Schneider Electric Se v Waldemar Schneider

WIPO Case No. D2024-0109

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Schneider Electric SE v. Waldemar Schneider

Case No. D2024-0109

1. The Parties

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

Respondent is Waldemar Schneider, Germany.

2. The Domain Name and Registrar

The disputed domain name <schneider-elektrik.info> (the “Domain Name”) is registered with IONOS SE (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2024. On January 12, 2024, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the Domain Name. On January 12, 2024, the Registrar transmitted by email to the Center its verif ication response disclosing registrant and contact information for the Domain Name which dif fered f rom the named Respondent (Redacted for privacy, 1&1 Internet Limited) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 15, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an

amendment to the Complaint. Complainant f iled an amended Complaint on January 17, 2024.

On January 15, 2024, the Center transmitted an email communication to the Parties in English and German regarding the language of the proceeding. On January 17, 2024, Complainant conf irmed its request that English be the language of the proceeding. On January 18, 2024, Respondent submitted its comments, in English and German, on the language of the proceeding that he would prefer to have the proceeding in German.

The Center verif ied that the Complaint together with the amended Complaint satisf ied 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 notif ied the Respondent of the Complaint in English and German, and the proceedings commenced on January 23, 2024. In accordance with the Rules, paragraph 5, the due date for Response was February 12, 2024. The Response was f iled in English and German with the Center on February 12, 2024.

On February 14, 2024, Complainant submitted a Supplemental filing in response to Respondent’s Response.

The Center appointed Marina Perraki as the sole panelist in this matter on February 14, 2024. The Panel f inds 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. Procedural Issue: Language of the Proceedings

Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the paragraph also provides that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding.

The Registrar’s Registration Agreement was in German. Notwithstanding the Registration Agreement being in German, Complainant requested that English be adopted as the language of the present proceeding. The Panel considers the following assertions of Complainant and Respondent:

Complainant claims that it is not familiar with the German language. Translating the Complaint in German and conducting the proceedings in the German language would incur substantial cost, inconvenience and undue delay.

Respondent put forward an objection to the language of the proceedings being English and requested that the language of the proceedings be German. He submitted communications to the Center and a Response to the Complaint both in German and English. The Panel therefore concludes that Respondent knows the English language well.

The Panel accepts Complainant’s request and determines that the language of this proceeding will be English (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 4.5.1 and 4.5.2, Laverana GmbH & Co. KG v. Silkewang, Jiangsu Yun Lin Culture Communication Co., Ltd. / xia men yi ming wang luo you xian gong si, WIPO Case No. D2016-0721; eBay Inc. v. NicSoft, Antonio Francesco Tedesco, WIPO Case No. D2014-0812).

5. Procedural matter – Supplemental filing

The Complaint was filed on January 11, 2024 and Complainant filed on February 14, 2024 a Supplemental
Filing, rebutting Respondent’s response.

The Rules provide for the submission of the Complaint by the Complainant and the Response by the Respondent. Paragraph 10 of the Rules in ef fect grants the Panel sole discretion to determine the admissibility of Supplemental Filings (including further statements or documents) received from either Party. Panels are typically reluctant to countenance delay through additional rounds of pleading and normally accept supplemental filings only to consider material new evidence or provide a fair opportunity to respond to arguments that could not reasonably have been anticipated (WIPO Overview 3.0, section 4.6).

The Panel notes that Complainant’s supplemental filing addresses Respondent’s arguments submitted in the Response, some of which arguably could not have been anticipated by Complainant at the time of the submission of its Complaint. In this case, after consideration of Complainant’s supplemental submissions the Panel has decided to accept them for the sake of completeness, also noting that to some extent they do

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not address topics that Complainant could have addressed in its Complaint, and considering the matters raised in the Response (Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; AutoNation Holding Corp. v. Rabea Alawneh, WIPO Case No. D2002-0058; and Avaya Inc. v. Ali Parsa / Ali Parsa, AVAYeRASA / Ali Parsa Koosha, WIPO Case No. D2018-1472).

6. Factual Background

Complainant was founded in 1871 and is a French company, active in power management, automation and related solutions and enjoying reputation in its field of business. Complainant maintains its corporate website at “ which redirects to “ Complainant’s shares are listed on the NYSE Euronext and the French CAC 40 stock market indexes. In 2022, Complainant revenues amounted to EUR 34.2 billion.

Complainant owns several trademark registrations for SCHNEIDER ELECTRIC, including:

- the International trademark registration No. 715395, SCHNEIDER ELECTRIC (f igurative), registered on
March 15, 1999, for goods and services in international classes 6, 9, 11, 36, 37, 39 and 42;
- the International trademark registration No. 715396, SCHNEIDER S ELECTRIC (f igurative), registered on
March 15, 1999, for goods and services in international classes 6, 9, 11, 36, 37, 39 and 42; and
- the European Union trademark registration No. 001103803, SCHNEIDER ELECTRIC (f igurative), f iled on
March 12, 1999 and registered on September 9, 2005, for goods and services in international classes 6, 9,

11, 36, 37, 39 and 42.

Complainant also owns domain name registrations for SCHNEIDER ELECTRIC such as
<schneiderelectric.com> registered on April 4, 1996.

The Domain Name was registered on December 20, 2023, and it resolves to a parking page, and MX servers are conf igured.

7. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the

Domain Name.

B. Respondent

Respondent contends that Complainant has not satisf ied the elements required under the Policy for a transfer of the Domain Name. Respondent states that he did not register the Domain Name in bad faith. He registered it “because it was available” and in relation to his business, namely solar installations and home automation. Respondent contends that “Schneider” is his surname and that “elektrik” ref lects his f ield of activity. Respondent claims that “Schneider” is a common name in Germany. Respondent claims that the Domain Name was registered in October 2023 and is inactive because Respondent did not further develop it in view of the present proceedings. Respondent submitted before the Panel his businesses registration with the local Chamber of Crafts in Germany, under his name and surname and for a business in the f ield of electricity.

8. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the
Domain Name:

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(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant

has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the f irst 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.

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 f inds the mark is recognizable within the Domain Name. Accordingly, the Domain Name is confusingly similar to the mark for the purposes of the Policy, with the sole difference of a letter “c” instead of the letter “k” and the addition of a hyphen. WIPO Overview 3.0, section 1.9.

The generic Top-Level Domain (“gTLD”) “.info” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; and Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122). WIPO Overview 3.0, section 1.11.1.

The Panel f inds the f irst 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 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 of ten 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 satisf ied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.

Respondent submitted a rebuttal and claimed that the purpose of the registration was legitimate, providing evidence demonstrating a) his surname being SCHNEIDER, b) his profession being in the field of electricity, and c) registration of himself in the Commerce of Craf ts, dated August 2023, as electric technician.

Respondent claimed that the Domain Name was registered as a “platform for a young company to assist customers with solar installations and home automation” stating that the company existed since October 2023 and not providing evidence of such company. He claimed that the Domain Name leads to an inactive website because he did not further develop it due to the present procedure, which however only commenced in January 2024. The Domain Name has only been used for email addresses.

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No other evidence on any preparation to activate a website under the Domain Name has been produced.

Respondent therefore did not demonstrate any prior to the notice of the dispute use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.

Furthermore, Respondent has not claimed or demonstrated that he is known as SCHNEIDER ELECTRIC.

The Panel f inds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.

The Panel f inds 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.

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.

Because the SCHNEIDER ELECTRIC mark had been widely used and registered by Complainant at the time of the Domain Name registration and enjoyed reputation (Schneider Electric S.A. v. Whois Privacy Protection Foundation / Sales department, WIPO Case No. D2020-1403), while Respondent acknowledged that he is active in the same field of business, the Panel f inds it more likely than not that Respondent had knowledge of Complainant and its trademark when registering the Domain Name (Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

Respondent in the present case justified the choice of both terms “schneider” and “elektrik”, as stemming f rom his surname and professional vocation respectively, when registering the Domain Name. Respondent claims that the Domain Name was registered for legitimate purposes, namely as a platform for a young company to assist customers with solar installations and home automation.

The reputation and long standing use of Complainant’s mark internationally and the specialization of
Respondent in the field of electricity, does indeed indicate that Respondent may have had knowledge of
Complainant, however the Panel finds that the evidence in the case f ile as presented by the Parties, does
not indicate that the Respondent’s aim in registering the Domain Name was to prof it f rom or exploit the

Complainant’s trademark, rather than registering his own surname for his electricity related business.

The Panel f inds on balance that the third element of the Policy has not been established. designed to address. Naturally this decision is wholly without prejudice of any recourse to trademark law and the jurisdictions where the Complainant may choose to pursue legal actions.

9. Decision

For the foregoing reasons, the Complaint is denied.

/Marina Perraki/
Marina Perraki
Sole Panelist
Date: February 28, 2024