Decision for dispute CAC-UDRP-108373

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

Since 1964, JCDecaux has operated in outdoor advertising, with a presence in more than 80 countries and 3,894 cities. The company is active in street furniture, transport and billboard advertising, managing over 1,091,811 advertising panels in airports, rail and metro stations, shopping malls, billboards and street furniture.

Listed on the Premier Marché of Euronext Paris and part of the Euronext 100 index, JCDecaux employs 12,026 people and generated revenues of €3,935.3 million in 2024.

The Complainant owns the joint venture STDecaux, which operates more than 12,000 backlit advertising spaces and approximately 500 digital screens in the Shanghai subway. It also holds multiple domain names, including <stdecaux.com.cn>, registered on 3 June 2022.

The Respondent appears to be an individual domiciled in Hebei, China.

The disputed domain name was registered on 26 January 2026.

The Complainant contends that the disputed domain name is identical to its trademark registration. The Respondent is not associated with, nor authorized to use, the STDECAUX trademark, holds no rights in the domain name, and has not used it, as it is currently inactive. The Complainant, operating in over 80 countries and listed on Euronext Paris, asserts that the Respondent registered the disputed domain name with knowledge of its rights. Any potential use of the disputed domain name would likely be illegitimate. The disputed domain name should be transferred from the Respondent to the Complainant

The Respondent contends that it is a Chinese citizen living in Hebei and has never travelled abroad. It had been unaware of the other party prior to the arbitration. The Respondent explained that it registered the domain name solely for personal use, without any malicious intent or intention to infringe on anyone’s rights, and that the domain has not been activated because its project is still under development. It further stated that if the other party believes they have a stronger claim, they may contact it directly through open and transparent channels, and that there is no need to accuse it of wrongdoing. The Respondent also added that the fact the Complainant expresses a willingness to use the domain name does not necessarily prove that the Respondent has any malicious intent toward such use. The image publicly used by the Complainant is still JCDecaux, which does not mean that anyone using a combination of two letters plus “decaux” must obtain their consent.

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 claims rights in the STDECAUX mark through its International trademark registration. By virtue of these registrations, the Complainant has established that it holds rights in the mark under paragraph 4(a) of the Policy. See Avast Software s. r. o. v Milen Radumilo, Case No. 102384 (CAC 12 March 2019).

The Complainant further asserts that the disputed domain name is identical to its STDECAUX trademark without any addition or deletion.

A side-by-side comparison shows that the dominant part of the disputed domain name is identical to the Complainant's STDECAUX trademark. The Panel notes that the generic top-level domain (gTLD) “.com” is disregarded under the first-element confusing similarity test, in accordance with paragraph 1.11.1 of the WIPO Overview 3.1(“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and, as such, is disregarded under the first-element confusing similarity test.”)

The Panel accepts that the disputed domain name is confusingly similar or identical to the Complainant's STDECAUX trademark. See paragraph 1.7 of the WIPO Overview 3.1(“Although each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark.”).

For the foregoing reasons, the Panel finds that the Complainant has satisfied the requirements 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). More specifically, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and the burden of proof then shifts to the Respondent to show it does have rights or legitimate interests. See PepsiCo, Inc. v Smith power production, 102378, (CAC 2019-03-08) ("The Panel finds that the Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against the Respondent. As the Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.").

The Complainant contends that the Respondent is neither affiliated with nor authorized by JCDecaux in any way. The Respondent has no rights or legitimate interests in the disputed domain name and is not connected to the Complainant’s business. The Complainant does not conduct any activities for, nor has any business dealings with, the Respondent. Additionally, the Complainant asserts that the Respondent is not commonly known by the disputed domain name and is merely passively holding it.

The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, given that the Complainant holds prior trademark rights in STDECAUX, the Respondent is not commonly known by the disputed domain name and the disputed domain name is being passively held. Accordingly, the burden of proof shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.

Pursuant to paragraph 2.1 of the WIPO Overview 3.1, the Respondent has to demonstrate rights or legitimate interests in the disputed domain name, non-exclusive respondent defenses under UDRP paragraph 4(c) include the following:

The Respondent contends that it has no knowledge of the Complainant and that the image publicly used by the Complainant is still JCDecaux.

The Panel is of the view that the Respondent has not provided any substantive explanation or evidence to establish any of the elements under paragraph 4(c) of the Policy. In addition, the Panel notes that both the Complainant and Respondent are based in China and that the Complainant has registered the International trademark STDECAUX designating China under the Madrid Protocol since 2011. The Complainant has also submitted evidence demonstrating its extensive local presence and business operations in China.

Having considered the overall circumstances, the Panel finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.

For the foregoing reasons, the Panel finds the Complainant has satisfied 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 Complainant reiterates that the disputed domain name is identical to its STDECAUX trademark. The Complainant, which operates in over 80 countries and is listed on Euronext Paris, asserts that the Respondent registered the disputed domain name with full knowledge of the Complainant’s rights. The Complainant further submits that the disputed domain name is inactive and that any potential use would likely be illegitimate.

The Respondent contends that the image publicly used by the Complainant is still JCDecaux and that this does not imply that anyone using a combination of two letters plus "decaux" must obtain the Complainant’s consent.

Having considered the circumstances, the Panel finds that the Respondent has offered no plausible justification for registering the disputed domain name, which is identical to the Complainant's registered trademark. It is more likely than not that the Respondent had prior knowledge of the Complainant. The Panel notes that the disputed domain name was registered 15 years after the Complainant registered the STDECAUX trademark. Furthermore, the Respondent's passive holding of the disputed domain name further demonstrates the bad faith, see paragraph 3.3 of the WIPO Overview 3.1 ("From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not by itself prevent a finding of bad faith under the doctrine of passive holding. To the contrary, in looking at the totality of circumstances in each case, panelists have found that the registration and non-use of a domain name can still constitute bad faith for purposes of the Policy. Factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s taking active steps to conceal its identity or (iv) the use of false or inaccurate contact details (noted to be in breach of the respondent’s registration agreement).").

For the foregoing reasons, the Panel finds the Complainant has satisfied 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.

Having established all three elements required under the Policy, the Panel concludes that the disputed domain name should be transferred to the Complainant.