ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Schneider Electric SE v. Nate Smith, se.net Case No. D2024-0147 1. The Parties The Complainant is Schneider Electric SE, France, represented by Nameshield, France. The Respondent is Nate Smith, se.net, United States of America. 2. The Domain Name and Registrar The disputed domain name (the “Domain Name”) is registered with Squarespace Domains II LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2024. On January 15, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 16, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Contact Privacy Inc. Customer 7151571251) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 18, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 19, 2024. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 22, 2024. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2024.
page 2 The Center appointed Dawn Osborne as the sole panelist in this matter on February 16, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant, founded in 1871, is a French industrial business trading internationally. It manufactures and offers products for power management, automation, and related solutions. The Complainant's corporate website can be found at “www.schneider-electric.com”. The Complainant is featured on the NYSE Euronext and the French CAC 40 stock market index. In 2022, the Complainant’s revenues amounted to EUR 34.2 billion. The Complainant owns several trademarks for SCHNEIDER ELECTRIC, such as: - International trademark SCHNEIDER ELECTRIC no. 715395 registered since March 15, 1999; - International trademark SCHNEIDER S ELECTRIC no. 715396 registered since March 15, 1999; and - European Union trademark SCHNEIDER ELECTRIC no. 001103803 registered since September 9, 2005. The Complainant’s affiliate is also the owner of registered and used since April 4, 1996. The Domain Name was registered on December 8, 2024, and it resolves to an inactive page. Mail Exchanger (“MX”) servers are configured in relation to the Domain Name. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name. Notably, the Complainant contends that: The Domain Name is confusingly similar to the Complainant’s trademark SCHNEIDER ELECTRIC including it in its entirety. The replacement of the letter “I” by “L” in the trademark constitutes an obvious misspelling of the Complainant’s trademark SCHNEIDER ELECTRIC and is characteristic of a typosquatting practice intended to create confusing similarity between the Complainant’s trademark and the Domain Name. Previous panels have found that the slight spelling variations does not prevent a domain name from being confusingly similar to a complainant’s trademark. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not change the overall impression of the designation as being connected to the trademark SCHNEIDER ELECTRIC. It does not prevent the likelihood of confusion between the Domain Name and the Complainant and its trademark. According to Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the Respondent carries the burden of 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 UDRP.
page 3 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 commonly known by the Domain Name. The Respondent has no rights or legitimate interests in respect of the Domain Name and is not related in any way with the Complainant. The Complainant does not carry out any activity with, nor any business with the Respondent. No license nor authorization has been granted by the Complainant to the Respondent to make any use of the Complainant’s trademark SCHNEIDER ELECTRIC, or to apply for registration of the Domain Name. The Domain Name is a typosquatted version of the trademark SCHNEIDER ELECTRIC attempting to take advantage of Internet users’ typographical errors evidencing that the Respondent lacks rights or legitimate interests in the Domain Name. The Domain Name resolves to an inactive page confirming that the Respondent has no demonstrable plan to use the Domain Name. It proves a lack of rights or legitimate interests in respect of the Domain Name except to create a likelihood of confusion with the Complainant and its trademark. Thus, in accordance with the foregoing, the Respondent has no rights or legitimate interests in respect of the Domain Name. The misspelling of the trademark SCHNEIDER ELECTRIC was intentionally designed to be confusingly similar with the Complainant’s well-known trademark indicating that the Respondent is typosquatting, which is a further indication of bad faith registration and use pursuant to paragraph 4(a)(iii) of the Policy. Given the distinctiveness of the Complainant’s trademarks and reputation, it is extremely unlikely that the Respondent could have registered the Domain Name without actual knowledge of the Complainant’s rights in the trademark, which evidences bad faith. The Domain Name resolves to an inactive page. It is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate, such as by being a passing off or an infringement of the Complainant’s rights under the trademark law. As prior 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. Please see for instance: - Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; - CBS Broadcasting, Inc. v. Dennis Toeppen, WIPO Case No. D2000-0400. The Domain Name appears to be unused, but it has been set up with MX records which suggests that it may be actively used for email purposes. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between
page 4 the complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the mark is recognizable within the Domain Name merely replacing a letter “i” with a letter “l”. Accordingly, the Domain Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, sections 1.7 and 1.9. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. There is no evidence or reason to suggest that the Respondent is not commonly known by the Domain Name and according to the unrebutted arguments, the Respondent is not authorised by the Complainant to register any domain name incorporating the Complainant’s trademark. The Domain Name has not been used so there is no bona fide offering of goods or services or any noncommercial legitimate or fair use. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Domain Name such as those enumerated in the Policy or otherwise. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the Domain Name is a misspelled version of the Complainant’s SCHNEIDER ELECTRIC mark. Panels have consistently found that the mere registration of a domain name that is confusingly similar (particularly domain names comprising typos) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4. Further, the Respondent has not used the Domain Name. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.
page 5 Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the non-use of the Domain Name does not prevent a finding of bad faith in the circumstances of this proceeding. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trademark and the composition of the Domain Name which is a typosquatted version of the Complainant’s trademark, and finds that in the circumstances of this case the passive holding of the Domain Name does not prevent a finding of bad faith under the Policy. The Panel finds that the Complainant has established the third element of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant. /Dawn Osborne/ Dawn Osborne Sole Panelist Date: February 29, 2024
Full & Egal Universal Law Academy