ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Schneider Electric SE v. Emmanuel Thompson Case No. D2024-4144 1. The Parties The Complainant is Schneider Electric SE, France, represented by Nameshield, France. The Respondent is Emmanuel Thompson, Nigeria. 2. The Domain Names and Registrar The disputed domain names and are registered with Upperlink Limited (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2024. On October 9, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 15, 2024, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 October 17, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 6, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 7, 2024. The Center appointed Peter Burgstaller as the sole panelist in this matter on November 14, 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.
page 2 4. Factual Background The Complainant, established in the 19th century, is a global industrial technology provider. It provides its main business website under the domain name to which inter alia the domain names or resolve (Annex 3 and 5 to the Complaint). The Complainant owns numerous trademark registrations containing the mark SCHNEIDER ELECTRIC, inter alia - International (figurative) trademark Registration No. 715395, registered March 15, 1999, designated for several countries around the world; and - European Union (figurative) trademark Registration No. 1103803, registered September 9, 2005. The characteristic feature of these figurative trademarks is the name SCHNEIDER ELECTRIC (Annex 4 to the Complaint). The disputed domain names were registered on September 29, 2024 (Annex 1 to the Complaint); at the time of filing the Complaint, the disputed domain names referred to error websites stating: “SORRY! If you are the owner of this website, please contact your hosting provider: […]@schneider-eletricng.com…” or “SORRY! If you are the owner of this website, please contact your hosting provider: […]@schneider-eletricnl.com...” (Annex 6 to the Complaint). Finally, the disputed domain names had an active Mail Exchange (“MX”) record (Annex 7 to the Complaint). 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 disputed domain names. Notably, the Complainant contends that the SCHNEIDER ELECTRIC trademark is a famous and well-known trademark. It is noted that the disputed domain names entirely incorporate such trademark and only add the geographical terms “ng” and “nl”, respectively for Nigeria and Netherlands (Kingdom of the). The Complainant submits that there is no legal relationship whatsoever between the Complainant and the Respondent and it has not authorized, licensed, or consented to the Respondent’s registration and use of domain names incorporating the Complainant’s marks, or any confusingly similar variation thereof. The disputed domain names are neither used in connection with a bona fide offering of goods or services nor constitute a legitimate noncommercial or fair use; in fact, the disputed domain names point to an error page. The Complainant contends that the mere fact that the Respondent has registered the disputed domain names which incorporate the famous SCHNEIDER ELECTRIC mark is alone sufficient to give rise to an inference of bad faith; the registration of the disputed domain names cannot be a coincidence. Moreover, the mere reason of registering the disputed domain names by the Respondent is intentionally attempting to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Finally, the disputed domain names have active MX records, which indicate use for email, which evidences a likelihood of additional bad-faith use of the disputed domain names to engage in fraudulent email or phishing communications.
page 3 B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, the Complainant must prove that: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests with respect to the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. 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 the Complainant’s trademark and the disputed domain names. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Based on the available record, the Panel finds the Complainant has shown rights in respect of the mark SCHNEIDER ELECTRIC for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. In the present case, the disputed domain names are confusingly similar to the SCHNEIDER ELECTRIC mark in which the Complainant has rights, since they incorporate the entirety of the mark SCHNEIDER ELECTRIC and only add a hyphen between the two words and the geographic abbreviation “ng” for Nigeria and “nl” for Netherlands (Kingdom of the) as Suffix. It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain names, the mere addition of other terms or characters does not prevent a finding of confusing similarity under the first element of the Policy. This is the case at present – the mark SCHNEIDER ELECTRIC is clearly recognizable within the disputed domain names. WIPO Overview 3.0, section 1.8. Finally, it has also long been held that Top Level-Domains (in this case “.com”) are generally disregarded when evaluating the confusing similarity of a disputed domain name. WIPO Overview 3.0, section 1.11.1. Based on the available record, 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. While 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 often impossible 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. 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.
page 4 Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, since it has never assigned, granted, licensed, sold, transferred, or in any way authorized the Respondent to use the SCHNEIDER ELECTRIC trademark in any manner. Furthermore, the Respondent is not commonly known under the disputed domain names and the disputed domain names are not being used for a bona fide offering of goods or services; in fact, the disputed domain names resolved to error websites. Finally, the nature of the disputed domain names, incorporating the entirety of the distinctive, well-known and famous mark SCHNEIDER ELECTRIC, which also render almost identically the Complainant’s domain names and , cannot be considered fair use as it creates a likelihood of confusion with the Complainant. The Respondent did not provide any evidence showing its rights or legitimate interests in the disputed domain names. Based on the available record, the Panel finds the second element of the Policy has been established C. Registered and Used in Bad Faith As stated in many past decisions rendered under the Policy, both conditions, registration and use in bad faith, must be demonstrated; consequently, the Complainant must show that: - the disputed domain names were registered by the Respondent in bad faith; and - the disputed domain names are being used by the Respondent in bad faith. (i) The Complainant has established rights in the registered trademark SCHNEIDER ELECTRIC long before the registration of the disputed domain names. Furthermore, the trademark SCHNEIDER ELECTRIC is distinctive, famous and extensively used worldwide and on the Internet. Because of the distinctiveness and reputation of the SCHNEIDER ELECTRIC mark, it is inconceivable for this Panel that the Respondent has registered the disputed domain names without knowledge of the Complainant’s rights. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a distinctive trademark by an unaffiliated entity (as it is in the present case) can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4. Finally, a simple online search for SCHNEIDER ELECTRIC would have shown the Complainant and its famous SCHNEIDER ELECTRIC marks. WIPO Overview 3.0, section 3.2.3. Therefore, the Panel is convinced that the disputed domain names were registered in bad faith by the Respondent. (ii) The disputed domain names are also being used in bad faith: although there is no evidence that the disputed domain names are being actively used or resolve to a website with substantive content, panels have found that the non-use of a domain name (including a blank or “error” page, like in the present case) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. In addition, the high level of reputation of the Complainant’s trademark, as well as the composition (nearly identical to the Complainant’s mark) of the disputed domain names support the finding of bad faith under the Policy. Furthermore, this Panel concludes that the disputed domain names are being used in bad faith, putting emphasis on the following:
page 5 - the disputed domain names have active MX records, as shown in the MX records lookup, which indicates a possible use for email services; - the disputed domain names are inherently misleading, and are thus suited to divert or mislead potential Internet users from the website they are trying to visit (the Complainant’s site) and giving the false impression that the Respondent may be in some way related with the Complainant, which is not the case; and - the Respondent has failed to present any evidence of any good faith registration and use with regard to the disputed domain names. Based on the available record, 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 disputed domain names and be transferred to the Complainant. /Peter Burgstaller/ Peter Burgstaller Sole Panelist Date: November 18, 2024
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