ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION SCHNEIDER ELECTRIC SE v. Michael Bergmann, SchneiderElectricCareers Case No. D2024-3075 1. The Parties Complainant is SCHNEIDER ELECTRIC SE, France, represented by Nameshield, France. Respondent is Michael Bergmann, SchneiderElectricCareers, United States of America (“United States”). 2. The Domain Name and Registrar The disputed domain name (“Domain Name”) is registered with Squarespace Domains LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2024. On July 26, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 26, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name. The Center sent an email communication to Complainant on July 29, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 29, 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 Respondent of the Complaint, and the proceedings commenced on July 31, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 20, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 21, 2024.
page 2 The Center appointed Clive L. Elliott, K.C., as the sole panelist in this matter on August 26, 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 Complainant is a French industrial business, founded in 1871, and trading internationally in the manufacture and provider of products for power management, automation and related solutions. It is featured on the NYSE Euronext and the French CAC 40 stock market index. Complainant is the registered owner of several trade marks including SCHNEIDER ELECTRIC (“Complainant’s Mark”), including but not limited to: Trade Mark Jurisdiction Registration No. Registration Date Class International No. 715395 March 15, 1999 6, 9, 11, 36, 37, 39, 42 International No. 715396 March 15, 1999 6, 9, 11, 36, 37, 39, 42 European Union No. 001103803 September 9, 2005 6, 9, 11, 36, 37, 39, 42 Complainant is also the owner of many domain names which include Complainant’s Mark, such as registered and used since April 4, 1996. According to the publicly available WhoIs, the Domain Name was registered on June 11, 2024, has been set up with MX records and currently resolves to a page under construction, namely it does not resolve to an active website. 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, Complainant contends that the Domain Name is confusingly similar to Complainant’s Mark as it contains Complainant’s Mark in its entirety, with the addition of the generic term “careers”. Furthermore, Complainant asserts that Respondent has used a confusingly similar identity to that of Complainant in order to increase the likelihood of confusion with Complainant. Complainant submits that by using a very similar identity to register the Domain Name, indicates that Respondent knew about Complainant and its distinctive Mark and reputation at the time of registration. Complainant states that Respondent has no rights or legitimate interest in respect of the Domain Name as he is not related in any way with Complainant and nor does Complainant carry out any activity for or has any business with Respondent. Complainant contends that Respondent has registered the Domain Name in bad
page 3 faith, which is evidence by the fact that Respondent has not made any use of the Domain Name since registration therefore demonstrating a lack of legitimate interest in respect of the Domain Name. Complainant also claims that the Domain Name has been set up with MX records which Complainant suggests may be actively used for email purposes. B. Respondent Respondent did not reply to 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 Complainant’s Mark and the Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Complainant has shown rights in respect of a trade mark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant’s Mark is recognizable within the Domain Name. That is, on the basis that the Domain Name differs only to the extent of adding the word “careers”. Accordingly, the Domain Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. While the addition of the word “careers” may bear on assessment of the second and third elements, the addition of the word does not, in and of itself, prevent a finding of confusing similarity between the Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. 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 Respondent may demonstrate rights or legitimate interests in a 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 respondent lacks rights or legitimate interests, the burden of production on this element shifts to respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Domain Name (although the burden of proof always remains on complainant). If respondent fails to come forward with such relevant evidence, complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Respondent has not rebutted 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. Of particular significance in the present case, it is alleged that the Domain Name does not resolve to an active website and that the Domain Name contained MX (“Mail Exchanger”) records with active email services. MX records are utilised for email delivery, providing a mechanism for directing incoming emails to
page 4 a mail server based on the particular domain name. Such activity on its own is not indicative of any rights or legitimate interests, and carries a risk that the Domain Name may be used to impersonate Complainant. In this regard, the composition of the Domain Name, incorporating Complainant’s distinctive trade mark with the term “careers” (which Internet users would likely associate with a site providing access to employment opportunities with Complainant), carries a risk of implied affiliation. WIPO Overview 3.0, section 2.5.1. Moreover, while the Respondent organization provided in the registration of the Domain Name is “SchneiderElectricCareers”, there is no evidence that Respondent is actually commonly known by the Domain Name. Rather, in the circumstances of this case, it appears the choice of Respondent organization was intended to falsely suggest an affiliation with Complainant or otherwise mislead Internet users attempting to determine the authenticity of the Domain Name. Accordingly, 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. The Panel notes that the composition of the Domain Name, incorporating Complainant’s distinctive and long-standing Mark with a term related to its operations, suggests Respondent knew of and sought to take advantage of Complainant’s Mark when registering the Domain Name. As noted above, Respondent is alleged to have engaged in questionable activities, namely embedding the confusingly similar Domain Name with MX records. Respondent has not put forward any credible explanation for the choice of Domain Name, and the Panel considers that there is a significant risk that emails originating from the Domain Name would be misleading or deceptive, falsely suggesting a connection with Complainant. Furthermore, from the inception of the UDRP, 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; this is especially so as the Domain Name is inherently confusing or deceptive, for the reasons discussed above. The Panel finds that 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. /Clive L. Elliott, K.C./ Clive L. Elliott, K.C. Sole Panelist Date: September 9, 2024
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