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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Schneider Electronics GmbH v. Schneider UK Ltd.

Case No. D2006-1039

 

1. The Parties

The Complainant is Schneider Electronics GmbH of Mindelheim, Germany, represented by Ms. Ruxandra Manea, Rцld & Partner, Germany.

The Respondent is Schneider UK Ltd., of Manchester, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <schneideruk.com> is registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2006. On August 16, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On August 18, 2006, Network Solutions, LLC 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. The Center verified that the 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 August 24, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2006. The Response was filed with the Center on August 24, 2006.

The Center appointed Mr. Christopher Pibus as the sole panelist in this matter on September 27, 2006. 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 Electronics GmbH is the manufacturer of Schneider branded electronics equipment. Through a complex series of corporate reorganizations, the Complainant has become the owner of United Kingdom SCHNEIDER & Design trademark registrations No. 1437258 filed on August 22, 1990, and No. 1199415 filed on July 11, 1983, both registered in association with goods in International class 9. The trademarks consist of the singular word element SCHNEIDER with a design feature.

The Complainant has also produced evidence of registrations for the SCHNEIDER trademarks, in a number of other countries.

The Respondent, Schneider United Kingdom Ltd., is a former distributor of the Complaint’s products. The Respondent has changed its corporate name to Linmark Electronics Limited and has apparently discontinued the use of the corporate name Schneider UK Limited.

The Complainant’s predecessor in title entered into a distribution agreement for electronic equipment with the Respondent effective June 15, 1998, (the “1998 Agreement”), giving the Respondent exclusive distribution rights for its products in the United Kingdom.

This terms of the 1998 Agreement do not specifically address the issue of domain names, but do grant certain rights to the use of certain identified “brands”.

The Respondent registered the <schneideruk.com> domain on October 26, 1999.

It appears that additional distributorship agreements were entered into by the parties from time to time over subsequent years. In late 2002, the Complainant’s predecessor in title and the Respondent entered into a “settlement” agreement that allowed the Respondent to continue to distribute certain products featuring the SCHNEIDER trademarks in the United Kingdom and Ireland until September 30, 2003 (the “2002 Agreement”).

In the 2002 Agreement the Complainant expressly granted the Respondent permission to use the <schneideruk.com> domain name and the word “Schneider” as part of its company name.

The Respondent in return acknowledged that any and all “Intellectual Property Rights” (including rights to the domain name <schneideruk.com>) were the property of the Complainant. Respondent also assigned all of its rights to Complainant in the Agreement. Upon termination, the Respondent agreed to “permanently discontinue any advertising which in any way indicates that Schneider UK Ltd. has any connection with Schneider in the operation of its business; cease using any Intellectual Property Rights in its company or trading name, as part of its internet address or domain name, on any signage, websites or business literature, or in any advertising and within reasonable time to file papers at Companies House to remove the Trade Mark from its’ company name.”

The final Distribution Agreement was concluded on July 1, 2003. Notice of Termination was delivered by Complainant on November 3, 2003, and the distributorship actually came to an end on November 3, 2004.

On June 20, 2005, the Complainant sent a cease and desist letter to the Respondent objecting to the use of the SCHNEIDER trademark and requesting the transfer of the domain name. After receipt of the letter, the Respondent ceased active use of the domain name, although it has continued to use the domain name for e-mail purposes.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Respondent is the registered owner of the <www.schneideruk.com> domain which is confusingly similar with the Complainant’s United Kingdom trademark registrations No. 1437258 and No. 1199415.

The Complainant further contends that the Respondent has no right or legitimate interest in respect of the domain name, and was not expressly authorized by the Complainant to register the domain. The Respondent is alleged to have registered the domain name knowing that it had no right to do so.

The Complainant further contends that the Respondent is not currently using the domain name as it does not resolve to a website or other online presence. This conduct can be characterized as holding the domain name in a passive way, blocking the domain from bona fide use by the Complainant.

The Complainant further contends that the domain name was registered in bad faith as it was registered on October 26, 1999, after the termination of the first distribution agreement and after the Complainant’s predecessor had declined to renew the contractual relationship with the Respondent. The Respondent was well aware of the Complainant’s trademarks and of the fact that the Respondent had lost its authorization to use the SCHNEIDER trademark.

The Complainant further contends that the domain name was registered by the Respondent with the intention of deliberately attracting Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s marks as to the source of the goods marketed on the disputed website.

B. Respondent

The Respondent contends that SCHNEIDER is a very common name in the UK and that the domain name was not registered to prevent the legitimate use by any other party, but was a close approximation to the trading title of the company at the time of registration, namely Schneider UK Limited.

The Respondent further contends that as part of an agreement reached with the Complainant, the Respondent has ceased using the Schneider UK corporate name.

The Respondent contends that it is in the process of changing the names of its business systems, including email servers. However, many of the Respondent’s trading partners still refer to Linmark Electronics Limited by its former title of Schneider UK Limited, and despite repeated requests still send email to the email address associated with the disputed domain. Disruption of access to that email, especially by a third party involved in a similar area of business, would be detrimental to the business interests of the Respondent.

The Respondent contends it is not holding the domain in a passive way nor is it being used to offer goods or services.

Finally, the Respondent contends that the domain was not registered in bad faith, as there was a good trading relationship between the parties even though a formal agreement was not in place. In support of this, the Respondent submits a letter dated November 25, 1999, between the Complaint’s predecessor in title and the Respondent indicating that “the parties now agree to amend the parameters of the original distribution agreement.”

The respondent contends that it never sold goods from any of its websites. The sites were used to provide information to end users of the Respondent’s goods and to enable the Respondent to use an email address similar in name to the original name of the company.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instruct this Panel to “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.”

In accordance with paragraph 4(a) of the Policy in order to succeed the Complainant must establish each of the following three elements:

(i) the domain name registrant’s domain name is identical, or confusingly similar, to a trademark in which the complainant has rights;

(ii) the registrant has no rights or legitimate interests in the domain name, and

(iii) the domain was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has proved that it is the registered owner of the SCHNEIDER & Design mark in the United Kingdom and in various other parts of the world.

Since a domain name can not include a design element, the word component of a design mark is the only element that can be searched by an Internet user. Some panels have therefore concluded that the word element of a trademark is the only element that is assessed when determining confusing similarity between a trademark and domain name (see SWATCH AG v. Stefano Manfroi, WIPO Case No. D2003-0802).

The Panel notes that there have also been a number of prior UDRP cases involving trademarks containing geographic terms and design elements in which the design element has been found to be an essential part of the distinctiveness of the mark in question (see for example Spreewaldverein e.V. v. RCS Richter Computer Systemhaus GmbH, WIPO Case No. D2003-0614; Brisbane City Council v. Warren Bolton Consulting Pty Ltd, WIPO Case No. D2001-0047).

In the present circumstances, given the primacy of the word “Schneider” in the SCHNEIDER & Design Mark, the Panel is prepared to find that there is a prima facie case for confusing similarity between the Complaint’s registered mark and the domain name. The only additional issue to be considered is the use of the suffix UK in combination with SCHNEIDER. In the Panel’s view, the addition to the Complainant’s trademark of a geographic term or abbreviation that is descriptive of a geographic territory is not sufficient to avoid a finding of confusing similarity (see Wal-mart Stores, Inc. v. WalmarketCanada, WIPO Case No. D2000-0150).

For these reasons, the Panel concludes that the domain name is confusingly similar to the Complainant’s SCHNEIDER trademark.

B. Rights or Legitimate Interests

In light of the conclusions with respect to bad faith, the Panel finds it unnecessary to make any findings in connection with rights or legitimate interests.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the Panel must establish whether the domain name has been registered and is being used in bad faith.

In situations such as the present case, where the parties have entered into and maintained a long-standing commercial relationship, Panels tend to impose on the Complainant a heavier burden of proof for bad faith, generally requiring more comprehensive evidence than that which may be necessary in the typical dispute between unrelated adversaries. At a minimum, the Complainant must provide full disclosure of the history of the relationship, and in particular, the relevant agreements and contractual terms which have governed their joint enterprise. Allegations of bad faith aimed at a former distributor or licensee can only be properly understood in the full context of their prior history. It is also important to bear in mind that the Policy was designed to prevent cases of cybersquatting and it cannot be used as a means to litigate broader disputes involving domain names (see The Thread.com, LLC v. Jeffrey S. Poploff, WIPO Case No. D2000-1470, and Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).

Taking the evidence as it stands and bearing in mind the limited evidentiary record put forward by the Complainant, the Panel is unable to conclude that the domain name has been registered and used in bad faith. There are 6 factors which lead to this conclusion:

1. A careful review of the various agreements, put in evidence by both parties, leads to the conclusion that the record is obviously incomplete in terms of the distribution agreements that governed their relationship. Complainant takes the position that there was no agreement in place as of October, 1999 when the domain name was registered, and argues that Respondent knew that their relationship would not continue. Yet the Complainant’s own document shows there was a distribution agreement signed in June, 1998, which appears to have been extended in April, 1999. Respondent puts forward another version of agreement dated November 25, 1999, which appears to recognize the continuing existence of a formal distributorship relationship. The contradictory nature of the documentary evidence casts real doubt on Complainant’s claim that no distribution agreement was in place when the domain name was registered.

2. It appears that a further Distribution Agreement was executed in July, 2003, but no copy of this agreement appears in the evidence.

3. In addition to the distribution agreements, a “settlement” agreement was apparently concluded sometime in 2002. An undated copy of this agreement has been produced by the Complainant, but questions arise in connection with the form and interpretation of the document. The signature page is undated and out of order, and there is nothing to indicate whether the page actually formed part of the agreement.

4. The “settlement” agreement contains provisions which purport to assign the domain name in question to the Complainant. If enforceable, these provisions would effectively dispose of this proceeding. The Panel has not been provided with any evidence to explain why this purported assignment was never acted upon by the Complainant. The Panel is not prepared to embark on an exercise of construing this contractual term.

5. There is an unexplained delay of nearly 6 years before Complainant formally objected to the registration of the domain name by Respondent.

6. The Respondent has offered an explanation of its limited continued use of the domain name as a vehicle for receiving e-mail contacts from long standing customers. It does not appear that Respondent is actually using the domain name in an abusive way, calculated to harm, or actually causing harm to the Complainant. Overall, the Respondent’s apparent conduct in changing its corporate name, and in offering to take various steps to acknowledge Complainant’s rights and minimize its own use of the disputed domain name, cannot—in this Panel’s view on the evidence available to the Panel at this stage—fairly be characterized as bad faith for the purpose of this proceeding.

Finally, the Panel notes that a finding of bad faith would necessarily involve the interpretation of contractual terms from a whole series of agreements (assuming that a full set of the documents could be made available in the evidence). This sort of analytical construction of contractual terms is beyond the mandate and jurisdiction of the Panel, as it would require a far more complete evidentiary record than that which has been put forward in this proceeding. Prior panelists have held that disputes which turn on contractual interpretations will fall outside the scope of the Policy (see Private Media Group v. Anton Enterprises Inc. d/b/a Private USA, WIPO Case No. D2002-0692 and see S.L.I. Sociйtй des Lubrifiants IPONE v. CLIX International, L.L.C., Carbon Development, Chad Boulton, WIPO Case No. D2004-0334).

In essence, this matter can be most properly characterized as a dispute between parties formerly joined in a long-standing commercial relationship, which was governed by a series of commercial agreements. The termination of that relationship, and the consequences of that termination, raise contested issues of fact and the construction of contractual provisions, which go beyond the issue of cybersquatting, which is the problem the Policy was designed to address.

For these reasons, the Panel finds that the Complainant has failed to establish bad faith within the meaning of the Policy. The Panel is aware that this dispute may now be brought before the appropriate court, and believes that it is prudent to leave the decision on its merits to such a decision-maker, with the benefit of a full evidentiary record and the ability to construe and interpret the contractual terms which will ultimately govern this dispute.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Complaint is denied.

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Christopher J. Pibus
Sole Panelist

Dated: October 21, 2006