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Schneider Electric SA v. Laporte Holdings [2005] GENDND 1956 (10 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Schneider Electric SA v. Laporte Holdings

Case No. D2005-0925

1. The Parties

The Complainant is Schneider Electric SA , Rueil-Malmaison, France represented by Marie-Christine Deluc, Cabinet AUBER, Paris, France.

The Respondent is Laporte Holdings, Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name is <scheider-electric.com> and it is registered with NameKing.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 30, 2005. On September 1, 2005, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain name at issue. On September 1, 2005 NameKing 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 September 15, 2005. The Complainant submitted a Supplemental Filing on September 30, 2005, requesting inclusion of further domain names in the Complaint. 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 Respondent of the Complaint, and the proceedings commenced on September 20, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 10, 2005. The Respondent was informed that if his Response was not received by that date, he would be considered in default. The Center would still appoint an Panel to review the facts of the dispute and to decide the case. The Respondent did not submit aResponse. Accordingly, the Center notified the Respondent’s default on October 12, 2005.

The Center appointed Dr. Vinod K. Agarwal as the Sole Panelist in this matter on November 1, 2005. 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

From the Complaint and the various annexes to it, the following facts can be derived:

Complainant’s activities

The Complainant “Schneider Electric SA” is the manufacturer and distributor of various electrical products. Its business relates to electrical distribution and automation, control solutions for energy and infrastructure, industry, buildings and residential. The Complainant owns many domain names with the word “Schneider” and “electric” such as <schneiderelectric.com>, <schneider-electric.com>, <electricschneider.com>, etc. The words “Schneider” and “electric” also appear in the name of the Complainant and its numerous subsidiaries, such as, “Schneider Electrical Korea Ltd.”, “Schneider Electric SA Egypt”, “Schneider Electric Hong Kong Limited”, “Schneider Electric Japan Limited”, “Schneider Electric Taiwan Co Limited”, “Schneider Electric Thailand Co Limited”, etc. The Complainant has not mentioned detailed activities of the Complainant in the Complaint. It has only sent two advertisement booklets with the Complaint.

Respondent’s identity and activities

The Respondent did not reply to the Complainant’s contentions. Hence, the Respondent’s activities are not known.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to this dispute. These elements are as follows:

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

(ii) The 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.

In relation to element (i), the Complainant contends that it is known as Schneider amongst consumers worldwide. The trademark “Schneider Electric” is registered in many countries, such as, Argentina, Brazil, Arab Emirates, India, Israel, Japan, Malaysia, Mexico, New Zealand, Nigeria, Italy, Germany, Denmark, Finland, Spain, United Kingdom, etc. Thus, the domain name <scheider-electric.com> is very much identical or confusingly similar to the name of the Complainant, that is “Schneider Electic”.

In relation to element (ii), the Complainant contends that the Respondent (as an individual, business, or other organization) has not been commonly known by the domain name <scheider-electric>. Further, the Respondent is not making a legitimate or fair use of the said domain name for offering goods and services. The Respondent registered the domain name for the sole purpose of creating confusion and misleading the general public and the customers of the Complainant. The Complainant has relied on the decision in the case of Alcan Inc. v. Digicom Technologies Inc. (WIPO Case No. D2003-0388) wherein the Panel held that, there was no evidence to suggest that the respondent had ever used, or demonstrated preparations to use, the disputed domain name in connection with a bona fide offering of goods and services. Thus, it is contended that there were no legitimate rights or interests of the respondent in the domain name.

Regarding the element at (iii), the Complainant contends that the main object of registering the domain name <scheider-electric.com> by the Respondent is to earn profit and to mislead the general public and the customers of the Complainant. The complainant has stated that the use of a domain name that appropriates a well known trademark to promote competing or infringing products cannot be considered a “bona fide offering of goods and services”. The Complainant has relied on the decision of The Chip Merchant Inc. v. Blue Star Electronics, d/b/a Memory World, WIPO Case No. D2000-0474 and Yamaha Corporation v. Zhoulei, WIPO Case No. D2004-0126.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel as to the principles the Panel is to use in rendering its decision. It says that, “A panelist shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Hereinafter the three requirements as set out under paragraph 5A of this decision will be discussed.

A. Identical or Confusingly Similar

The present dispute pertains to the domain name <scheider-electric.com>. The name of the Complainant is Schneider electric. The Complainant has many subsidiaries in many countries which use the words “Schneider” and “Electric” such as, “Schneider Electrical Korea Ltd.”, “Schneider Electric SA Egypt”, “Schneider Electric Hong Kong Limited”, “Schneider Electric Japan Limited”, “Schneider Electric Taiwan Co Limited”, “Schneider Electric Thailand Co Limited”, etc. The names, “Scheider” as used in the domain name and “Schneider” the corporate and trading name of the Complainant are almost identical and confusingly similar in appearance and pronouncement. In the disputed domain name “Scheider” only the letter “n” has been deleted from “Schneider”. In Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869 the Panel compared the respondent’s domain name <estelauder.com> with the complainant’s trademark Estee Lauder and came to the conclusion that the absence of one “e” was the only difference and concluded that the respondent’s domain name is “confusingly similar to the Complainant’s mark”. Similar conclusions have been arrived at by the Administrative Panels in the cases of Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273 (“pharmacia” and “pharmaciae”) and Briefing.com Inc. v. Cost Net Domain Name Manager, WIPO Case No. D2001-0970. Thus, the Panel finds that the domain name is confusingly similar to the registered trademark of the Complainant.

B. Rights or Legitimate Interests

According to Paragraph 4(c) of the Policy, the respondent may demonstrate its rights to or legitimate interest in the domain name by proving any of the following circumstances:

(i) before any notice to the respondent of the dispute, the respondent’s 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial 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.

The Respondent has not filed a Response in this case. There is no evidence to suggest that the Respondent has become known by the disputed domain name anywhere in the world. Based on the default and the evidence in the Complaint, it is presumed that the above circumstances do not exist in this case and that the Respondent has no rights or legitimate interests in the disputed domain name. See also Pavillion Agency Inc. Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd. and Glenn Greenhouse, WIPO Case No. D2000-1221. “Schnieder” is the name and mark of the Complainant. The Complainant has not licensed or otherwise permitted the Respondent to use its name or trademark or to use the domain name incorporating said name and that nobody would use the word “Schneider” along with “electric” unless seeking to create an impression of an association with the Complainant. The Panel finds that the Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy names four circumstances, which, in particular but without limitation, shall be considered evidence of the registration or use of the domain name in bad faith. Paragraph 4(b) sub (ii) and (iv) refer to the circumstances in which:

(ii) The Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or

(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its website 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 the Respondent’s website or location or of a product or service on its website or location.

The contention of the Complainant is that the present case is covered by the second and fourth circumstance. The Complainant has furnished evidence of the fact that the disputed domain name directs towards a site exploited by a company OVERSEE.net which publishes a service of the “parking” of domain names named DomainSponsor. The service consists of a simple redirection of the domain name towards a UPL of “parking” which mostly contains advertising bonds.

This and other information submitted by the Complainant leads to the presumption that the domain name in dispute was registered and has been used by the Respondent in bad faith. The Panel agrees with the said contention of the Complainant and concludes that the registration of the domain name amounts to the registration and use of the domain name in bad faith.

It may be added that initially the Complaint was submitted in respect of three domain names, namely, <scheider-electric.com>, <swebi.scheider-electric.com> and <planete.scheider-electric.com>. On September 12, 2005, the Complainant was informed that according to the WHOIS, the domain names <swebi.scheider-electric.com> and <planete.scheider-electric.com> are not registered. Therefore, the Complaint was limited to the domain name <scheider-electric.com>.

After the commencement of the Proceedings, the Complainant submitted amendment of the Complainant for further inclusion of the domain name <schniederelectric.com> in the Complaint. The Rules for Uniform Domain Name Dispute Resolution Policy do not contain any provision for a Complaint to be amended, after the commencement of the Proceedings, to include additional domain names. Taking into account that such amendment to the Complaint would have called for a renotification of the case, including a 20 days Response period, the Panel rejects this request.

7. Decision

In light of the foregoing findings, namely, that the domain name is confusingly similar to a mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name was registered and is being used in bad faith, in accordance with Paragraphs 4(i) of the Policy and Rule 15 of the Rules, the Panel orders that the domain name <scheider-electric.com> be transferred to the Complainant.

V. K. Agarwal
Sole Panelist

Dated: November 10, 2005