{ "case_number": "CAC-UDRP-104410", "time_of_filling": "2022-03-14 09:45:25", "domain_names": [ "igpdecaux.media" ], "case_administrator": "Denisa Bilík (CAC) (Case admin)", "complainant": [ "JCDECAUX SA" ], "complainant_representative": "NAMESHIELD S.A.S.", "respondent": [ "Paolo Valdem" ], "respondent_representative": null, "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nSince 1964, JCDECAUX SA, the Complainant, has been the world leading outdoor advertising provider. For over 50 years it has been offering its services in approximatively 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. All over the world, it now has more than 964,760 advertising panels in Airports, Rail and Metro Stations, Shopping Malls, on Billboards and Street Furniture. The Group is listed on the Premier Marché of the Euronext Paris stock exchange and is part of Euronext 100 index. It employs a total of 10,230 people in those 80 different countries and 3,670 cities and generated revenues of €2,312m in 2020. IGPDECAUX is the Complainant’s subsidiary and the number one outdoor advertising company in Italy with 77.420 advertising panels in 130 cities, 5 airports (Bergame, Genoa, Milan Linate and Malpensa, Turin), 5 metros (Brescia, Milan, Naples, Rome, Turin) and 80 transport concessions (bus and tram).\r\nThe Respondent is an individual resident in Milan, Italy who registered the disputed domain name on 4 March 2022. ", "other_legal_proceedings": "The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.", "no_response_filed": "PARTIES' CONTENTIONS:\r\n\r\nCOMPLAINANT:\r\n\r\nThe Complainant states that the disputed domain name is confusingly similar to its trademark. The term “IGPDECAUX” was born in late 2001 from the merger between IGP (a company owned by du Chène de Vère family leader in transit advertising) and JCDecaux Comunicazione Esterna Italia, branch of the French group JCDecaux and RCS MediaGroup. It is well-established that “a domain name that wholly incorporates a Complainant’s registered trademark may be sufficient to establish confusing similarity for purposes of the UDRP”. See for instance WIPO Case No. D2003-0888, Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin. Furthermore, Complainant contends that the addition of the new gTLD “.MEDIA” does not change the overall impression of the designation as being connected to Complainant’s trademark. It does not prevent the likelihood of confusion between the disputed domain name and Complainant, its trademark and its domain names associated. See WIPO Case No. D2006-0451, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A. (“It is also well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.”). Thus, the disputed domain name is confusingly similar to the Complainant's trademark.\r\nThe Respondent does not have any rights or legitimate interest in the domain name(s). 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. The Complainant asserts that the Respondent is not identified in the WHOIS database as the disputed domain name. Past panels have held that a Respondent was not commonly known by a disputed domain name if the Whois information was not similar to the disputed domain name. Thus, the Respondent is not known as the disputed domain name. See for instance Forum Case No. FA 1781783, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Chad Moston \/ Elite Media Group (“Here, the WHOIS information of record identifies Respondent as “Chad Moston \/ Elite Media Group.” The Panel therefore finds under Policy paragraph 4(c)(ii) that Respondent is not commonly known by the disputed domain name under Policy paragraph 4(c)(ii).”). The Complainant contends that the Respondent is not affiliated with nor authorized by it in any way. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and he 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 to the Respondent to make any use of the Complainant’s trademark, or apply for registration of the disputed domain name by the Complainant. Furthermore, the disputed domain name redirects to the Registrar parking page. Therefore, the Complainant contends that Respondent did not make any use of disputed domain name since its registration, and it confirms that Respondent has no demonstrable plan to use the disputed domain name. It demonstrates a lack of legitimate interests in respect of the disputed domain name. Therefore, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.\r\nThe domain name(s) has been registered and is being used in bad faith. The disputed domain name is confusingly similar to the Complainant's trademark. The Complainant asserts that its trademark was already known for decades and protected in several countries at the time of the registration. The Complainant is doing business in more than 80 countries worldwide and is listed at the Euronext Paris stock exchange. Besides, past Panels have held that the trademark is well-known. See WIPO Case No. DCC2017-0003, JCDecaux SA v. Wang Xuesong, Wangxuesong (“The Panel is satisfied that the Respondent must have been aware of the Complainant's well-known trade mark when it registered the Domain Name.”). Thus, given the distinctiveness of the Complainant's trademark and reputation, the Complainant can state that the Respondent has registered the disputed domain name with full knowledge of the Complainant's trademark, and therefore could not ignore the Complainant. Besides, the disputed domain name is not used. The Complainant contends that the Respondent has not demonstrated any activity in respect of the disputed domain name, and it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law. As prior WIPO UDRP panels have held, the incorporation of a famous mark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use. See for instance: WIPO Case No. D2000-0003, Telstra Corporation Limited v. Nuclear Marshmallows and WIPO Case No. D2000-0400, CBS Broadcasting, Inc. v. Dennis Toeppen. On these grounds, the Complainant concludes that the Respondent has registered and is using the disputed domain name in bad faith.\r\n\r\nRESPONDENT:\r\n\r\nNO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.\r\nThe Respondent contacted CAC during this administrative proceeding with new contact email address (with claims that the current registration email is no longer active). No substantive response to the complaint was filed. Respondent in email sent on April 1, 2022 stated that “I am willing to sell the domain at a good price.”. \r\nAlthough the CAC provided cooperation to the Respondent to log in into the case file and file its response, the Respondent did not do so.", "rights": "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).", "no_rights_or_legitimate_interests": "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).", "bad_faith": "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).", "procedural_factors": "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.", "decision": "Accepted", "panelists": [ "Victoria McEvedy" ], "date_of_panel_decision": "2022-04-27 00:00:00", "informal_english_translation": "The Complainant owns many registered marks domestically, regionally and internationally. For example:\r\n\r\n- International trademark registration JCDECAUX® n° 803987 registered on 27 November 2001; and\r\n- International trademark registration DECAUX® n° 991341 registered on 4 November 2008.\r\n\r\nIt also has a large domain names portfolio, including the same distinctive wording JCDECAUX, including registered on 23 June 1997 and < igpdecaux.net> registered on 12 December 2019.\r\nIn common law jurisdictions, it has rights arising from use.\r\nIt has been found to be a well-known mark by other panels, see WIPO Case No. DCC2017-0003, JCDecaux SA v. Wang Xuesong, Wangxuesong.", "decision_domains": { "IGPDECAUX.MEDIA": "TRANSFERRED" }, "panelist": null, "panellists_text": null }