Decision for dispute CAC-UDRP-103384

The Panel is not aware of other legal proceedings which are pending or decided and which relate to the Disputed Domain Name.

The Complainant JCDECAUX SA is the owner of several trademarks consisting of or containing the element “JCDECAUX” in several countries, such as the international trademark “JCDECAUX” – Reg. No 803987 – registered on November 27, 2001.

The Complainant also owns an important domain names portfolio containing the element “JCDECAUX”, such as <JCDECAUX.COM> registered since June 23, 1997.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant is a joint stock company registered in France, specialized in outdoor advertising. Founded in 1964, the Complainant is the global market leader in outdoor advertising and offering its services in more than 80 countries. The Complainant operates more than 1 million advertising panels in airports, rail stations, metro stations, shopping malls and on billboards as well as street furniture. The Complainant is listed on the Premier Marché of the Euronext Paris stock exchange and is part of Euronext 100 index.

The Complainant uses, inter alia, the domain name <JCDECAUX.COM> and its trademark “JCDECAUX” for its services and as company name.

The Disputed Domain Name has been registered with the Respondent on October 28, 2020.

At the time of filing the Complaint, the Disputed Domain Name pointed to a website identical to the Complaint’s web presence in Estonia.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

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 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 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).

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.

As the Respondent did not file an administratively compliant Response, pursuant to paragraph 14(b) of the Rules, the Panel may draw such inferences therefrom as it considers appropriate. Thus, the Panel considers the contentions of the Complainant as conceded by the Respondent.

A. The Disputed Domain Name is confusingly similar to the trademark “JCDECAUX” of the Complainant.

The Complainant has, to the satisfaction of the Panel, shown that it has valid trademark rights in “JCDECAUX”. The Disputed Domain Name includes the Complainant's trademark in its entirety.

Further, the addition of the gTLD suffix “.ONLINE” is not sufficient to escape the finding that the Disputed Domain Name is identical to the Complainant's trademark and does not change the overall impression of the designation as being connected to the trademark of the Complainant.

B. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name within the meaning of the Policy.

The Complainant has established a prima facie proof that the Respondent has no rights or legitimate interests in the Disputed Domain Name, since the Respondent is not a licensee of the Complainant nor has the Complainant granted any permission or consent to use its trade mark in a domain name. Furthermore, the Disputed Domain Name does not correspond to the name of the Respondent and the Respondent is not commonly known as “JCDECAUX".

Moreover, the Disputed Domain Name was originally linked to a website identical to the Complainant's web presence in Estonia. Therefore, it can be concluded that the Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trade mark. Furthermore, the Disputed Domain Name currently does not point to any website, which is why no approach for a legitimate use can recognized to this date.

Summarised, there is no evidence for a use of the Disputed Domain Name for any bona fide offer of goods or services or a legitimate non-commercial or fair use.

C. The Disputed Domain Name has been registered and is being used in bad faith within the meaning of the Policy.

Firstly, the timing of the registration of the Disputed Domain Name indicates the Respondent‘s bad faith in registering such domain name, as, at that time, the Complainant‘s trade mark “JCDECAUX” was already known for decades and protected in several countries. The Complainant is doing business in more than 80 countries worldwide and is listed at the Euronext Paris stock exchange. Hence, it seems very plausible, that the Respondent knew the trade mark of the Complainant at the time of registration. Furthermore, the Complainant´s trade mark “JCDECAUX” is quite unique. Hence, it does not seem very plausible, that the Respondent has registered the Disputed Domain Name freely and without reference to the Complainant‘s trademark. This must be all the more true since no reference of the Respondent to the Disputed Domain Name is discernible. Moreover, the trade mark “JCDECAUX” is anything but generic, so that it is not likely that the Respondent wished to describe any goods or services by choosing the Disputed Domain Name.

Lastly, the obvious duplicate of the Complainant's web presence in Estonia, which was originally available under the Disputed Domain Name, indicates that the Respondent must have been aware of the Complainant's trade mark rights.