Decision for dispute CAC-UDRP-107977

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 many registered marks domestically, regionally and internationally. For example:
- International trademark registration JCDECAUX® n° 803987 registered on 27 November 2001.
It also has a large domain name portfolio, including <jcdecaux.com> registered on 23 June 1997.
In common law jurisdictions, it has rights arising from use and has been found to be a well-known mark by other panels, see WIPO Case No. DCC2017-0003, JCDecaux SA v. Wang Xuesong, Wangxuesong.

Since 1964, JCDECAUX SE, the Complainant, has been the world´s leading outdoor advertising provider. For over 60 years it has offered its services in approximately 80 countries. The Complainant is currently the only group present in the three principal segments of the outdoor advertising market: street furniture, transport advertising and billboard. It now operates more than 1,091,811 advertising panels worldwide, and employs some 12,026 people, in more than 80 different countries and 3,894 cities and has generated revenues of €3,935.3m in 2024
The Group is listed on the Premier Marché of the Euronext Paris stock exchange and is part of the Euronext 100 index.
The disputed domain name <thejcdecaux.com> was registered on 15 September 2025. It resolves to an inactive page, and the MX records are configured.

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.

A. Identical or Confusingly Similar
The Complainant has established registered rights in the trademark JCDECAUX. Other panels have found it is a well-known mark. The disputed domain name <thejcdecaux.com> incorporates the Complainant’s mark in its entirety, adding only the generic article 'the'. The addition of such a non-distinctive prefix does not prevent a finding of confusing similarity. It is well established that a domain name which wholly incorporates a complainant’s mark is considered confusingly similar for purposes of paragraph 4(a)(i) of the Policy. The gTLD '.com' is disregarded for this limb of the Policy. Accordingly, the Panel finds that the first element of the Policy is satisfied.
B. Rights or Legitimate Interests
According to the WIPO Case No. D2003-0455, Croatia Airlines d.d. v. Modern Empire Internet Ltd., the 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 Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a) (ii) of the UDRP. Here, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent is not affiliated with the Complainant and has not been authorized to use the JCDECAUX mark. The WHOIS information does not suggest that the Respondent is commonly known by the disputed domain name. Indeed, the Respondent is a Diane Mendoza from the Philippines.  See for instance the Forum Case No. FA 1781783, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Chad Moston / Elite Media Group <bobsfromsketchers.com> (“Here, the WHOIS information of record identifies Respondent as “Chad Moston / Elite Media Group.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”)

The domain name resolves to an inactive holding type page, and there is no evidence of any bona fide offering of goods or services or legitimate non-commercial use. Passive holding is not bad faith per se but it is highly fact sensitive. Panels have consistently found that the passive holding of a domain name that incorporates a complainant’s well-known mark does not confer any rights or legitimate interests. The Respondent has not filed any response or evidence to rebut this presumption. Therefore, the Panel finds that the second element of the Policy is met.

C. Registered and Used in Bad Faith
The Panel finds that the domain name was registered and is being used in bad faith. The Complainant’s trademark JCDECAUX is distinctive and well known internationally. It is inconceivable that the Respondent was unaware of the Complainant’s rights when registering the disputed domain name. The fact that the disputed domain name incorporates the entirety of a well known trademark, combined with its inactivity and the presence of active MX records, supports an inference of bad faith use, potentially for deceptive or fraudulent purposes. See similar case CAC Case No. 102827, JCDECAUX SA v. Handi Hariyono (“There is no present use of the disputed domain name but there are several active MX records connected to the disputed domain name. It is concluded that it is inconceivable that the Respondent will be able to make any good faith use of the disputed domain name as part of an e-mail address.”).
As established in Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003) and subsequent cases, passive holding in the context of a well-known mark can constitute use in bad faith. Accordingly, the Panel concludes that the third element of paragraph 4(a) of the Policy is also satisfied.
For these reasons, the Panel finds that all three cumulative requirements under paragraph 4(a) of the Policy have been met. The Complainant has discharged its burden of proof.