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Schneider Electric SA v. Ningbo Wecans Network Technology Co., Ltd., Ningbo Eurosin International Trade Co., Ltd. [2004] GENDND 1216 (15 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Schneider Electric SA v. Ningbo Wecans Network Technology Co., Ltd., Ningbo Eurosin International Trade Co., Ltd.

Case No. D2004-0554

1. The Parties

The Complainant is Schneider Electric SA, Rueil-Malmaison, of France, represented by Cabinet Auber, France.

The Respondents are Ningbo Wecans Network Technology Co., Ltd., of Ningbo Zhejiang Province, China, and Ningbo Eurosin International Trade Co., Ltd., of Ningbo City, Zhejiang, China.

2. The Domain Name and Registrar

The disputed domain name <electric-schneider.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2004. On July 27, 2004, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On July 28, 2004, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 2, 2004, followed by a Chinese Complaint on August 3, 2004. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on August 4, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2004. The Respondents did not submit any Response. Accordingly, the Center notified the Respondents’ default on August 25, 2004.

The Center appointed Soh Kar Liang as the sole panelist in this matter on August 31, 2004. 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.

As the language of the Registration Agreement between the Respondent and the Registrar is Chinese, the language of this administrative proceeding would have been in Chinese. However, having taken into consideration the fact that (1) the Complaint was first filed in English, (2) the Complainant’s communications with the Center were in English, (3) the Respondents are competent in English as the website under the disputed domain name used English but not Chinese, (4) the Respondents have not deemed it appropriate to respond, and (5) the Respondents have not indicated their language preference, this Panel hereby exercises its authority under Rule 11(a) of the Rules and decides that the language of this administrative proceeding shall be English. Accordingly, the Center also extended the due date for the Panel’s decision from September 14, 2004, to September 17, 2004, to give the Panel sufficient time to complete its decision.

4. Factual Background

The Complainant is a world leader in the manufacture and worldwide distribution of electrical products and services, including electrical distribution, automation and control. The Complainant has a strong presence in Asia, including in the Ningbo province of China, where the Respondent has its business address.

The Complainant and its subsidiaries own over a hundred trademark registrations throughout the world for SCHNEIDER ELECTRIC and its derivations. These include international registrations numbered 715395 and 715396 covering China. The trademark SCHNEIDER ELECTRIC is used, well known and has significant goodwill attached to it. The Complainant has identified over 40 related companies, most of which incorporate SCHNEIDER ELECTRIC in their names.

The Complainant is the registrant of the domain names <schneiderelectric.com>, <schneider-electric.com> and <electricschneider.com> registered in 1996, 1997, and 2004 (more specifically, July 9, 2004) respectively. <electricschneider.com> appears to have been registered in response to the registration of the disputed domain name.

It is not known for certain what business the Respondents are in. However, it can be gleaned from the webpages on the disputed domain name that the Respondents are interested in electrical products similar to that of the Complainant.

The disputed domain name was registered on June 8, 2004, post-dating many of the trademark registrations of the Complainant. The URL “http://www.electric-schneider.com” pointed to a homepage identifying the name “Eurosin International” and the URL “http://www.eurosin.com.cn” (the “Website”). Navigating the Website led to various pages which displayed a catalogue of electrical products in the nature of circuit breakers, switches, relays and contactors. Other than the incorporation of the disputed domain within the URLs of the various webpages of the Website, no apparent reference was made to ELECTRIC SCHNEIDER, SCHNEIDER ELECTRIC or SCHNEIDER in any manner on the Website.

5. Parties’ Contentions

The Respondent did not reply to the Complainant’s contentions. As such, this Panel draws the inference that none of the facts alleged by the Complainant and summarized above are contested.

6. Discussion and Findings

Pursuant to paragraph 15(a) of the Rules, this Panel shall decide the Complaint based on the documents and statements filed under the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy dictates that the Complainant must show that all three of the following are present:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondents have 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.

This Panel shall accordingly examine these three requirements in the light of the facts of this case.

A. Identical or Confusingly Similar

Based on the facts outlined above, the Complainant undoubtedly has rights in the trademark SCHNEIDER ELECTRIC. Although the disputed domain is not identical to SCHNEIDER ELECTRIC, it is confusingly similar. The disputed domain name incorporates the key distinctive word SCHNEIDER of the trademark. The inversion of the words and the addition of a hyphen are not enough to avoid confusion given that the other word ELECTRIC is more descriptive rather than distinctive of the products provided by the Complainant and the Respondent.

B. Rights or Legitimate Interests

The Complainant submitted the following grounds to show that the Respondent does not have any right or legitimate interests in the disputed domain name:

(a) The Respondents have no relationship with the Complainant

(b) The Respondents do not have any trademark registration for ELECTRIC-SCHNEIDER and were not known by that name

These grounds, unless controverted, strongly suggest the absence of any right or legitimate interest. As no Response was filed, the Respondents have failed to refute the suggestion and provide any basis for a finding of a right or legitimate interest (e.g., under any of the circumstances of Paragraph 4(c) of the Policy). In the circumstances, the Panel can only conclude that the Respondents have no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy provides that the following circumstance is evidence of the registration and use of a domain name in bad faith:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Complainant submitted that “[s]everal registered trademarks (LC1 D, LC1 F, etc) owned by a subsidiary of the Complainant are used on the litigious domain name but the Respondent has no right to use them”. Without any evidence to the contrary, it cannot be mere coincidence or innocence that the Respondents chose both a designation confusingly similar to the Complainant’s trademark in the disputed domain name and the trademarks associated with specific product ranges of the Complainant in relation to its own similar products on the Website. The Respondents are, if not in the same business field as the Complainant, certainly interested in the same field. The Complainant is a world leader in the field and has a presence in Ningbo, the Respondents’ province. The Respondents were clearly aware of the words SCHNEIDER and ELECTRIC and their combined use so as to register the disputed domain name without any legitimate reason to do so. Prima facie, at the time of registering the disputed domain name and thereafter, the Respondents knew that the Complainant was a leading suppliers of the products exhibited on the Respondents’ website and are intimately familiar with the Complainant’s products. This statement of the Complainant remains unrefuted in the absence of a Response.

In the context of this inference, the Complainant’s grounds supporting their allegation of bad faith registration and use corroborate and expose a premeditated attempt by the Respondents which falls within the circumstance outlined in paragraph 4(b)(iv) of the Policy. The grounds relied on by the Complainant are (quoting verbatim):

“- Many products offered to sale on www.electric-schneider.com give the impression that they are manufactured and sold by Schneider Electric when they are not. The offer to sale is damaging for the Complainant.

- Several products offered to sale on the disputed domain are identical to Complainant’s products but obviously are not genuine ones, for two following reasons:

- Some products are no more manufactured and sold by the Complainant or its subsidiaries and distributors.

- Some other products do not bear the labels and trademarks which are prescribed by the internal standards of the Complainant.

- The Annex 1 shows an example (not limitative) of the unlawful offer to sale on the disputed domain name.

- Moreover, some known products offered to sale on the disputed domain are identical to those of main competitors and in relation with known trademarks.

- SCHNEIDER ELECTRIC created a Chinese subsidiary in the same region as the respondents.”

None of these grounds would on their own suggest any bad faith on the part of the Respondents. However, taken together, and especially in the light of the unexplained adoption of the other trademarks of the Complainant, establishes prima facie an intentional attempt by using the disputed domain name to attract, for commercial gain, Internet users to the Website, thereby creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the products on the Website.

Although the prima facie presumption of bad faith may be rebutted, the Respondents have chosen not to respond and this Panel therefore makes a finding that there was bad faith registration and use of the disputed domain name by the Respondents.

7. Decision

For all 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 be transferred to the Complainant.

Soh Kar Liang
Sole Panelist

Dated: September 15, 2004