The Complainant is Schneider Electric of Rueil Malmaison, France, represented by Nameshield, France.
The Respondent is Bijan babanejad of Tehran, Islamic Republic of Iran. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with IRNIC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 3, 2017. On February 3, 2017, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Domain Name. On February 5, 2017, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on February 9, 2017.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the "Policy" or "irDRP"), the Rules for .ir Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 13, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2017. The Respondent did not file a Response. On March 6, 2017, the Center notified the Respondent's default.
The Center appointed Nicholas Smith as the sole panelist in this matter on March 17, 2017. 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 is a French industrial group that manufactures and distributes products for power management, automation and solutions for businesses. In 2013 the Complainant had a turnover of 24 billion Euros.
The Complainant is owner of an international trade mark registration, designating over 30 countries, for the words "Schneider Electric" (the "SCHNEIDER ELECTRIC Mark") dating from 1999. The Complainant is also the owner of numerous domain names that correspond to the SCHNEIDER ELECTRIC Mark, including , registered in 1997, which is identical to the Domain Name other than the top level domain ".com" being replaced with ".ir".
The Domain Name was created on October 12, 2007 and was registered by the current registrant on March 17, 2013. It currently resolves to an Internet site ("Respondent's Website") which appears to be operated by an entity called Omid Electric. While most of the website is in Arabic, the Respondent's Website appears to sell electrical equipment, makes no reference to the Complainant and instead prominently displays and offers for sale electrical equipment from direct competitors of the Complainant, including Siemens, Balluff and Pepperl+ Fuchs. It is not suggested that any of these entities have any connection to or awareness of the Respondent or the Respondent's Website. 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant's SCHNEIDER ELECTRIC Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered or is being used in bad faith.
The Complainant is the owner of the SCHNEIDER ELECTRIC Mark having registered the SCHNEIDER ELECTRIC Mark and related marks throughout the world.
The Domain Name consists of the SCHNEIDER ELECTRIC Mark in its entirety with the addition of the "-" between "schneider" and "electric" and the addition of the country code Top-Level Domain ".ir". The Domain Name is confusingly similar to the Complainant's SCHNEIDER ELECTRIC Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name, nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is using the Domain Name for a website that offers for sale electrical equipment originating from competitors of the Complainant. The use of a domain name in this manner does not constitute a bona fide offering of goods or services. This constitutes prima facie evidence of no rights or legitimate interests.
The Domain Name was registered and is being used in bad faith. The Domain Name was registered with the Complainant in mind, given the fame of the SCHNEIDER ELECTRIC Mark and the use of the Domain Name. The Complainant contends that the Respondent used the Domain Name to capitalize on the fame and goodwill of the SCHNEIDER ELECTRIC Mark in order to increase traffic to the Respondent's Website for the Respondent's own pecuniary gain. Such conduct constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant's trade or service mark.
The Complainant is the owner of the SCHNEIDER ELECTRIC Mark, having registrations for the SCHNEIDER ELECTRIC Mark as a trade mark in France and various countries around the world.
The Domain Name consists of the SCHNEIDER ELECTRIC Mark, with the addition of the "-" between "schneider" and "electric", which does not prevent a finding of confusing similarity, and the country code Top-Level Domain ".ir". It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the country code Top-Level Domain ".ir" may be disregarded (see Compagnie Générale des Etablissements Michelin v. Saeed Karimi,WIPO Case No. DIR2011-0001; and Kaspersky Lab Zao v. BaniSaz Co.,WIPO Case No. DIR2010-0004).
The Panel adopts that reasoning. The Domain Name is identical or confusingly similar to the Complainant's SCHNEIDER ELECTRIC Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
"Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." (Policy, paragraph 4(c)).
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the SCHNEIDER ELECTRIC Mark or a mark similar to the SCHNEIDER ELECTRIC Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial use.
The Respondent uses the Domain Name to operate a website to sell products made by competitors of the Complainant in direct competition with the Complainant. Such a use of the Domain Name is not bona fide since it is using the Complainant's SCHNEIDER ELECTRIC Mark for a site selling electrical equipment in direct competition with the Complainant.
The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct demonstrates a right or legitimate interest in the Domain Name under the Policy. In the absence of such a response the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered or Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location. (Policy, paragraph 4(b)).
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the SCHNEIDER ELECTRIC Mark at the time the Domain Name was registered. The Domain Name resolves to a website selling electrical equipment, being products offered by competitors of the Complainant. Furthermore given the fame of the SCHNEIDER ELECTRIC Mark and the fact that "schneider electric" has no dictionary meaning, there is no obvious explanation for the registration of the Domain Name other than by reference to the SCHNEIDER ELECTRIC Mark.
In the circumstances, the Respondent's conduct in registering the Domain Name when it was aware of the Complainant's rights and lacked rights or legitimate interests of its own amounts to registration in bad faith.
The Respondent is using the Domain Name for the purpose of operating a website that sells goods that compete directly with the Complainant's products. The Respondent is using the Domain Name, which is confusingly similar to the SCHNEIDER ELECTRIC Mark, to sell products, be they legitimate or otherwise, in competition with the Complainant and without the Complainant's approval. Such use, in the absence of any explanation by the Respondent, is prima facie misleading and creates a likelihood of confusion with the Complainant. Consequently the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the Complainant's SCHNEIDER ELECTRIC Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's Website.
The Panel, while noting that the Policy only requires that a complainant show that a respondent registered or subsequently used the domain name at issue in bad faith, finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) 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.
Nicholas Smith
Sole Panelist
Date: March 23, 2017
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