On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No. 102306
Time of Filing 2019-01-18 09:45:18
Disputed domain name JCDECAUX-FR.COM
Case Administrator
Name Šárka Glasslová
Complainant
Organization JCDECAUX SA
Authorized Representative
Organization Nameshield (Enora Millocheau)
Respondent
Organization fdgh
Other Legal Proceedings
The Panel is not aware of any pending or decided legal proceedings that are related to the disputed domain name.
Identification of rights
JCDECAUX SA owns several trademarks “JCDECAUX” such as the international trademark registration JCDECAUX® No. 803987 registered since November 27, 2001.
JCDECAUX SA is also the owner of a large domain names portfolio, including the same distinctive wording JCDECAUX ®, such as <jcdecaux.com> registered since June 23, 1997.
Factual Background
FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:
Since 1964, JCDECAUX SA is the worldwide number one in outdoor advertising. Throughout the world, the company’s success is driven by meeting the needs of local authorities and advertisers by a constant focus on innovation. For more than 50 years JCDECAUX SA has been offering solutions that combine urban development and the provision of public services in approximatively 80 countries. The Complainant is currently the only group present in the three principal segments of outdoor advertising market: street furniture, transport advertising and billboard.

All over the world, the digital transformation is gathering pace: JCDECAUX® now have more than 1,074,113 advertising panels in Airports, Rail and Metro Stations, Shopping Malls, on Billboards and Street Furniture.

The Group is listed on the Premier Marché of the Euronext Paris stock exchange and is part of Euronext 100 index. Employing a total of 13,040 people, the Group is present in more than 80 different countries and 4,033 cities and has generated revenues of €3,472m in 2017.

JCDECAUX SA owns several trademarks “JCDECAUX” such as the international trademark registration JCDECAUX® No. 803987 registered since November 27, 2001.

JCDECAUX SA is also the owner of a large domain names portfolio, including the same distinctive wording JCDECAUX ®, such as <jcdecaux.com> registered since June 23, 1997.

The disputed domain name <jcdecaux-fr.com> was registered on January 14, 2019.

The disputed domain name points to an inactive page.
 
NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

Rights
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The disputed domain name <jcdecaux-fr.com> is confusingly similar to its distinctive trademark JCDECAUX®.

The Respondent choose to associate the term “JCDECAUX” with the geographic abbreviation “FR”, which immediately refers to the Complainant, as it has its headquarters in Paris, France.
No rights or legitimate interests
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy). The Complainant does not carry out any activity for, nor has any business with the Respondent.

Neither licence 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. The Respondent is not known as the disputed domain name:
Bad faith
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).

Due to the fame of the Complainant's mark that the Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under paragraph 4(a)(iii) of the Policy.

The Respondent has not used the disputed domain name in connection with the offering of any services or in conjunction with an active website. By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, 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 of a product or service on the Respondent’s website or location.
Procedural Factors
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.
Principal Reasons for the Decision
The Respondent is not known as the disputed domain name. The disputed domain name is currently inactive. Due to the fame of the Complainant's mark that the Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under paragraph 4(a)(iii) of the Policy.
Decision
For all the reasons stated above, the Complaint is Accepted
and the disputed domain name(s) are to be
JCDECAUX-FR.COM Transferred to JCDECAUX SA
Panellists
Name Thomas Hoeren
Date of Panel Decision 2019-02-13
Publication of the Decision
Publish the Decision