a client, and that it is not responsible for it.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C) Registered or Used in Bad Faith

The Complainant gives sound bases for its contention that the disputed domain name was registered and has been used in bad faith.

Firstly, owing to the distinctiveness of the Complainant's trademarks and reputation, it is reasonable to infer that the Respondent registered the disputed domain name with full knowledge of the Complainant's trademarks, and so the Panel finds on the balance of probabilities that the Respondent was aware of the Complainant’s trademarks when registering the disputed domain name.

Secondly, the Panel accepts the Complainant’s unchallenged assertion that the Respondent registered the disputed domain name with the aim of creating a likelihood of confusion with the Complainant’s trademark.

Thirdly, it appears from the document provided by the Complainant that the disputed domain name has been set up with MX records, which suggests that it may be actively used for e-mail purposes. As already found in previous UDRP decisions it appears unlikely that the Respondent will be able to make any good faith use of the disputed domain name as part of an e-mail address.

Fourthly, the Respondent has not denied the Complainant’s trademark rights, nor has it contested any of the assertions made by the Complainant regarding its lack of legitimate interests or those concerning its bad faith in registering and using the disputed domain name.

Finally, the Respondent affirms that it is a company specializing in marketing and communication, which also registers domain names as part of its services to clients. It is therefore even more unlikely that the Respondent, a company that also operates in the registration of domain names, was not aware (at the very least) of the advisability of checking if the chosen domain name would infringe other parties’ rights.