SCHNEIDER ELECTRIC INDUSTRIES SAS v. Wesped / Manuel Ramos et al.
Claim Number: FA2107001953717
Complainant: SCHNEIDER ELECTRIC INDUSTRIES SAS of RUEIL MALMAISON CEDEX, France.
Complainant Representative: Nameshield of Angers, France.
Respondent: Wesped of Cartagena, Spain.
Wesped / Manuel Ramos of Cartagena, Murcia, International, ES.
REGISTRIES and REGISTRARS
Registries: DotOnline Inc.
Registrars: Hosting Concepts B.V. d/b/a Registrar.eu
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Examiner in this proceeding.
Luz Helena Villamil Jimenez, as Examiner.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS
Pursuant to URS Rule 9(a), the Panel determines that the language requirement has been satisfied through the English language Complaint and Commencement Notification. Furthermore, the Examiner points out that in accordance with URS Rule 9(c) “The Examiner appointed shall be fluent in English and in the language of the Response and will determine in which language to issue its determination, in its sole discretion.” The undersigned is both fluent in Spanish and English and, considering that the (incomplete) Response submitted by the Respondent was drafted both in Spanish and English, the Examiner determines that in the present case the remainder of the proceedings shall be conducted in English.
Complainant submitted: July 2, 2021
Commencement: July 2, 2021
Response Date: July 2, 2021
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
The case at hand refers to the domain name < schneiderelectric.online >.
In accordance with the provisions of URS, Complainant, Schneider Electric Industries SAS contends that:
2. Registrant has no legitimate right or interest to the disputed domain name, and
3. The domain name was registered and is being used in bad faith since by using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
Complainant states that The domain name is confusingly similar to the international trademark "SCHNEIDER ELECTRIC" n° 715395, registered on 15 March 1999. The trademark is also registered in Trademark clearinghouse on November 26th, 2013.
Complainant asserts as well that the addition of the new gTLD ".online" does not change the overall impression of the designation as being connected to the Complainant’s trademark “SCHNEIDER ELECTRIC”. It does not prevent the likelihood of confusion between the disputed domain name and the Complainant´s trademark.
Complainant also maintains that the Respondent hast no rights or interests in respect of the domain name and is not related to the Complainant’s business. Complainant has not authorized Respondent’s use of its mark and has no affiliation with Respondent. The website in relation with the disputed domain name
< schneiderelectric.online > points to a parking page with commercial links, and it is established that using a domain name to create a likelihood of confusion between the disputed domain name and the Complainant is not a bona fide offering of good and services or a legitimate noncommercial or fair use.
Lastly, Complainant argues that the domain name was registered and is being used in bad faith since the disputed domain name is confusingly similar to the famous and distinctive trademark “BNP Paribas” (sic), which is registered to the TMCH since November 26th, 2013. Complainant adds that given the notoriety of the Complainant and its distinctive trademark, the Respondent was aware of the trademark when registering the domain name.
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
Determined: Finding for Complainant
The process contains documentation demonstrating that the Complainant is the owner of International Registration No. 715395 dated 15 March 1999 in force until 15 March 2029 for the trademark SCHNEIDER ELECTRIC in international classes 6, 9, 11, 36, 37, 39 AND 42. The process contains as well evidence that demonstrates that Complainant’s trademark SCHNEIDER ELECTRIC was indeed registered with the trademark Clearinghouse, and is in use in connection with energy and automation digital solutions for efficiency and sustainability.
Consequently, the Examiner considers that the requirement of demonstrating trademark rights and the usage thereof has been satisfied.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Complainant
The disputed domain name <schneiderelectric.online> contains the entire registered trademark SCHNEIDER ELECTRIC.
Now, despite the obvious oversight seen in the complaint, where on two occasions the BNP Paribas trademark is erroneously cited, the fact that leads the Examiner to consider that the Registrant does not have a legitimate right or interest to the domain name but instead an opportunistic interest of taking advantage of a widely known trademark is that whilst the Respondent did file a response to the Complaint stating in English that “Domain schneiderelectric.online was accidentally registrered by a semi automatic process of building a porfolio of domain names. There is no interest in offending to other trademarks so I'll be at your dispose to solve this dispute”, Complainant submitted evidence demonstrating that the website identified with the domain <schneiderelectric.online > does contain links in French (the language of the country of origin of the owner of the trademark SCHNEIDER ELECTRIC) which make reference to the company Schneider Electric: “ORGANIGRAMME ENTREPRISE, SCHNEIDER ELECTRIC, ENTREPRISE, SCHNEIDERS, RECRUTEMENT, COURS”. The Examiner considers that any commercial use by anyone other than the registered owner of the trademark SCHNEIDER ELECTRIC necessarily infringes Complainant’s trademark, and a trademark infringement is far from evidencing legitimate right or interest to a given domain name.
[URS 1.2.6.3] The domain name was registered and is being used in bad faith:
a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
Determined: Finding for Complainant
The evidence submitted by Complainant showing that the website identified with the domain <schneiderelectric.online > contains links making reference to the enterprise Schneider Electric and its services totally contradicts Respondent’s assertion that “Domain schneiderelectric.online was accidentally registrered by a semi automatic process of building a porfolio of domain names” and that “There is no interest in offending to other trademarks”. In the Examiner’s opinion this activity demonstrates that the domain <schneiderelectric.online> was registered to disrupt the business of the Complainant, and to attract for commercial gain Internet users to Registrant’s web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location. Therefore the disputed domain name is being used in bad faith.
After reviewing the parties’ submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be SUSPENDED for the duration of the registration.
<schneiderelectric.online>
Luz Helena Villamil Jimenez, Examiner
Dated: July 02, 2021
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