Decision for dispute CAC-UDRP-104576

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 owner of several trademarks including the word parts “SCHNEIDER ELECTRIC”, such as the international word figurative trademark SCHNEIDER ELECTRIC, n° 715395 registered since March 15, 1999 and the European trademark SCHNEIDER ELECTRIC, n° 1103803 registered since March 12, 1999. Both trademarks are valid.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant is a French industrial company trading internationally, founded in 1871. 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 2019, the Complainant revenues amounted to 27.2 billion euros.

The disputed domain name <schneiderelectricservice.com> was registered by the Respondent on May 2, 2022, using a Privacy service. The website under this domain name is inactive but MX servers are enabled. The Respondent has not published any visible disclaimer on the website linked to the disputed domain name to explain that there is no existing relationship between the Respondent and the Complainant.

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.

The Complainant submits to satisfaction of the Panel that the disputed domain name <schneiderelectricservice.com> is confusingly similar to its SCHNEIDER ELECTRIC trademarks.

It contends that the disputed domain name wholly incorporates its trademark. It adds that the addition of word “service” in the disputed domain name is not sufficient to avoid the likelihood of confusion with the Complainant’s trademark.

Further the Complainant contends rightfully that the addition of the suffix “.com” does not change the overall impression of the designation as being connected to the SCHNEIDER ELECTRIC trademark of the Complainant. It does not prevent the likelihood of confusion between the disputed domain name and the Complainant’s trademarks and domain names. 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”. Please see WIPO Case No. D2003-0888, Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin and CAC Case no. 103976 - <SCHNEIDERELECTRICPARTS.COM>.

The Panel finds moreover that the Respondent is not commonly known by the disputed domain name. There is no legitimate registration or use of the disputed domain name for Respondent. The Complainant also asserts undisputed that the Respondent is not affiliated with nor authorized by the Complainant in any way. It also did not grant any license or authorization to make any use of the Complainant’s SCHNEIDER ELECTRIC trademark, or to register or use the disputed domain name. Please see for instance 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 third element of the rules, bad faith, is given because as prior WIPO UDRP panels have held, the incorporation of a famous mark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use.

For instance:

- WIPO Case No. D2000-0003, Telstra Corporation Limited v. Nuclear Marshmallows;

- WIPO Case No. D2000-0400, CBS Broadcasting, Inc. v. Dennis Toeppen.

Relying on the WIPO Case No. D2018-1706 Renault s.a.s v. Cem Aydin it is to contend here: "It even appears that the Respondent has registered the disputed domain name solely for the purpose of creating an association with the Complainant. After having reviewed the Complainant's screenshot of the website linked to the disputed domain names, the Panel is convinced that the Respondent has intentionally registered the disputed domain names in order to generate traffic to its own website."

Further please see for instance CAC Case no. 103976 - SCHNEIDERELECTRICPARTS.COM and 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.”).