Westmore · UDRP DecisionJcdecaux-fr.com
The Panel ordered transfer of <jcdecaux-fr.com>, finding it confusingly similar to the Complainant’s JCDECAUX mark, that the Respondent lacked rights or legitimate interests, and that the domain was registered and used in bad faith. The domain was inactive, but the Panel found that the fame of the mark established the Respondent’s actual knowledge of the Complainant’s rights.
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The Panel found bad-faith registration and use because the fame of the JCDECAUX mark demonstrated the Respondent’s actual prior knowledge of the Complainant’s rights. It also noted that the domain was inactive and found intentional attraction of Internet users for commercial gain through likely confusion.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
Case number CAC-UDRP-102306 Time of filing 2019-01-18 09:45:18 Domain names jcdecaux-fr.com Case administrator Name Šárka Glasslová (Case admin) Complainant Organization JCDECAUX SA Complainant representative Organization Nameshield (Laurent Becker) Respondent Organization fdgh Other Legal Proceedings The Panel is not aware of any pending or decided legal proceedings that are related to the disputed domain name. Identification Of Rights JCDECAUX SA owns several trademarks “JCDECAUX” such as the international trademark registration JCDECAUX® No. 803987 registered since November 27, 2001. JCDECAUX SA is also the owner of a large domain names portfolio, including the same distinctive wording JCDECAUX ®, such as <jcdecaux.com> registered since June 23, 1997. Factual Background FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT: Since 1964, JCDECAUX SA is the worldwide number one in outdoor advertising. Throughout the world, the company’s success is driven by meeting the needs of local authorities and advertisers by a constant focus on innovation. For more than 50 years JCDECAUX SA has been offering solutions that combine urban development and the provision of public 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, the digital transformation is gathering pace: JCDECAUX® now have more than 1,074,113 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. Employing a total of 13,040 people, the Group is present in more than 80 different countries and 4,033 cities and has generated revenues of €3,472m in 2017. JCDECAUX SA owns several trademarks “JCDECAUX” such as the international trademark registration JCDECAUX® No. 803987 registered since November 27, 2001. JCDECAUX SA is also the owner of a large domain names portfolio, including the same distinctive wording JCDECAUX ®, such as <jcdecaux.com> registered since June 23, 1997. The disputed domain name <jcdecaux-fr.com> was registered on January 14, 2019. The disputed domain name points to an inactive page. Parties Contentions NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED. 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). The disputed domain name <jcdecaux-fr.com> is confusingly similar to its distinctive trademark JCDECAUX®. The Respondent choose to associate the term “JCDECAUX” with the geographic abbreviation “FR”, which immediately refers to the Complainant, as it has its headquarters in Paris, France. 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). 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 JCDECAUX®, or apply for registration of the disputed domain name by the Complainant. The Respondent is not known as the disputed domain name: 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). Due to the fame of the Complainant's mark that the Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under paragraph 4(a)(iii) of the Policy. The Respondent has not used the disputed domain name in connection with the offering of any services or in conjunction with an active website. By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. 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. Principal Reasons for the Decision The Respondent is not known as the disputed domain name. The disputed domain name is currently inactive. Due to the fame of the Complainant's mark that the Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under paragraph 4(a)(iii) of the Policy. For all the reasons stated above, the Complaint is Accepted and the disputed domain name(s) is (are) to be JCDECAUX-FR.COM: Transferred PANELLISTS Name Thomas Hoeren Date of Panel Decision 2019-02-13 Publish the Decision
Source of record: CAC . Reproduced for research; CAC is the authoritative source.
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