Decision for dispute CAC-UDRP-107471

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 is the owner of trademarks consisting of the term SCHNEIDER ELECTRIC, such as the international trademark SCHNEIDER ELECTRIC registration no. 715395 registered since March 15, 1999 and the European trademark SCHNEIDER ELECTRIC registration no. 1103803 filing date March 12, 1999. Further, the Complainant’s affiliate Schneider Electric Industries SAS owns at least one domain name consisting of the same distinctive wording SCHNEIDER ELECTRIC, namely, <schneiderelectric.com>, registered since April 4, 1996.

On March 23, 2025, the Respondent, Sanjay Nirwan, an individual located in Delhi, India, registered the disputed domain name <shcneiderelectric.com>.

The disputed domain name redirects to the Complainant’s official website <se.com>. Further, MX servers are configured.

According to the information on the case file, the Registrar confirmed that the Respondent is the current registrant of the disputed domain name and that the language of the registration agreement is English.

On April 8, 2025, Complainant filed the instant Complaint.

COMPLAINANT:

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’s group comprises 150,000 colleagues and more than a million partners operating in over 100 countries.

The Complainant owns several trademarks at least one domain name, characterised by the presence of the distinctive term "SCHNEIDER ELECTRIC". The Complainant contends that a previous panel has recognized its rights in the trademark "SCHNEIDER ELECTRIC".

The Complainant states that the disputed domain name is confusingly similar to its trademark SCHNEIDER ELECTRIC and that the inversion of the letters “H” and “C” constitutes an obvious misspelling of its trademark.

The Complainant assert that the Respondent lacks rights or legitimate interests in the disputed domain name because: the Respondent is not commonly known by the disputed domain name; the Respondent has no affiliation, authorization, license or similar with the Complainant; the disputed domain name is a typosquatted version of the Complainant’s mark; there is bona fide offering of goods or services from the Disputed Domain Name because it redirects to the Complainant’s official website.

Regarding bad faith registration and use, the Complainant claims that in light of the Complainant’s distinctive trademarks and significant reputation, combined with the use of a misspelling of the trademark and the fact that the disputed domain name redirects to the Complainant’s website, it can be reasonably inferred that the Respondent registered the disputed domain name with the Complainant in mind. The registration was therefore intended to take advantage of the Complainant’s reputation with the aim to create a likelihood of confusion with the Complainant. Further, the presence of configurated MX servers indicates that the disputed domain name may be used for improper email purposes.

The Complainant thus contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

RESPONDENT:

The Respondent submitted a brief response, reproduced here in its entirety:

"I would like to respectfully clarify that I have not copied or hosted any intellectual property belonging to any company. If you have identified any such material, please feel free to remove it immediately. The domain in question was registered simply because it was available. My sole intention is to engage in domain trading, and I may consider reselling it in the future if there is interest. There is no other purpose behind its registration or use. If you believe this situation is not appropriate, I would appreciate it if you could let me know your specific concerns or expectations. I am happy to cooperate and address the matter accordingly. Kind regards,“

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.

THREE ELEMENTS COMPLAINANT MUST ESTABLISH UNDER THE POLICY

According to Paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements to obtain an order that a disputed domain name should be transferred or cancelled:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant 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 are being used in bad faith.

The Panel has examined the evidence available to it and has come to the following conclusions concerning the satisfaction of the three elements of paragraph 4(a) of the Policy in these proceedings:

(A) THE COMPLAINANT’S RIGHTS AND CONFUSING SIMILARITY OF THE DISPUTED DOMAIN NAME TO THE COMPLAINANT’S RIGHTS

Sufficient evidence has been submitted by the Complainant of its registered trademark rights in the term SCHNEIDER ELECTRIC encompassing an extensive range of goods and services in classes 6, 9, 11, 36, 37, 39 and 42. Further, the Complainant’s affiliate is the owner of a domain name that incorporates its trademark, namely <schneiderelectric.com>. All of the aforementioned were created and registered well prior to March 23, 2025, the creation date of the disputed domain name. It is well established that a nationally or regionally registered trademark confers on its owner sufficient rights to satisfy the requirement of having trademark rights for the purposes of standing to file a UDRP case. As such, the Panel finds that the Complainant possesses rights in its SCHNEIDER ELECTRIC trademark.

UDRP panels have held that where the disputed domain name is a common, obvious, or intentional misspelling of a trademark it may be considered to be confusingly similar. In the present case, the disputed domain name consists of the SCHNEIDER ELECTRIC trademark reproduced almost in its entirety with a - difficult to discern - inversion of the letters '‘C‘‘ and '‘H‘', instead of its original sequence.  The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark SCHNEIDER ELECTRIC under a side by-side analysis because SHCNEIDER ELECTRIC is visually similar to SCHNEIDER ELECTRIC, particularly when looked at quickly, and includes changes from the Complainant’s mark that follow classic typo-squatting strategies. The sole change to the mark in this case is the C/H letter inversion, which results in a confusingly similar variant of the Complainant’s mark.

UDRP panels agree that the TLD may usually be ignored for the purpose of determination of identity or confusing similarity between a domain name and the Complainant’s trademark as it is technical requirement of registration (see paragraph 1.11.1 WIPO Overview 3.0). Thus, the TLD in this case “.com” can be ignored in this case for the purpose of considering whether the confusingly similar element is met.

Therefore, the Panel concludes that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy and the disputed domain name is confusingly similar to the Complainant’s mark.

(B) RESPONDENT’S LACK OF RIGHTS OR LEGITIMATE INTERESTS IN THE DISPUTED DOMAIN NAME

The second element of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests in the disputed domain name. The generally adopted approach by UDRP panels, when considering the second element, is that if a complainant makes out a prima facie case, the burden of proof shifts to the respondent to rebut it; see, for example, WIPO Overview 3.0 (“...panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

However, the burden of proof still remains with the Complainant to make out its prima facie case on a balance of probabilities. Moreover, the wording of paragraph 4(a)(ii) of the Policy requires a complainant to establish that the respondent has no rights or legitimate interests in the domain name in issue. Simply establishing that the complainant also has rights in the domain name in issue is insufficient.

In the present case, the Complainant asserts prima facie that the Respondent is not commonly known by the disputed domain name, is not in any way affiliated with the Complainant, nor has the Respondent been granted an authorization to register the disputed domain name or to use Complainant’s SCHNEIDER ELECTRIC trademark. Further, the Complainant contends that the Respondent has not made any legitimate use of the disputed domain name, because it redirects to the Complainant’s own website.

The Respondent’s short response does not rebut the Complainant’s prima facie case. The Respondent gives no satisfactory explanation for why he registered a domain name that obviously misspells a distinctive trademark associated with the Complainant’s expansive 38 billion euro business including 150,000 colleagues and operations in 100 countries worldwide.  Nor does he explain why he is using the disputed domain name to redirect to the Complainant’s official website. He merely states that he registered the disputed domain name “simply because it was available” and with the intention to engage in domain name trading. The Panel acknowledges that domain name trading is not inherently illegitimate and may, in appropriate circumstances, give rise to rights or legitimate interests under this second element of the Policy. However, where - such as in this instant case - the Respondent’s conduct indicates that the domain name was registered or acquired with the Complainant and its mark specifically in mind, and there is no other plausible explanation for the registration, such conduct does not establish rights or legitimate interests under the Policy.

As a final point, there is no evidence that 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 SCHNEIDER ELECTRIC trademark. 

The Panel concludes that neither the Respondent nor the evidence establishes that the Respondent has any right or legitimate interest to the disputed domain name. The Complainant has therefore also satisfied the requirement under paragraph 4(a)(ii) of the Policy.

(C) BAD FAITH REGISTRATION AND USE OF THE DISPUTED DOMAIN NAME

The third element requires Complainant to show that the disputed domain name has been registered and used in bad faith under paragraph 4(a)(iii) of the Policy. Further, Paragraph 4(b) of the Policy sets out four circumstances, in particular but without limitation, any one of which may be evidence of the registration and use of a domain name in bad faith. The four specified circumstances are:

(i) circumstances indicating that the respondent has registered or 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 respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.

The Panel finds that the Complainant has shown that the Respondent registered and used the disputed domain name in bad faith in general (i.e. under paragraph 4(a)(iii) of the Policy) for the following reasons:

The Complainant’s trademark is distinctive and enjoys considerable reputation as confirmed by other UDRP panels including 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 is not being actively used, but rather it redirects to the Complainant’s official website. The consensus view of panels states “panels have found that a respondent redirecting a domain name to the complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant.” (see Paragraph 3.1.4 WIPO Overview 3.0).  Further, the use of the disputed domain name for a redirect to the Complainant’s website is persuasive evidence that the Respondent had actual notice of the Complainant’s trademark at the time of registration. It has regularly been held that to copy a trademark in a domain name, or use it with a slight variation, knowing that the disputed domain name is based on the trademark of another party, constitutes bad faith registration and use of the disputed domain name. The Panel makes that finding in the present case. On the balance of probabilities, the Panel finds that the Respondent was aware of Complainant and its SCHNEIDER ELECTRIC trademark and was improperly targeting the Complainant in bad faith according to the Policy, when the Respondent registered the disputed domain name.

There is no evidence that the Respondent is commonly known by the disputed domain name and Complainant states – and the Respondent does not refute - that the Respondent has never been authorized by the Complainant to use the Complainant’s trademark(s) and/or register the disputed domain name, nor is there affiliation between the Complainant and the Respondent.

The evidence establishes that the Respondent registered the disputed domain name in bad faith under paragraph 4(b)(ii) of the Policy. Notably, the Respondent states in his Response, “I may consider reselling [the disputed domain name] in the future if there is interest.” The Panel finds this admission, when considered alongside several aggravating factors—including the distinctive nature of the Complainant’s SCHNEIDER ELECTRIC trademark, the deliberate use of a typosquatting technique by transposing the letters “c” and “h”, and the improbability that any party other than the Complainant would have a legitimate interest in the disputed domain name—demonstrates that the Respondent’s primary intent was to sell the disputed domain name to the Complainant for valuable consideration exceeding his out-of-pocket expenses.

As a final point, the disputed domain name has been set up with MX records, indicating that they could be actively used for e-mail purposes. It would be difficult for an e-mail recipient to spot the inversion of the “c” and “h” in email addresses originating from the disputed domain name, which are only minor differentiators compared to e-mails originating from the Complainant’s own legitimate website <schneiderelectric.com>. Accordingly, the potential for actual or attempted e-mail related fraud and/or phishing is high. The existence of MX records and potential for associated fraudulent e-mail activity can be a factor indicating bad faith. See 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.”). In this instant case, the Panel finds no conceivable good faith purpose for e-mail addresses originating from the disputed domain name and thus the existence of MX records supports a finding of bad faith.

In light of the above analysis, the Panel concludes that the Complainant has made out its case that the disputed domain name was registered and is being used in bad faith, and thus has satisfied the requirement under paragraph 4(a)(iii) of the Policy.