A. Identical or confusingly similar with Complainant’s trademark
The Complainant owns numerous JCDECAUX trademark registrations in various jurisdictions.
As confirmed by WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), see paragraph 1.2.1: “Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”.
The disputed domain name is an obvious misspelling of the Complainant’s JCDECAUX trademark where the letter “e” is substituted by the letter “a”.
As stated in WIPO Overview 3.0 “a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element” (see par. 1.9).
The Complainant’s trademark is clearly recognizable in the disputed domain name.
The suffix ".com" shall be disregarded under the confusing similarity test as it does not add anything to the distinctiveness of the disputed domain name.
Therefore, the Panel finds that the first requirement of the Policy has been satisfied.
B. Rights or Legitimate Interests
The general rule is the following:
(i) a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests; and
(ii) once such prima facie case is made, the burden shifts to the respondent who has to demonstrate his rights or legitimate interests in respect of the domain name under paragraph 4 (c) of the Policy.
If the respondent fails to do so, the second element of the Policy is satisfied, see Julian Barnes v. Old Barn Studios, WIPO Case No. D2001-0121; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 and CAC Case No. 101284.
The Respondent did not respond.
While failure to respond does not per se demonstrate that the Respondent does not have rights or legitimate interests, it allows all reasonable inferences of fact in the allegations of the complaint to be deemed true (see paragraph 14(b) of the Rules and Vertical Solutions Management, Inc. v. webnet-marketing, inc., FA 95095, National Arbitration Forum).
The disputed domain name is not actively used.
The Respondent is not affiliated with nor authorized by the Complainant in any way and there is no any other business connection between them.
The Respondent’s name has no connection with the disputed domain name and there is no evidence whatsoever that could demonstrate any legitimate rights or interests of the Respondent in respect of the disputed domain name.
The Panel finds that the Complainant has shown a prima facie case that has not been rebutted by the Respondent and, therefore, satisfied the second requirement of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists non-exhaustive circumstances indicating registration and use in bad faith.
These circumstances are non-exhaustive and other factors can also be considered in deciding whether the disputed domain name is registered and used in bad faith.
There is a general agreement that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding (see par. 3.3 of the WIPO Overview 3.0).
One has to look at the circumstances of a case taking into account, in particular, the degree of distinctiveness or reputation of the Complainant’s mark, the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use and the implausibility of any good faith use to which the disputed domain name may be put (see e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246; CAC Case No. 101435; CAC Case No. 101691 and CAC Case No. 101640).
The Panel finds that the Complainant’s “JCDECAUX” trademark has indeed a strong reputation globally, the Respondent failed to provide any explanations regarding registration and use of the disputed domain name and it is hard, if not impossible, to imagine any legal use of the disputed domain name by the Respondent.
Besides, typosquatting itself can be considered as an additional argument in favor of finding bad faith registration and use (“typosquatting is not only a question of similarity, but can also be an indication of bad faith” – see CAC Case No. 101867).
The Panel also finds that, in addition to other bad faith considerations, this case falls within the provisions of paragraph 4(b)(iv) of the Policy especially if the disputed domain name was put into active use.
Since the disputed domain name virtually copies the Complainant’s mark with a clear misspelling, the Respondent would be taking advantage of the Complainant’s strong trademark by intentionally attempting to attract visitors to the Respondent’s website 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 a product or service on the Respondent’s website or location (see CAC Case No. 101486).
The Panel holds that the third requirement of the Policy has been satisfied.
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