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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Schneider Electric S.A. v. LLC “ALL-ENERGY”

Case No. D2015-0388

1. The Parties

The Complainant is Schneider Electric S.A. of Rueil Malmaison Cedex, France, represented by Nameshield, France.

The Respondent is LLC “ALL-ENERGY”of Karachaevo-Cherkesskaya, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <schneider-electric.moscow> is registered with Regional Network Information Center, JSC dba RU-CENTER (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2015. On March 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and further indicating that the language of registrar agreement was made in Russian. Accordingly, the Center sent an email communication on March 9, 2015, concerning the Language of Proceedings in English and in Russian to the Parties. On March 10, 2015, the Complainant sent a request for English to be the language of proceedings in this case, indicating the reasons for it. The Respondent did not respond to the language document.

The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint in both Russian and English, and the proceedings commenced on March 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default in both Russian and English on April 13, 2015.

The Center appointed Ladislav Jakl as the sole panelist in this matter on May 15, 2015. 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

The Complainant Schneider Electric S.A., founded in 1871, is a French industrial group with an international dimension, which manufactures and offers products of power management, automation and solutions for these businesses. The Complainant is included in the NYSE Euronext and the CAC 40 stock market index. In 2013, the Complainant had achieved a turnover of € 24 billion (Annex 3 to the Complaint).

The Complainant is the right holder of some trademarks, which include the designation “Schneider Electric®”, in particular International trademark SCHNEIDER ELECTRIC, No. 715395, which is protected since March 15,1999 in many countries, including the Russian federation (Annex 4 to the Complaint).

The Complainant is also the owner of many domain names, including the same wording Schneider Electric, including <electric-schneider.com>, created date June 4, 2004 (Annex 5 to the Complaint).

The disputed domain name <schneider-electric.moscow> was registered on November 12, 2014.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name <schneider-electric.moscow> is confusingly similar to the SCHNEIDER ELECTRIC trademark in its entirety. The Complainant contends that the addition of the word “Moscow” is not sufficient to escape the finding that the domain name is identical to its trademark and does not change the overall impression of the designation as being connected to a trademark of the Complainant. It does not avoid the likelihood of confusion between the disputed domain name and the Complainant, its trademarks and its domain names associated. On those facts, the Complainant contends the disputed domain name is identical to its prior trademark for which it has provided registration certificates as prima facie evidence of its validity.

As to rights or legitimate interests in respect of the disputed domain name, the Complainant essentially contends that according to the Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. The disputed domain name <schneider-electric.moscow> is registered by “LLC “ALL-ENERGY”. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that it is not related in any way with the Complainant and that the Complainant does not carry out any activity for, nor has any business with the Respondent. Neither licence nor authorization has been granted to the Respondent to make any use, or apply for registration of the disputed domain name by the Complainant. Moreover the disputed domain name displays an inactive page since its registration (Annex 7 to the Complaint).

Furthermore the Complainant argues that the disputed domain name <schneider-electric.moscow> includes the trademark SCHNEIDER ELECTRIC in its entirety. Moreover, the disputed domain name has been inactive page since its registration. Based on these facts, the Complainant contends that the Respondent has registered intentionally the disputed domain name in order to prevent the Complainant to use its trademark in a domain name. Moreover, the registration of a well-known trade mark as domain name in its entirety clearly proves that Respondent was aware of the existence of Complainant’s trademark is considered as bad faith. Furthermore the Complainant argues that prior UDRP jurisprudence stated that passive holding, under the appropriate circumstances, falls within the concept of the domain name being used in bad faith, particularly where the domain name in question contains a well-known trade mark.

In accordance with Paragraph 4(i) of the Policy, for the reasons described in Section VI. above, the Complainant requests the Administrative Panel appointed in this administrative proceeding that the domain name <schneider-electric.moscow>be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(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 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.

Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant.

A. Language of the Proceedings

On the question of the language of the proceedings, the Registrar has confirmed that the language of the registration agreement is Russian.

The Complainant on March 10, 2015, concerning the language of the proceedings, requested that the language in this case shall be English as the the choice of language is presumably related to the fact that the English language is the language most widely used in international relations. Moreover, the disputed domain name is not used (inactive page). Further, the word “electric” in the disputed domain name is a an English word registered in ASCII characters. It has no other meaning in Russian or another language. In this case, the Complainant is located in France and has no knowledge of Russian. In order to proceed in Russian, the Complainant would have had to retain specialized translation services at a cost very likely to be higher than the overall cost of these proceedings. The use of Russian in this case would therefore impose a burden on the Complainant.

It is therefore reasonable to presume that the Respondent has the ability to communicate in English in order to conduct its business over the website in English. Moreover, the Respondent did not submit comments regarding the language of the proceedings by the due date and it is therefore inferred that the Respondent has no objection and that English be the language of the proceedings.

Paragraph 11(a) of the Rules provides, that in absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise. No agreement between the Complainant and the Respondent has been concluded. The Panel, taking into account the circumstances of this case, and a number of recent UDRP proceedings (Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191; Neste Oil Oyj v. Nesin Dmitry / Privacy Protection Service INC, WIPO Case No. D2014-0883; Mammut Sports Group AG v. Deminzheng, WIPO Case No. D2011-0475; BrandStrategy, Inc. v. BusinessService Ltd., WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd., WIPO Case No. D2007-1836), finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English as per paragraph 11(a) of the Rules.

B. Identical or Confusingly Similar

The Panel accepts the Complainant’s arguments that the the disputed domain name <schneider-electric.moscow> is confusingly similar to the SCHNEIDER ELECTRIC trademark. The addition of the word “Moscow” is not sufficient to escape the finding that the disputed domain name is confusingly similar to its trademark and does not change the overall impression of the designation as being connected to a trademark of the Complainant. It does not avoid the likelihood of confusion between the disputed domain name and the Complainant, its trademarks and its associated domain names. Such a combination of the Complainant’s trademark and geographic term does not avoid the confusing similarity (Accor v. Vu Duy Truong, N/A, WIPO Case No. D2011-0093; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Accor S.A. v. jacoop.org., WIPO Case No. D2007-1257). The Panel finds that the confusing similarity between the Complainant’s trademark and the disputed domain name is beyound doubt (Pfizer Inc. v. BargainName.com, WIPO Case No. D2005-0299).

For all the above cited reasons, the Panel concludes that disputed domain name is identical and confusingly similar to the Complainant’s trademark and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.

C. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant must prove, at least prima facie, that the Respondent has no rights or legitimate interests in the disputed domain name. Any of the following circumstances, as indicated in paragraph 4(c) of the Policy, in particular without limitation shall demonstrate:

(i) before the Respondent obtained the notice of the dispute, had not used of, or had not made demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as individual, business, or other organization) has not been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent was not making a legitimate noncommercial 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 Panel accepts the arguments of the Complainant that the Respondent cannot establish rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy or otherwise as the Respondent is not related in any way with the Complainant. Neither licence nor authorization has been granted to the Respondent to make any use, or apply for registration of the disputed domain name by the Complainant. Mere registration of the disputed domain name may not of itself confer rights or legitimate interests in the disputed domain name (Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666; Société Nationale des Chemins de Fer Français v. RareNames, Inc., RareNames WebReg and RN WebReg, WIPO Case No. D2008-1849; St Andrews Links Ltd v. Refresh Design, WIPO Case No. D2009-0601; Gibson, LLC v. Jeanette Valencia, WIPO Case No. D2010-0490). The disputed domain name displays an inactive page since its registration. Therefore the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests, that the Respondent has not rebutted (see WIPO Overview of WIPO Panel Views on Selected UDRP questions, Second Edition (“WIPO Overview 2.0), paragraph 2.1).

For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.

D. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both.

The Complainant has alleged that the Respondent has registered and used disputed domain name in bad faith, as the disputed domain name <schneider-electric.moscow> includes the trademark SCHNEIDER ELECTRIC in its entirety, which is a well-known mark. The disputed domain name was registered on November 12, 2014 , while the Complainant’s trademark was applied on March 15, 1999 (Annex 4 to the Complaint). Moreover, the disputed domain name resolves to an inactive page since its registration. The Complainant further contends that the Respondent has intentionally registered the disputed domain name in order to prevent the Complainant from reflecting its trademarks in a corresponding domain name. The Panel accepts the Complainant’s argument that the Respondent’s passive holding of disputed domain name suggests bad faith. (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

For the above cited reasons and having examined all the circumstances of this case, the Panel finds that the disputed domain name was registered and is being used in bad faith. Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

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 <schneider-electric.moscow> be transferred to the Complainant.

Ladislav Jakl
Sole Panelist
Date: May 29, 2015

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