Westmore · UDRP DecisionJcdecauxna.mobi
The Panel ordered transfer of <jcdecauxna.mobi> to JCDecaux SA. It found the domain confusingly similar to the JCDECAUX trademark because it incorporated the mark in full and the additional letters “na” did not distinguish it. The Complainant established a prima facie case that the Respondent lacked rights or legitimate interests, which the Respondent did not rebut. Given the fame and prior registration of the JCDECAUX mark and the arguments and evidence concerning the domain’s use, the Panel also found registration and use in bad faith.
The timeline behind jcdecauxna.mobi
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
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The case illustrates a straightforward application of the UDRP where a distinctive trademark is reproduced in full and followed by a short suffix that may be geographic. The decision also demonstrates the practical effect of an unrebutted prima facie case on rights or legitimate interests, while confirming that respondent default alone did not replace the Panel’s assessment of all three elements.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION JCDecaux SA v. Whois Privacy Protection Service by onamae.com / Kusano Tetsuya Case No. D2015-1740 1. The Parties The Complainant is JCDecaux SA of Neuilly-sur-Seine, France, represented by Nameshield, France. The Respondent is Whois Privacy Protection Service by onamae.com of Tokyo, Japan / Kusano Tetsuya of Tokyo, Japan. 2. The Domain Name and Registrar The disputed domain name <jcdecauxna.mobi> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2015. On September 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 1, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 5, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 6, 2015. On October 5, 2015, the Center notified the Parties in both English and Japanese that the language of the Registration Agreement for the disputed domain name was Japanese. On October 6, 2015, the Complainant requested for English to be the language of the proceeding, to which the Respondent has not replied. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in both English and Japanese, and the proceeding commenced on October 13, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2015. The Center appointed Gabriela Paiva Hantke as the sole panelist in this matter on November 18, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is an outdoor advertising company worldwide. The Complainant is currently the only group present in the three principal segments of the outdoor advertising market: street furniture, transport advertising and billboard. The website of the Complainant can be seen at “www.jcdecaux.com”. The Complainant was created in 1964. It is listed on the Premier Marché of the Euronext Paris stock exchange and is part of Euronext 100 index. Employing a total of 12,000 people, the Complainant is present in more than 60 different countries and 3,700 cities and generated revenues of EUR 2,676 million in 2013. The Complainant is the owner of the distinctive international trademark number 803987 JCDECAUX registered on November 27, 2001. The Complainant owns registrations of its trademark JCDECAUX in many jurisdictions. The Complainant also owns a number of domain names incorporating the trademark JCDECAUX. The disputed domain name < jcdecauxna.mobi> has been registered on September 8, 2015. 5. Parties’ Contentions A. Complainant The Complainant is the owner of the well known JCDECAUX trademark, registered in many jurisdictions. The Complainant is in existence since 1964 and operates in three principal segments of the outdoor advertising market: street furniture, transport advertising and billboard. The Complainant owns several domain names including <jcdecaux.com>. The Complainant contends that the disputed domain name < jcdecauxna.mobi> is confusingly similar to its trademark JCDECAUX. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant contends that the disputed domain name was registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding Under paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. In this case, the language of the Registration Agreement is Japanese. The Complainant requested the language of the proceeding to be English. The Respondent has not submitted any comments in this regard despite having been given the opportunity. The disputed domain name is registered in ASCII characters, using the Roman alphabet. In these circumstances, the Panel has determined English to be the language of the proceeding. B. Identical or Confusingly Similar The Complainant is the owner of the JCDECAUX trademark, registered in many jurisdictions and it states that the disputed domain name < jcdecauxna.mobi> is confusingly similar to its trademark and branded goods JCDECAUX. The disputed domain name contains the Complainant’s trademark in its entirety and the addition of the term “na”, which may refer to “North America”, according to arguments and evidence provided by the Complainant, does not eliminate confusion because adding to the trademark a geographical term plus generic Top-Level Domain (gTLD) “.mobi” at the end of the disputed domain name, is not sufficient. The disputed domain name remains confusingly similar to the trademark JCDECAUX. The Complainant cites previous UDRP cases with respect to the point. See, The Ford Foundation v. MD BAHARUL ISLAM , WIPO Case No. D2014-1616 and JCDecaux SA v. Ercan Yavuzer jcdecauxturkey.com , WIPO Case No. D2015-1068 . Furthermore, the Complainant explains that the trademark JCDECAUX is only known in relation to the Complainant and it bases its statement in the Google searches on the wording “jcdecaux” that displayed several results, all of them being related to the Complainant. It is a fact that the disputed domain name <jcdecauxna.mobi> contains the JCDECAUX trademark of the Complainant plus the term “na”, which can be seen as indicative of North America or simply as letters “n” and “a”. The “na” particle is not enough to distinguish the disputed domain name from the JCDECAUX trademark, so the disputed domain name is confusingly similar to the JCDECAUX trademark. In summary, in view of all of these facts and arguments the Panel finds that the disputed domain name is confusingly similar to the mark owned by the Complainant. Accordingly, the Complainant has satisfied the first element of the Policy. C. Rights or Legitimate Interests The Complainant has established ownership of the JCDECAUX trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name <jcdecauxna.mobi> and it is not related in any way with the Complainant. The Complainant does not carry out any activity for, nor has any business with the Respondent. The Complainant contends that it has not granted any licence or authorization to the Respondent to make any use of the trademark JCDECAUX, or apply for registration of the disputed domain name. The Complainant also states that the website in relation with the disputed domain name <jcdecauxna.mobi> is not used in relation with the expression “jcdecauxna”. In the Panel’s view, the allegations made by the Complainant in the Complaint constitute prima facie evidence that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent did not file any response and did not seek to demonstrate any rights or legitimate interests in the disputed domain name. In view of the above, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name, and that the Complainant has therefore satisfied the second element of the Policy. D. Registered and Used in Bad Faith The Complainant has provided arguments and evidence to demonstrate that the disputed domain name has been registered and is being used in bad faith. The Complainant’s JCDECAUX trademark predates the registration of the disputed domain name by 15 years.The Complainant contends that bad faith can be concluded because of the use of the JCDECAUX trademark in the disputed domain name. According to the Complainant’s submission it resolves to a website which had contents referring to financial debts and possible contacts for discussion with lawyers, mentioning also the place of Nagoya. Finally, the Complainant states that the trademark JCDECAUX is only known in relation to the Complainant according to the Google searches. Thus, it is submitted that it is inconceivable that the choice of the disputed domain name by the Respondent was made independently of knowledge of the Complainant’s trademarks. Given the fame of JCDECAUX trademark and the arguments and evidence of the case, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith. Therefore, the Panel finds that the Complainant has satisfied the third element of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <jcdecauxna.mobi>, be transferred to the Complainant Gabriela Paiva Hantke Sole Panelist Date: December 2, 2015
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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