Decision for dispute CAC-UDRP-107396

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant owns (among others) international trademark registration JCDECAUX n° 803987 registered since November 27, 2001, and US trademark registration JCDECAUX n° 6375480 registered since June 8, 2021.

The Complainant is the worldwide number one in outdoor advertising, with more than 1,091,811 advertising panels in airports, rail and metro stations, shopping malls, on billboards and street furniture. Its trademark JCDECAUX, which is well-known, was registered in 2001. The Complainant registered the domain name <jcdecaux.com> in 1997.

The disputed domain name <jdcecaux.com> was registered on March 6, 2025. It does not resolve to an active website.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.
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.

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1)   the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2)   the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(3)   the disputed domain name has been registered and is being used in bad faith.

In view of the Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at paragraph 4.3.

As to the first element, the Complainant has shown that it has rights in the United States registered trademark JCDECAUX n° 6375480 registered since June 8, 2021.

The Panel finds the disputed domain name <jdcecaux.com> to be confusingly similar to the Complainant’s mark, since it merely switches the letters “cd” to “dc”, which is not sufficient to distinguish the domain name from the mark. The inconsequential gTLD “.com” may be ignored.

As to the second element, paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate rights to or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.

(i)         before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii)        the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii)       the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

The Complainant asserts that the Respondent is not known as the disputed domain name and is not affiliated with nor authorized by the Complainant in any way. The Respondent has no rights or legitimate interests in respect of the disputed domain name and is not related in any way to its business. The Complainant does not carry out any activity for, nor has any business with the Respondent. Neither licence nor authorization has been granted by the Complainant to the Respondent to make any use of the Complainant’s trademark JCDECAUX, nor to apply for registration of the disputed domain name. Finally, the Complainant contends that the Respondent does not use the disputed domain name and that this confirms that the Respondent has no demonstrable plan to use the disputed domain name.

The Panel notes that the disputed domain name <jdcecaux.com> was registered on March 6, 2025, many years after the Complainant has shown that its JCDECAUX mark had become very well-known. It does not resolve to an active website.

These circumstances, together with the Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the disputed domain name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show that it does have rights or legitimate interests in the disputed domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019). The Respondent has made no attempt to do so.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

As to the third element, paragraph 4(b) of the Policy sets out some circumstances which shall be evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy. As noted in the WIPO Jurisprudential Overview 3.0, Section 3.1, those circumstances are not exclusive and a complainant may demonstrate bad faith under paragraph 4(a)(iii) by showing that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behaviour detrimental to the complainant’s trademark.

In the absence of any Response, the circumstances set out above in relation to the second element satisfy the Panel that the Respondent was fully aware of the Complainant’s JCDECAUX mark when the Respondent registered the clearly typosquatted <jdcecaux.com> domain name and that the Respondent did so in bad faith with intent to take unfair advantage of the Complainant’s mark.

Further, although the <jdcecaux.com> domain name does not resolve to an active website, as in the leading case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, there is no conceivable active use that could be made of the disputed domain name that would not amount to an infringement of the Complainant’s rights in its JCDECAUX mark. Accordingly, the Panel finds that the Respondent’s passive use of the disputed domain name demonstrates registration and use in bad faith.

Accordingly, the Panel concludes that the Respondent has registered the disputed domain name and is using it in bad faith.