According to paragraph 4(a) of the Policy the Complainant is required to prove each of the following three elements to obtain the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
1) The Complainant's mark "DECAUX" is totally encompassed in the disputed domain name <ipgdecauxmedia.com>. The prefix “IPG” clearly refers to the Complainant since its Italian subsidiary is known as "IGPDECAUX" and due to the fact that Complainant owns the corresponding domain name <igpdecaux.net> registered since December 12,2019 (see JCDECAUX vs. Paolo Valdem - CAC Case No. 104410; JCDECAUX vs. Handi Hariyono - CAC Case No. 102827 and JCDECAUX vs. Sean Sterling - CAC Case No. 102339). Furthermore, the addition of a generic term such as “media”, which describes the very field of business of the proprietor of the earlier trademarks, is absolutely not sufficient to distinguish the disputed domain name from the Complainant trademarks (see, between many others, VIVENDI vs. 1337 Serices LLC - CAC Case No. 103780). Furthermore, as previous panels have stated, a domain name that wholly incorporates a Complainant’s registered trademark may be sufficient to establish confusing similarity for purposes of the UDRP (See, between many others, Dr. Ing. h.c. F. Porsche AG vs. Vasiliy Terkine.g - WIPO Case No. D2003-0888). Finally, the generic Top-Level Domain “.com” is obviously a mere standard registration requirement and should be disregarded when assessing whether a disputed domain name is confusingly similar to the trademarks in which the Complainant has rights (see, between many others, Credit Mutuel Arkea vs. Domain Administration - CAC Case No. 102345). The Complainant therefore succeeds on the first element of the Policy.
2) The Complainant provided prima facie evidence that the Respondent does not have rights or legitimate interests in respect of the disputed domain name as it is not commonly known under the disputed domain name and was never authorized to use it by the Complainant. The Respondent, in the absence of any substantial response, has not shown any facts or element to justify prior rights or legitimate interests in the disputed domain name. The Complainant therefore succeeds also on the second element of the Policy.
3) Taking into account (i) the reputation and fame of the Complainant trademarks, (ii) the fact that "DECAUX" trademark appears to be incorporated in its entirety in the disputed domain name and (iii) that said domain name corresponds to a Complainant's subsidiary name (IGPDECAUX) followed by a generic term related to the Complainant business (media), the Panel concludes that the Respondent must have known of the Complainant trademarks when he registered the disputed domain name. The adoption of a well-known trademark into a domain name by someone with no apparent connection with the name suggests opportunistic bad faith (see The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113; SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163). Moreover, the Respondent’s use of the disputed domain name merely to indicate that the disputed domain name "is available for sale" (passive holding) is sufficient to demonstrate bad faith use. This, in particular, due to the reputation of the Complainant trademarks and the fact that it is not possible to conceive of any plausible good faith use of such domain names by anyone other than the Complainant (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The Respondent did not respond and in the absence of any evidence by the Respondent or a satisfactory and credible explanation of how the registration and use of the disputed domain name, which incorporates the well-known "DECAUX" trademark, has not been in bad faith, the Panel finds that paragraph 4(a)(iii) of the Policy has also been satisfied. Furthermore, in JCDECAUX vs. Paolo Valdem - CAC Case No. 104410, the Panel finds registration in bad faith in a case where the same Respondent of the present procedure (Paolo Valdem) had registered the domain name <igpdecaux.media> in a case almost identical to the one at hand. Therefore, the Respondent’s bad faith is also shown by a pattern of conduct consisting in registering domain names that incorporate well-known trademarks of others (See e.g, Valeant Pharmaceuticals International and Valeant Canada Limited vs Johnny Carpela, WIPO Case No. D2005-0786 and Alloy Rods Global, Inc. vs Nancy Williams, WIPO Case No. D2000-1392).The Complainant therefore succeeds also on the third element of the Policy.
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