Schneider Electric SE v Xueju Wang

WIPO Case No. D2022-3822

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Schneider Electric SE v. Xueju Wang

Case No. D2022-3822

1. The Parties

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

The Respondent is Xueju Wang, China.

2. The Domain Name and Registrar

The disputed domain name <theschneiderelectric.com> (the “Disputed Domain Name”) is registered with

Gname.com Pte. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2022. amended Complaint on the same day.
On October 13, 2022, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Disputed Domain Name. On October 14, 2022, 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 and contact information in the Complaint, and also stated that
the language of the registration agreement is English. The Center sent an email communication to the

Complainant on October 17, 2022, providing the registrant and contact information disclosed by the

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 the Respondent of the Complaint, and the proceedings commenced on October 18, 2022. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2022.

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The Center appointed Lynda M. Braun as the sole panelist in this matter on November 10, 2022. 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

Founded in 1871 in France, the Complainant manufactures and offers products for power management, automation, and related solutions. The Complainant is featured on the NYSE, Euronext, and the French CAC 40 stock market index.

The Complainant owns several registered international trademarks, including: SCHNEIDER ELECTRIC, collectively referred to as the “SCHNEIDER ELECTRIC Mark”).

International Trademark Registration No. 715395, registered on March 15, 1999;; and SCHNEIDER
The Complainant is also the owner of many domain names which incorporate the SCHNEIDER ELECTRIC
Mark, such as the Complainant’s official website <schneiderelectric.com>, registered and used since April 4,
1996.

The Disputed Domain Name was registered on September 30, 2022, and initially resolved to a website purporting to be an online store selling the Complainant’s SCHNEIDER ELECTRIC products at discounted prices. As of the writing of this Decision, however, the Disputed Domain Name resolves to a landing page that states, “This site can’t be reached. theschneiderelectric.com’s server IP address could not be found”.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- the Disputed Domain Name is confusingly similar to the Complainant’s SCHNEIDER ELECTRIC Mark.

- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

- the Disputed Domain Name was registered and is being used in bad faith.

- the Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant

in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights; and

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

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

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold inquiry: a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark. The Panel concludes that in the present case, the Disputed Domain Name is confusingly similar to the SCHNEIDER ELECTRIC Mark as explained below.

It is uncontroverted that the Complainant has established rights in the SCHNEIDER ELECTRIC Mark based on its numerous years of use as well as its registered trademarks for the SCHNEIDER ELECTRIC Mark in jurisdictions worldwide. The registration of a mark satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. As stated in section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”. Thus, the Panel finds that the Complainant satisfied the threshold requirement of having rights in the SCHNEIDER ELECTRIC Mark.

The Disputed Domain Name consists of the SCHNEIDER ELECTRIC Mark in its entirety preceded by the term “the”, and then followed by the generic Top-Level Domain (“gTLD”) “.com”. Where the trademark is recognizable in the Disputed Domain Name, the addition of a term, such as “the” does not prevent a finding

of confusing similarity. See WIPO Overview 3.0, section 1.8 (“where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”).

Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11.1. Thus, the Panel concludes that the

Disputed Domain Name is confusingly similar to the Complainant’s SCHNEIDER ELECTRIC Mark.

Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the

Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

In this case, given the facts as set out above, the Panel finds that the Complainant has made out a prima
facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima
facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the
Respondent to use its SCNEIDER ELECTRIC Mark. Nor does the Complainant have any type of business
relationship with the Respondent. There is also no evidence that the Respondent is commonly known by the
Disputed Domain Name or by any similar names, nor any evidence that the Respondent was using or
making demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering
of goods or services. See Policy, paragraph 4(c).

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As the Disputed Domain Name initially resolved to a website purporting to be an online store under the brand SCHNEIDER ELECTRIC, selling the Complainant’s SCHNEIDER ELECTRIC products at discounted prices, such conduct demonstrates that the Disputed Domain Name is used to host the website to impersonate the Complainant and to mislead consumers into thinking that the goods purportedly offered for sale on the

website originate from the Complainant. Such use demonstrates neither a bona fide offering of goods nor

does it confer rights or legitimate interests on the Respondent.

The nature of the Disputed Domain Name (consisting of the Complainant’s trademark preceded by the term

“the”) also carries a high risk of implied affiliation.

Thus, the Panel concludes that nothing on the record before it would support a finding that the Respondent
is making a legitimate noncommercial or fair use of the Disputed Domain Name. Rather, the Panel finds that
the Respondent is using the Disputed Domain Name for commercial gain with the intent to mislead by
defrauding the Complainant’s customers. Such use cannot conceivably constitute a bona fide offering of a

product/service within the meaning of paragraph 4(c)(i) of the Policy.

Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the

Complainant.

C. Registered and Used in Bad Faith

The Panel finds that, based on the record, the Complainant has demonstrated the existence of the
Respondent’s bad faith pursuant to paragraph 4(b) of the Policy as set forth below.

The Panel finds that the Respondent had actual knowledge of the Complainant’s SCHNEIDER ELECTRIC Mark and targeted the Complainant and its said trademark when it registered the Disputed Domain Name, demonstrating the Respondent’s bad faith. Based on the widespread use of the SCHNEIDER ELECTRIC Mark worldwide, it strains credulity to believe that the Respondent had not known of the Complainant or its SCHNEIDER ELECTRIC Mark when registering the Disputed Domain Name. The Respondent’s awareness

of the Complainant and its SCHNEIDER ELECTRIC Mark additionally suggests that the Respondent’s Respondent registered and used the Disputed Domain Name in bad faith. See Schneider Electric S.A. v. Whois Privacy Protection Foundation / Sales department, WIPO Case No. D2020-1403 (“The Complainant and its trademark are well known worldwide. The Complainant has been established almost 150 years ago while the disputed domain name was only registered a couple of months ago. The Respondent must have been fully aware of the Complainant and its trademark when it registered the disputed domain name.”).

decision to register the Disputed Domain Name was intended to cause confusion with the Complainant’s

Moreover, the Disputed Domain Name initially resolved to a website purporting to be an online store selling the Complainant’s SCHNEIDER ELECTRIC products at discounted prices. Thus, the Panel concludes that the Respondent registered and used the Disputed Domain Name in bad faith to create confusion with the

Complainant’s trademarks for commercial gain by using the confusingly similar Disputed Domain Name to resolve to a website purportedly offering unauthorized versions of the Complainant’s products in direct competition with the Complainant’s official products. Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy paragraph 4(b)(iv).

Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the
Complainant.

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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, <theschneiderelectric.com>, be transferred to the Complainant.

/Lynda M. Braun/
Lynda M. Braun
Sole Panelist
Date: November 21, 2022