World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Schneider Electric Industries SAS v. Melnichuk S.V., Melnichuk Sergey

Case No. D2012-0671

1. The Parties

The Complainant is Schneider Electric Industries SAS, Rueil Malmaison Cedex, France, represented by Nameshield, France.

The Respondent is Melnichuk S.V., Melnichuk Sergey, Kiev, Ukraine.

2. The Domain Names and Registrar

The disputed domain names <acti9.com> and <acti9.net> are 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 March 29, 2012. On March 29, 2012, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com

a request for registrar verification in connection with the disputed domain names. On April 16, 2012, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient regarding outstanding filing fees, the Complainant submitted payment on April 14, 2012.

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, and the proceedings commenced on April 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 9, 2012.

The Center appointed Gunnar Karnell as the sole panelist in this matter on May 25, 2012. 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 is a globally active French company. From 1836 until today it has developed into a solution provider in electricity and automation management in five markets: energy and infrastructure, building, residential, industry, data centers and networks. The Complainant’s group is present in 190 countries, physically operating in 106.

The disputed domain names were registered by the Respondent on March 24, 2011.

The Complainant has requested that the disputed domain names be transferred to the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant bases its Complaint on its trademark ACTI 9, International registration number 1005233, registered on December 15, 2008, hence predating the registrations of the disputed domain names. It is a distinctive trademark with no common meaning. The Complainant communicates its trademark all over the world on the Internet through various websites; the particular website for Ukraine, where it is well known for products marketed and sold, being “www.schneider-electric.ua”, registered on May 27, 2009.

The disputed domain names are identical to the well known and distinctive trademark ACTI 9 in which the Complainant has rights.

The Respondent has no rights or legitimate interests in respect of the disputed domain names, not being affiliated with or authorized by the Complainant in any manner nor being understood to have any business relation with the Complainant.

Both disputed domain names have been registered in bad faith and they are used in bad faith. At the time of their registration the Respondent must have known about the Complainant’s trademark ACTI 9.

The disputed domain name <acti9.net> displays commercial links. The Respondent makes unfair use of its domain name which is likely to cause confusion with the Complainant’s trademark ACTI 9 by misleading and diverting Internet traffic.

The disputed domain name <acti9.com> redirects, since its registration, to an inactive page, indicating no legitimate interest in the disputed domain name on the part of the Respondent. The passive holding of the disputed domain name <acti9.com> must be seen as continuous use in bad faith coinciding with circumstances here mentioned about its simultaneous registration in bad faith with the disputed domain name <acti9.net> and the bad faith registration and bad faith use of the disputed domain name <acti9.net>.

B. Respondent

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

6. Discussion and Findings

The factual foundation of the Complainant’s contentions, as presented by the Complainant, while supporting its non-contradicted Complaint by written evidence and reference to the UDRP decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 leads the Panel to the following conclusions:

A. Identical or Confusingly Similar

The Complainant has demonstrated to the Panel to have registered rights in the well-known trademark ACTI 9. The similarity of the trademark to which the Complainant has rights and the disputed domain names is in this Panel’s view obviously confusing.

B. Rights or Legitimate Interests

The Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in respect of the disputed domain names and there has been no rebuttal by the Respondent. Nothing in the case file provided by the Center to this Panel gives reason to believe that the Respondent has or has had any rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

The disputed domain names were both registered on March 24, 2011. By simultaneous registration of both domain names, using the Complainant’s well known trademark ACTI 9, the Respondent gave itself an option for use that led to active commercial use in bad faith of the disputed domain name <acti9.net> and to a slumbering threat about a possibly entirely similar bad faith use of the disputed domain name <acti9.com> to be activated any time at the Respondent’s will (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.2). The Panel finds it inconceivable that any plausible use by the Respondent of its as yet passive holding of the disputed domain name <acti9.com> would not be illegitimate.

Absent any indication in the case file of elements that might tell against giving credence to the Complainant’s assertions regarding facts leading up to its conclusions about registration and use in bad faith of both disputed domain names, and since all circumstances that have here more specifically been noted have been taken into account, the Panel finds that both disputed domain names have been registered and used in bad faith.

Consequently, the Panel finds that the conditions about bad faith registration and bad faith use for a transfer of the disputed domain names to the Complainant are satisfied.

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 domain names, <acti9.com> and <acti9.net> be transferred to the Complainant.

Gunnar Karnell
Sole Panelist
Dated: May 30, 2012

 

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