Decision for dispute CAC-UDRP-107388

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 is the owner of the trademark JCDECAUX, international registration No. 803987, registered on 27 November 2001, for goods and services in classes 06, 09, 11, 19, 20, 35, 37, 38, 39, 41, 42, designating various countries worldwide, including Vietnam.

The Complainant is also the owner of the domain name <jcdecaux.com> registered on 23 June1997, resolving to the Complainant's main website. 

The Complainant is a French company listed on the Premier Marché of the Euronext Paris stock exchange and part of the Euronext 100 index. The Complainant operates since 1964 in the field of outdoor advertising. It offers solutions that combine urban development and the provision of public services in more than 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 advertising. To date, the Complainant employs a total of 12,026 people and has more than 1,056,833 advertising panels in airports, rail and metro stations, shopping malls, on billboards and street furniture. In 2023, the Complainant's group generated revenues for approximately 3,9 billion Euros.

The disputed domain name was registered on 5 March 2025 and resolves to a website in Vietnamese, offering various lottery and gambling services.  The Respondent is allegedly located in Vietnam.

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

In particular, the Complainant maintains that the disputed domain name is identical to its JCDECAUX trademark as it reproduces this trademark with the sole addition of the new generic Top-Level Domain (new gTLD) ".london", which cannot prevent identity between the disputed domain name and the Complainant's mark.

The Complainant further maintains that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant and the Complainant did not authorize the Respondent to make use of its trademark in any manner whatsoever, or to apply for the registration of the disputed domain name. The Respondent is not identified in the relevant Whois by the disputed domain name and does not appear to be commonly known by the disputed domain name. The disputed domain name resolves to a website offering various lottery and gambling services. Accordingly, the Respondent has registered the disputed domain name to attract Internet users and divert traffic to its website by creating a likelihood of confusion with the Complainant's mark. Accordingly, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.

 Lastly, the Complainant maintains that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant's JCDECAUX mark is distinctive and well known and the registration of the disputed domain name under the gTLD ".london" targets one of the main markets of the Complainant. Accordingly, the Complainant maintains that the Respondent registered the disputed domain name being well aware of the Complainant and of its JCDECAUX mark.

 The disputed domain name resolves to a website offering various lottery and gambling services. The Complainant contends that the Respondent is using the disputed domain name to divert users to its website, presumably for commercial gain, which is evidence of bad faith.

As far as the Respondent is concerned, 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.

I. Identity

The Complainant has shown that it owns registered rights over the trademark JCDECAUX dating back before the date of registration of the disputed domain name. The Panel finds that the disputed domain name is identical to the Complainant's mark as it consists of this mark and the new gTLD ".london", which is usually considered not relevant in the assessment of the first UDRP element.

Accordingly, the Panel is satisfied that the first requirement to prevail in this UDRP proceeding is met.

II. No Rights or Legitimate Interests

As also confirmed in the WIPO Overview of WIPO panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.

 Based on the available evidence, the Respondent does not appear to be known by the disputed domain name. The Respondent is not a licensee of, nor has any kind of relationship with, the Complainant. The Complainant never authorised the Respondent to make use of its trademark in any manner whatsoever, including as part of the disputed domain name.

 At the time of the filing of the Complaint, the disputed domain name was used to purportedly offer betting and gambling services. Through the disputed domain name the Respondent is therefore attempting to divert Internet users to its website to allegedly offer betting and gambling services. The Respondent is probably obtaining a revenue from the services provided on the website associated with the disputed domain name. Moreover, to allow users to play online, the Respondent is most likely requiring their personal data and sensitive information, such as their personal names, residence address, credit card numbers etc. Accordingly, the Respondent is trading on the goodwill and reputation of the Complainant's mark, presumably for the Respondent’s own commercial gain and to potentially incur in illegal activity by the undue gathering of personal data from Internet users. Such use of the disputed domain name cannot amount to a bona fide use, or to a noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.

Accordingly, the Panel is satisfied that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. As the Respondent has failed to come forward with appropriate allegation or evidence that it owns rights or legitimate interests in the disputed domain name, the Panel finds that the second condition under the Policy is met.

III. Bad Faith

The Complainant's mark is distinctive and has been already considered renowned in previous UDRP decisions (see, amongst others, CAC-UDRP Case No. 106148, JCDECAUX SE vs. Domain Administrator (NameSilo, LLC); CAC-UDRP Case No. 105936, JCDECAUX SE vs. LUK Wingle (jcdecuax.com); CAC-UDRP Case No. 05879, JCDECAUX SE vs. James Haule). The disputed domain name is identical to the Complainant's mark and has been registered under the new gTLD ".london", which is a town where the Complainant is actively operating. It is therefore unlikely that the Respondent was unaware of the Complainant's mark when it registered the disputed domain name. The registration of a domain name identical to a third party's distinctive and well-known mark without rights or legitimate interests amounts to registration in bad faith. 

As far as use in bad faith is concerned, as mentioned above, the disputed domain name resolves to a website offering betting and gambling services in Vietnamese. To access these services one needs to register on the website, presumably by inserting his/her personal data. Moreover, in order to make payments, it is certainly necessary to insert sensitive information, such as personal credit card numbers and the like. Therefore, the Respondent is using the Complainant's mark and associated goodwill and reputation, to attract people to the Respondent's website and offer them gambling and betting services, meanwhile gathering their personal and sensitive data. Therefore, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant's mark and has unduly obtained personal and sensitive information from such Internet users. Such use of the disputed domain name amounts to use in bad faith pursuant to paragraph 4(b)(i) of the Policy.

In addition to the above, the Panel notes that the website indicates as contact information an email address including the disputed domain name and therefore the Complainant's mark. Accordingly, the Respondent probably set up Mail exchanges (MX records) for the disputed domain name, which UDRP Panels usually consider further evidence of bad faith.

For all the aforementioned reasons, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.

Accordingly, the Panel is satisfied that also the third and last requirement under the Policy has been met.