The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
There are two elements that must be satisfied – registration and use in bad faith.
Registration in bad faith
The evidence shows that the Complainant’s trademark “JCDECAUX” is a well-known trademark, and has been so 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.
The Panel notes a past panel decision that referred to the well-known nature of the Complainant’s trademark. See WIPO Case No. DCC2017-0003, JCDecaux SA v. Wang Xuesong, Wangxuesong.
The Complainant also adduced evidence of Google search results for the terms “JCDECAUX LTD”, and “JCDECAUX LIMITED” (which is the Complainant’s entity in the United Kingdom. The result of the searches refers to the Complainant.
The Panel accepts that given the distinctiveness of the Complainant’s trademark, the well-known nature of the Complainant’s trademark and its reputation, the inescapable inference is that the Respondent registered the disputed domain name with full knowledge of the Complainant’s trademark.
Accordingly, the Panel accepts that the disputed domain name was registered by the Respondent in bad faith.
Use in bad faith
The Panel has already referred to the uncontroverted facts set out in the Amended Complaint and accepts the evidence and contention that the disputed domain name resolves to an inactive page.
The Complainant contends that the Respondent has not demonstrated any activity in respect of the disputed domain name, and it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.
The incorporation of a registered trademark that is famously known into a disputed domain name coupled with an inactive website, without any administratively compliant response from a respondent, are irrefragable arguments in support of the requirement that the use by the Respondent of the disputed domain name is in bad faith. See also WIPO Case No. D2000-0003, Telstra Corporation Limited v. Nuclear Marshmallows; WIPO Case No. D2000-0400, CBS Broadcasting, Inc. v. Dennis Toeppen.
The Complainant also cites the CAC Case No. 102827, JCDECAUX SA v. Handi Hariyono where in that case there was no present use of the disputed domain name but there were several active MX records connected to the disputed domain name. It was concluded by the panel that it was inconceivable that the respondent would be able to make any good faith use of the disputed domain name as part of an e-mail address.
This conduct, the bona fides of which are clearly left unexplained by the Respondent, is in the Panel’s view evidence of bad faith. See WIPO Case No. D2018-0497, StudioCanal v. Registration Private, Domains By Proxy, LLC / Sudjam Admin, Sudjam LLC; Forum Case No. FA 1623939, Citigroup Inc. v. Kevin Goodman.
The Czech Arbitration Court has also provided written notice of the Amended Complaint to the Respondent with no administratively compliant responses made in respect to any good faith use of the disputed domain name.
In the circumstances, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would be legitimate.
The Panel, therefore, concludes that the Respondent’s holding of the disputed domain name in this particular case satisfies the requirement that the disputed domain name is being used in bad faith by the Respondent.
Accordingly, the Panel finds that the registration of the disputed domain name and its use were in bad faith.
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