Decision for dispute CAC-UDRP-107407

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

The Complainant has provided evidence of ownership of the numerous trademarks, including:

• International trademark SCHNEIDER ELECTRIC n° 715395 registered on March 15, 1999;
• International trademark SCHNEIDER S ELECTRIC n° 715396 registered on March 15, 1999;
• European trademark SCHNEIDER ELECTRIC n° 1103803 registered on March 12, 1999.

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 is featured on the NYSE Euronext and the French CAC 40 stock market index. In 2024, the Complainant revenues amounted to 38 billion euros.

The Complainant also owns an important domain names portfolio, including the domain name <schneiderelectric.com> registered in 1996.

The disputed domain names were registered on December 2, 2024 and redirect to third parties’ websites. Besides, the disputed domain names are offered for sale. Finally, MX servers are configured on both disputed domain names.

COMPLAINANT

A. THE DISPUTED DOMAIN NAMES ARE IDENTICAL OR CONFUSINGLY SIMILAR

The Complainant states that the disputed domain names are confusingly similar to its trademark SCHNEIDER ELECTRIC. The only difference lies in the addition of the generic term “DMS” to trademark SCHNEIDER ELECTRIC in the domain names. It does not change the overall impression of the designation as being connected to the Complainant’s trademark SCHNEIDER ELECTRIC.

Furthermore, the Complainant contends that the addition of the gTLDs “.pro” and “.com” does not change the overall impression of the designations as being connected to the Complainant’s trademark.

B. RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTEREST IN RESPECT OF THE DISPUTED DOMAIN NAMES
The Complainant has not found that the Respondent is commonly known by the disputed domain names or that it has legitimate interest over the disputed domain names. The complainant equally submits that the Respondent is not affiliated with or authorized by the Complainant.

The Complainant equally submits that the Respondent is not using the domain names in connection with a bona fide offering of goods or services, as they redirect to third parties’ websites and are offered for sale.

C. THE DISPUTED DOMAIN NAMES WERE REGISTERED AND ARE BEING USED IN BAD FAITH

The Complainant contends that the disputed domain names are confusingly similar to its distinctive trademark SCHNEIDER ELECTRIC. The Complainant also submits that given the distinctiveness of the Complainant's trademarks and reputation; it is reasonable to infer that the Respondent has registered the domain names with full knowledge of the Complainant's trademarks.

The use of the disputed domain names in relation with redirections to third parties’ websites, the fact that they are offered for sale above out-of-pocket costs and that MX records are linked to the disputed domain names are further elements demonstrating the Respondent's bad faith.

RESPONDENT

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are 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 names (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are 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.

Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:

1. that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

2. that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

3. that the disputed domain names were registered and are being used in bad faith.
   
   

A. Identical or Confusingly Similar

A complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the complainant to succeed.

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 is the holder of trademark rights on the denomination SCHNEIDER ELECTRIC.

As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the domain name with the trademarks in which the complainant holds rights. According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “this test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”.

Also, according to section 1.7 of the WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.

The disputed domain names wholly incorporate the Complainant’s trademarks "SCHNEIDER ELECTRIC" in addition to the generic term “DMS”. This addition does not prevent a finding of confusing similarity with the Complainant’s trademark. The fact that the disputed domain names wholly incorporate a Complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such mark.

It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com” or “.pro”, is typically ignored when assessing whether a domain name is identical or confusingly similar to a trademark.

This Panel concludes that the disputed domain names are confusingly similar to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:

1. before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
2. the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
3. the respondent is 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 or service mark at issue.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a Complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element.”

The evidence on record does not show that the Respondent was commonly known, as an individual or an organization, by the disputed domain names.

The Panel also finds, in the absence of a rebuttal from the Respondent, that the Respondent uses the Complainant's trademarks in the disputed domain names without authorization from the Complainant.

Equally, the Panel accepts that the Respondent has not made a legitimate non-commercial or fair use of the disputed domain names.

Therefore, the Panel concludes that the Respondent has no right or legitimate interests in the disputed domain names and therefore finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registration and Use in Bad faith

For the purpose of Paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

1. circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holders documented out-of-pocket costs directly related to the domain name; or
2. the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
3. the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
4. by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder's website or location.

The SCHNEIDER ELECTRIC trademark enjoys a long-standing continuous reputation worldwide. Such reputation, coupled with the evidence on record, shows that the Respondent was certainly aware of the existence of the Complainant and of the rights of the Complainant on the trademark. The Panel finds that the Respondent, by registering and using the disputed domain names, has intentionally attracted internet users by creating a likelihood of confusion with the Complainant's trademark.

The Panel agrees that the current use of the disputed domain names does not prevent a finding of bad faith use. By connecting the disputed domain names to MX records which allow the sending and reception of e-mails, there is a high likelihood that the Respondent intended to use the disputed domain names in relation to a phishing scheme.

Moreover, it is consistent within UDRP case law that the sale of domain names reproducing third-party trademarks above out-of-pocket costs is clear evidence of a Respondent’s bad faith.

The Panel concludes that the Respondent has registered and is using the disputed domain names in bad faith, and therefore finds that the requirements of paragraph 4(a)(iii) of the Policy is satisfied.