Schneider Electric SE v 刘增光 (Liu Zeng Guang)

WIPO Case No. D2024-3544

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Schneider Electric SE v. 刘增光 (Liu Zeng Guang)

Case No. D2024-3544

1. The Parties

The Complainant is Schneider Electric SE, France, represented by Nameshield, France.

The Respondent is 刘增光 (Liu Zeng Guang), China.

2. The Domain Name and Registrar

The disputed domain name <scihneider-electric.com> is registered with Alibaba Cloud Computing Ltd. d/b/a

HiChina ( (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2024. On September 2, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 3, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (unknown) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 3, 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 in English on September 3, 2024.

On September 3, 2024, the Center informed the parties in Chinese and English, that the language of the registration agreement for the disputed domain name is Chinese. On the same day, the Complainant requested English to be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s submission.

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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in Chinese and English of the Complaint, and the proceedings commenced on September 10, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 30, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2024.

The Center appointed Jonathan Agmon as the sole panelist in this matter on October 10, 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 is a French company founded in 1871 which trades internationally. It manufactures
products for power management, automation, and other related solutions. The Complainant is listed on the

New York Stock Exchange and in 2023, had a revenue of EUR 36 billion.

The Complainant owns various trademarks for SCHNEIDER ELECTRIC, including the following:

- International trademark registration No. 715395 for , registered on March 15, 1999;

- International trademark registration No. 715396 for , registered on March 15,
1999; and

- European Union trademark registration No. 001103803 for , registered on
September 9, 2005.

The Complainant owns and uses various domain names, including <schneiderelectric.com>, registered on
April 4, 1996, and <schneider-electric.com>, registered on October 3, 1997.

The disputed domain name was registered on August 14, 2024, and currently resolves to an inactive website. In addition, the disputed domain name MX servers are configured.

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 name.

Notably, the Complainant contends that:

- The disputed domain name is confusingly similar to the SCHNEIDER ELECTRIC trademark in which it

has rights. The disputed domain name consists of the Complainant’s SCHNEIDER ELECTRIC trademark
with the addition of the letter “i”. This, the Complainant argues is an obvious misspelling and characteristic of
typosquatting and does not prevent creating confusing similarity between the Complainant’s trademark and
the disputed domain name. The addition of the generic Top-Level Domain “.com” does not change the
overall impression of the disputed domain name.

- The Respondent is not identified or known by the disputed domain name. The Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent is not related in any way with the Complainant. The Complainant does not carry out any activity for, nor has any business with the Respondent. Neither license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademark SCHNEIDER ELECTRIC, or apply for registration of the disputed

domain name by the Complainant. The Respondent did not make any use of disputed domain name, and

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this confirms that the Respondent has no demonstrable plan to use the disputed domain name. This,
according to the Complainant, proves a lack of legitimate interests in respect of the disputed domain name

except in order to create a likelihood of confusion with the Complainant and its trademark.

- The disputed domain name was registered and is being used in bad faith. The misspelling of the

trademark SCHNEIDER ELECTRIC was intentionally designed to be confusingly similar with the the Complainant’s trademark, it is inconceivable that the Respondent did not have actual knowledge of the Complainant’s rights in the trademark at the time of registering the disputed domain name. This, the Complainant assert, is also evidence of bad faith. The fact the disputed domain name resolves to an inactive website demonstrates that the Respondent is not making an activity in respect of the disputed domain name, and it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name that would be legitimate. Further, despite the disputed domain name resolving to an inactive website, its MX servers are configured, which suggests that it may be used for emailing purposes.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.

The Complaint was filed in English. The Complainant requested that the language of the proceeding be

English for several reasons, including the fact that:

- The English language is the language most widely used in international relations and is one of the
working languages of the Center;

- The disputed domain name consists of words in Latin characters instead of the Chinese script; and

- Proceeding in Chinese would require the Complainant to retain specialized translation services at a
cost likely to be higher than the overall cost of these proceedings. This would impose a burden on the
Complainant which must be deemed significant in view of the low cost of these proceedings.

The Respondent did not make any specific submissions with respect to the language of the proceeding.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

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 name. WIPO Overview 3.0, section 1.7.

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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 entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms, here, the letter “i”, and a hyphen, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed 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 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.

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 disputed 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 disputed domain name such as those enumerated in the Policy or otherwise.

There is no evidence to suggest that the Respondent is commonly known by the disputed domain name. The Complainant’s registration of its trademark predates the registration of the disputed domain name. The disputed domain name resolves to an inactive webpage, and there is no evidence that the Respondent is using or preparing to use the disputed domain name for any legitimate purpose.

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 Respondent registered the disputed domain name long after the incorporates the entirety of the Complainant’s distinctive trademark with the addition of the letter “i” and a hyphen between “SCHNEIDER” and “ELECTRIC”. The placement of the letter “i” between the “c” and “h” in “SCHNEIDER” makes the additional letter difficult to discern and does not prevent the overall confusion between the Complainant’s trademark and the disputed domain name. This constitutes evidence of bad faith.

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The Panel notes that whilst the documents from the Center were delivered to the Respondent, the
Respondent refused the delivery of the said documents. The Respondent also did not file a response to the
Complaint. This is further evidence of bad faith.

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.

Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not
prevent a finding of bad faith under the doctrine of passive holding. 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 disputed domain name. The Panel also considers the following
factors to be relevant in this case: (i) refusal of the delivery of the documents from the Center and the failure
of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use,
and (ii) the configuration of the MX servers of the disputed domain name. Having reviewed the available
record, the Panel finds that in the circumstances of this case the passive holding of the disputed 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 disputed domain name <scihneider-electric.com> be transferred to the Complainant.

/Jonathan Agmon/
Jonathan Agmon
Sole Panelist
Date: October 18, 2024