NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.
The Complainant made the following contentions:
The Complainant states that the disputed domain name <jcdecaux-uk.com> is confusingly similar to its trademarks and branded services JCDECAUX®.
The addition of the geographical abbreviation “UK” (which refers to the United Kingdom, where the Complainant has activities) to the trademark is not sufficient to escape the finding that the disputed domain name is confusingly similar to the trademark JCDECAUX.
It is well-established that “a domain name that wholly incorporates a Complainant’s registered trademark may be sufficient to establish confusing similarity for purposes of the UDRP” (for instance WIPO Case No. D2003-0888).
Furthermore, the Complainant contends that the addition of the gTLD “.COM” does not change the overall impression of the designation as being connected to Complainant’s trademark. It does not prevent the likelihood of confusion between the disputed domain name and Complainant, its trademark, and its domain names associated. The Complainant refers to WIPO Case No. D2006-0451 in which the panel concluded that: “It is also well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.”
Finally, the Complainant argues that past Panels have confirmed the Complainant rights over the term “JCDECAUX”. For instance: CAC Case No. 102733 <jcdecaux-hk.com>; WIPO Case No. D2019-1143 <usa-jcdecaux.com>; and CAC Case No. 102306 <jcdecaux-fr.com>.
Thus, the Complainant concludes that the disputed domain name is confusingly similar to the Complainant's trademark JCDECAUX.
Regarding Respondent's rights or legitimate interests, the Complainant points to the decision in the WIPO case No. D2003-0455, according to which the complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests and 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 Complainant asserts that the Respondent is not identified in the WHOIS database as the disputed domain name. Past panels have held that a Respondent was not commonly known by a disputed domain name if the Whois information was not similar to the disputed domain name. Thus, the Respondent is not known as the disputed domain name. In support of its arguments, the Complainant refers to Forum Case No. FA 1781783 in which the panel found that the respondent was not commonly known by the disputed domain name under paragraph 4(c)(ii) of the UDRP Policy.
The Complainant contends that the Respondent is not affiliated with nor authorized by the Complainant in any way. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and he is not related in any way to its business. The Complainant does not carry out any activity for, nor has any business with the Respondent.
Neither license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademark JCDECAUX or apply for registration of the disputed domain name by the Complainant.
Besides, the Complainant argues that the disputed domain name is identical to the Complainant’s website in the United Kingdom. Therefore, the Complainant contends that the Respondent did not make any use of the disputed domain name since its registration, and it confirms that the Respondent has no demonstrable plan to use the disputed domain name. It demonstrates a lack of legitimate interests in respect of the disputed domain name.
Therefore, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Turning to the bad faith argument, the Complainant asserts that the disputed domain name is confusingly similar to the Complainant's trademark JCDECAUX. The Complainant asserts that its trademark JCDECAUX was already known for decades and protected in several countries at the time of the registration. The Complainant is doing business in more than 80 countries worldwide and is listed at the Euronext Paris stock exchange.
Besides, the Complainant points to the fact that past panels have held that the JCDECAUX trademark is well-known (see WIPO Case No. DCC2017-0003: “The Panel is satisfied that the Respondent must have been aware of the Complainant's well-known JCDECAUX trademark when it registered the Domain Name.”).
Moreover, the disputed domain name resolves to a website copying the Complainant’s official website for the United Kingdom.
Thus, given the distinctiveness of the Complainant's trademark and reputation, the Complainant can state that the Respondent has registered the disputed domain name with full knowledge of the Complainant's trademark JCDECAUX, and therefore could not ignore the Complainant.
Furthermore, the Complainants points out that the disputed domain name is identical to the Complainant’s website in Estonia. Therefore, the Complainant contends that the Respondent intentionally attempts to attract, for commercial gain, Internet users to the Respondent’s website or other online location by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent or of a product or service on the Respondent’s website.
On these bases, the Complainant concludes that the Respondent has registered and is using the disputed domain name in bad faith.
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