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. 102733
Time of Filing 2019-10-21 10:07:52
Disputed domain name JCDECAUX-HK.COM
Case Administrator
Name Iveta Špiclová
Complainant
Organization JCDECAUX SA
Authorized Representative
Organization Nameshield (Laurent Becker)
Respondent
Name salt sophia
Other Legal Proceedings
There are no other legal proceedings the Panel is aware of which are pending or decided and which relate to the disputed domain name.
Identification of rights
The Complainant is - among others - the owner of the international trademark registration n°1803987 “JCDECAUX”, registered on November 27, 2001, and of several domain names 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:

The Complainant claims that the Complainant is the worldwide number one in outdoor advertising, offering for more than 50 years solutions that combine urban development and the provision of public services in more than 80 countries (street furniture, transport advertising and billboard). The Complainant asserts that the Complainant now has more than 1,061,200 advertising panels in Airports, Rail and Metro Stations, Shopping Malls, on Billboards and Street Furniture. Also the Complainant would be listed on the Premier Marché of the Euronext Paris stock exchange and is part of Euronext 100 index.
 
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).
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).
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).
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
1. The Complainant has, to the satisfaction of the Panel, shown that the disputed domain name is identical or confusingly similar to the Complainant's trademarks (within the meaning of paragraph 4(a)(i) of the Policy). In particular, the Panel finds that the disputed domain name is almost identical to the Complainant's trademark "JCDECAUX".

In this regard, it shall be noted that <JCDECAUX-HK.COM> exactly reproduces the trademark "JCDECAUX", with the mere addition of the verbal portion "HK", which is generally considered an abbreviation for "Hong Kong" (according to ISO 3166-1 and as an international registration plate).

When a disputed domain name consists of the Complainant's full trademark followed by a geographical term, it is very likely to confuse consumers, who might erroneously believe that the domain is somehow connected with Complainant's local business activity (in this case, in Hong Kong).


2. 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 Panel finds that the Complainant successfully submitted prima facie evidence that the Respondent has made no use of, or demonstrable preparations to use, neither of the disputed domain name in connection with a bona fide offering of goods or services, nor is making a legitimate non-commercial or fair use of the disputed domain name, nor is commonly known under the disputed domain name. This prima facie evidence was not challenged by the Respondent, which did not file any Response to the Complaint.

As a matter of fact, there are no arguments why the Respondent could have own rights or legitimate interests in the disputed domain name. "JCDECAUX" definitely is a distinctive sign used by the Complainant both as business name and as trademark in order to denote its services. Therefore, the Panel accepts the contentions of the Complainant that the Respondent has no such rights or legitimate interests in <JCDECAUX-HK.COM>.


3. The Complainant has, to the satisfaction of the Panel, shown the disputed domain name to has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

There is no explanation proving that the Respondent has made use of, or demonstrable preparations to use, of the disputed domain name in connection with a bona fide offering of goods or services, nor that it is making a legitimate non-commercial or fair use of the disputed domain name, nor that is commonly known as <JCDECAUX-HK.COM>.

In the absence of a Response and given the considerable reputation of the Complainant and its trademarks, the Panel infers that the Respondent had the Complainant's trademarks "JCDECAUX" in mind when registering the disputed domain name. As a matter of fact, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as an infringement of the Complainant’s rights under trademark law.
Decision
For all the reasons stated above, the Complaint is Accepted
and the disputed domain name(s) is (are) to be
JCDECAUX-HK.COM Transferred to Complainant
Panellists
Name Prof. Dr. Lambert Grosskopf, LL.M.Eur.
Date of Panel Decision 2019-12-02
Publication of the Decision
Publish the Decision