Decision for dispute CAC-UDRP-108153

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 the following trademark registrations for SCHNEIDER ELECTRIC:

• International trademark registration number 715395, registered on 15 March 1999;
• International trademark number 715396, registered on 15 March 1999; and
• EU trademark registration number 1103803, filed on 12 March 1999.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it. It asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name <shop-schneider-electric.store> and states:

1. no company is registered under that name and the Respondent registered that domain name to increase the risk of confusion;
2. the Respondent is not affiliated with the Complainant and is not authorised by the Complainant to use its trademark;
3. the Complainant does not carry out any activity for, nor has any business with the Respondent; and
4. the disputed domain name has been used in a phishing scheme.

The Complainant asserts that the Respondent has registered and is using the disputed domain name in bad faith for fraudulent purposes.

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.

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements:

1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. the Respondent has no rights or legitimate interests in the disputed domain name; and
3. the disputed domain name has been registered and used in bad faith.

IDENTICAL OR CONFUSINGLY SIMILAR

The Complainant owns trademark registrations for SCHNEIDER ELECTRIC that predate the registration of the disputed domain name.

The Complainant’s trademark is clearly identifiable in the disputed domain name. Where the Complainant’s trademark is recognisable in the disputed domain name, the addition of other descriptive words does not prevent a finding of confusing similarity (see WIPO Jurisprudential Overview 3.0 at paragraph 1.8). Adding the generic word “shop” and hyphen between words that form the Complainant’s trademark does not avoid a finding that the disputed domain name is confusingly similar to the Complainant’s trademark.

A top-level domain is a required element of every domain name. The generic top-level domain “.store” may be disregarded when assessing whether the disputed domain name is confusingly similar to the Complainant’s mark.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that the requirements of Paragraph 4(a)(i) of the Policy have been met.

NO RIGHTS OR LEGITIMATE INTERESTS

The Complainant has long standing trademark rights in the name SCHNEIDER ELECTRIC and has made out a prima facie case that the Respondent lacks rights or legitimate interest in the disputed domain name. The burden of proof now shifts now shifts to the Respondent to show that he has relevant rights.

The Respondent may demonstrate relevant rights if:

(i) before any notice of the dispute, the Respondent has used, or made demonstrable preparations to use, the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services; or

(ii) it has been commonly known by the disputed domain name; or

(iii) is making a legitimate noncommercial 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 Respondent has not filed a Response, nor challenged any of the Complainant’s assertions. The Respondent registered the disputed domain name that incorporates the Complaint’s mark. There is no evidence to indicate that the Respondent is commonly known by the disputed domain name. The Respondent is not authorised to use the Complainant’s trademark or carry out any business for the Complainant. The Complainant has submitted evidence to show that the Respondent is using the disputed domain name for an e-mail that falsely pretends to be from the Complainant. This is not a bona fide offering of goods or services by the Respondent, nor a legitimate non-commercial or fair use of the disputed domain name.

Considering the Complainant’s submissions and evidence submitted, the Panel concludes that the Respondent has no rights or legitimate interest in the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been met.

REGISTERED AND USED IN BAD FAITH

The Respondent has registered the disputed domain name that incorporates the Complaint’s well-established trademark. The Respondent has used the disputed domain name for an e-mail that fraudulently pretends to be from the Complainant, and to which is attached a bill of lading authorising the delivery of goods to the person named in the e-mail.

Given the evidence submitted with the Complaint, the Panel concludes the Respondent knew of the Complainant’s mark and business when he registered the disputed domain name and intended in bad faith to create likelihood of confusion with the Complainant's mark for commercial gain.

The Panel finds that the disputed domain name was registered and is being used in bad faith and that the requirements of paragraph 4(a)(iii) of the Policy have been met.