Decision for dispute CAC-UDRP-109009

The Panel is unaware of any other pending or decided legal proceedings relating to the disputed domain name.

The Complainant owns the USPTO trademark “SQUARE D” registered since January 6, 1931.

The Complainant (Ex – SQUARE D company), which was founded in 1902, is an American manufacturer of electrical equipment headquartered in Andover, Massachusetts. The Complainant is a flagship brand of Schneider Electric, which acquired the company in 1991.

The Complainant owns also the domain name <squared.com> registered since November 9, 1993.

The disputed domain name was registered on April 20, 2017 and resolves to a website reproducing the Complainant’s trademark to sell electrical products.

COMPLAINANT

1. The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights

The Complainant states that the disputed domain name is confusingly similar to its “SQUARE D” trademark as it is identically contained. The addition of the sigle “VFD” (in reference with “Variable Frequence Drive”) is not sufficient to escape the finding that the disputed domain name is confusingly similar to the trademark. It does not change the overall impression of the designation as being connected to the Complainant’s trademark. It is well-established that “a domain name that wholly incorporates a Complainant’s registered trademark may be sufficient to establish confusing similarity for purposes of the UDRP”.

Moreover, the Complainant contends that the addition of the suffix “.COM” does not change the overall impression of the designation as being connected to the “SQUARE D” trademark. It does not prevent the likelihood of confusion between the disputed domain name and the Complainant and its trademark.

Finally, the Complainant’s rights over the terms “SQUARE D” have been confirmed by previous panel.

Thus, the disputed domain name is confusingly similar to the Complainant's trademark.

2. The Respondent has no rights or legitimate interests in respect of the disputed domain name

The Complainant asserts that the Respondent is not identified in the Whois database as the disputed domain name. Past panels have held that a Respondent was not commonly known by a disputed domain name if the Whois information was not similar to the disputed domain name. Thus, the Respondent is not known as the disputed domain name.

The Complainant contends that the Respondent is not affiliated with nor authorized in any way. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant does not carry out any activity for, nor has any business with the Respondent.

Neither license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademark or apply for registration of the disputed domain name by the Complainant.

Furthermore, the disputed domain name redirects to a website offering goods bearing the “SQUARE D” trademark. The Respondent uses the disputed domain name to disrupt the complainant’s business and attract users by impersonating the complainant, as he presented himself as SQUARE D, by reproducing the SQUARE D trademark.

Thus, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

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

The disputed domain name is confusingly similar to the Complainant’s well known and distinctive “SQUARE D” trademark. A search about the terms “SQUARE D” on Google refers to the Complainant. Furthermore, the website makes clear references to the “SQUARE D” trademark and related electrical products.

Thus, the Complainant finds that by registering the disputed domain name, the Respondent deliberately and consciously targeted the Complainant’s prior trademarks for “SQUARE D”.

By using the disputed domain name, the Respondent is attempting to misrepresent itself as the Complainant or as connected to the “SQUARE D” brands and products through its use of the website at the disputed domain name. Such intentional use of the disputed domain name in an attempt to attract, for commercial gain, Internet users to Respondent’s website on which Respondent is purporting to offer products which is manufactured by Complainant and competitors, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and the competing goods, constitutes an abuse of the disputed domain name and Complainant’s goodwill and reputation which constitutes use in bad faith for the purposes of the Policy.

Thus, the Complainant concludes that the Respondent has registered and is using the disputed domain name in bad faith.

RESPONDENT

No administratively compliant Response was filed.

To the satisfaction of the Panel, the Complainant has shown that the disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

To the satisfaction of the Panel, the Complainant has 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).

To the satisfaction of the Panel, the Complainant has 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 the UDRP have been met, and there is no other reason why it would be unsuitable to provide the Decision.

1. Identical or Confusingly Similar

The Complainant has established rights in the “SQUARE D” trademark by virtue of its US registration, registered on January 6, 1931

Moving on to the next part of the analysis under the first element, the disputed domain name, incorporates the “SQUARE D” mark in its entirety. The omission of the space between “SQUARE” and “D” is immaterial for purposes of the comparison, as spaces cannot be reproduced in a domain name. The addition of the term “vfd”, which the Complainant suggests refers to a “variable frequency drive”, does not prevent a finding of confusing similarity. The trademark remains clearly recognizable within the disputed domain name, and the addition of a descriptive or otherwise relevant term does not ordinarily prevent the first element from being satisfied, as per the persuasive WIPO Overview 3.1 sections 1.7 and 1.8.

Based on the record at hand, as suggested by the Complainant, the added term does seem consistent with the potential reference to a category of electrical equipment consistent with the Complainant’s business. While the significance of this addition is not determinative under the first element, it is relevant to the assessment of the Respondent’s intentions under the second and third elements.

The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The first element of paragraph 4(a) of the Policy is satisfied.

2. Rights or Legitimate Interests

The Complainant asserts that it has neither authorized nor licensed the Respondent to use the “SQUARE D” mark, that the Respondent is not affiliated with the Complainant, and that the Respondent is not commonly known by the disputed domain name. The available record contains no evidence to the contrary.

The Complainant has also submitted that the disputed domain name resolves to a website that reproduces the “SQUARE D” mark and offers electrical products, including products associated with competing manufacturers. According to the Complainant, and the record at hand, the website presents itself as “SQUARE D”, thereby creating the impression that it is operated by, or is otherwise affiliated with, the Complainant.

Taken together, these circumstances establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production accordingly shifts to the Respondent to come forward with relevant evidence demonstrating such rights or legitimate interests, although the ultimate burden of proof remains with the Complainant, as per section 2.1 of the WIPO Overview 3.1.

Under paragraph 4(c) of the Policy, a respondent may demonstrate rights or legitimate interests through, inter alia, a bona fide offering of goods or services before notice of the dispute, evidence that it has been commonly known by the domain name, or legitimate noncommercial or fair use without an intent for commercial gain to misleadingly divert consumers or tarnish the trademark at issue.

The present record does not support any of these circumstances. In particular, the use of a domain name incorporating the Complainant’s mark to operate a website that appears to impersonate the Complainant is inconsistent with a bona fide offering of goods or services. The fact that the website offers electrical products does not, in itself, establish a legitimate interest where the manner of use creates a false impression of source, sponsorship, affiliation, or endorsement.

Even where a respondent is engaged in the resale of genuine trademarked goods, the applicable principles require an assessment of whether the use satisfies the conditions for a bona fide offering, including whether the respondent accurately and prominently discloses its relationship, or lack of relationship, with the trademark holder, as per section 2.8 of the WIPO Overview 3.1.

On the evidence described in the record, the Respondent’s apparent presentation of itself as “SQUARE D” weighs against such a finding. The offering of competing products further undermines any suggestion that the website constitutes a legitimate, clearly disclosed reseller operation.

Nor does the record indicate that the Respondent is commonly known by the disputed domain name or that its use is noncommercial or otherwise fair. Rather, the website appears to use the Complainant’s mark to attract customers in a commercial context. Such impersonation cannot, on the present facts, confer rights or legitimate interests as per section 2.13.1 of the WIPO Overview 3.1.

The Respondent has not filed a Response and has therefore offered no evidence rebutting the Complainant’s prima facie case. The absence of a Response does not, by itself, establish the Respondent’s lack of rights or legitimate interests; however, in the circumstances of this case, the evidence submitted by the Complainant remains unrebutted.

The Panel finds that the Complainant has satisfied the second element of paragraph 4(a) of the Policy.

3. Registered and Used in Bad Faith

The disputed domain name was registered on April 20, 2017, more than 86 years after the registration of the Complainant’s “SQUARE D” mark. The Complainant, founded in 1902, is an established manufacturer of electrical equipment, and “SQUARE D” is a flagship brand of Schneider Electric, which acquired the company in 1991. The Complainant also owns the domain name <squared.com>, registered on November 9, 1993, as per the record at hand.

This chronology alone would not establish bad faith. However, it must be considered alongside the composition of the disputed domain name and the Respondent’s subsequent use of it. The disputed domain name reproduces the Complainant’s mark in its entirety, adding only the term “vfd”, which refers to a category of electrical equipment consistent with the Complainant’s business. The associated website reproduces the “SQUARE D” mark and offers electrical products, including products of competing manufacturers, as per the record at hand.

These circumstances strongly support the inference, on the balance of probabilities, that the Respondent was aware of the Complainant and its mark when registering the disputed domain name and deliberately selected it to capitalize on the mark’s association with electrical equipment. The website’s reproduction of the mark and its apparent presentation as the Complainant reinforce that inference. On the balance of probabilities, the Panel finds that the disputed domain name was registered with the Complainant and its trademark in mind, as per sections 3.1.4 and 3.2.2 of the WIPO Overview 3.1.

The Panel further finds that the Respondent’s use falls within the circumstances described in paragraph 4(b)(iv) of the Policy. By using the disputed domain name to resolve to a website that reproduces the “SQUARE D” mark and offers electrical products, the Respondent has sought to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website and the products offered there.

The addition of “vfd” is particularly telling in this context. Rather than distinguishing the disputed domain name from the Complainant, the term reinforces the apparent connection with the Complainant’s field of business. The resulting domain name is apt to suggest a website dedicated to “SQUARE D” variable frequency drives or related products, thereby increasing the likelihood that Internet users seeking the Complainant or its products would be misdirected to the Respondent’s website.

The offering of competing products further supports the finding that the Respondent’s use is commercial and that the website is not merely informational or referential. In the absence of any apparent disclosure of the Respondent’s lack of affiliation with the Complainant, the website’s presentation reinforces the likelihood of confusion as to the source or endorsement of the goods and services offered.

The Respondent has not filed a Response and has unfortunately provided no explanation for its choice of the disputed domain name or its use of the “SQUARE D” mark. Although the default does not relieve the Complainant of its burden of proof, the Panel may consider the unrebutted evidence and draw such inferences as are appropriate in the circumstances.

Considering the record as a whole, the Panel finds that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. The third element is therefore satisfied.

4. Decision

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