Westmore · UDRP DecisionCd-jcdecaux.com
The Panel ordered transfer of <cd-jcdecaux.com>. It found the domain confusingly similar to the Complainant’s JCDECAUX trademark because it incorporated the entire mark with only the prefix “cd-”. The Respondent was neither authorized nor commonly known by the domain, and its use for a Chinese-language gambling website did not establish rights or legitimate interests. Based on the mark’s distinctiveness, global use, public advertising in China, and the domain’s composition, the Panel inferred that the Respondent knew of the Complainant’s rights when registering the domain. The Panel also found that the gambling-related use was disruptive to the Complainant’s business.
The timeline behind cd-jcdecaux.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind cd-jcdecaux.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The decision illustrates how incorporation of a distinctive mark in full, coupled with an unrelated gambling use and no demonstrated authorization or legitimate connection, can support findings under all three UDRP elements. It also shows that uncertainty over whether the registrant directly controls destination content does not necessarily prevent a panel from treating the registrant as responsible for the content to which the domain resolves.
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. Zhangdongkai Case No. D2019-1129 1. The Parties The Complainant is Jcdecaux SA, France, represented by Nameshield, France. The Respondent is Zhangdongkai, China. 2. The Domain Name and Registrar The disputed domain name <cd-jcdecaux.com> is registered with Xin Net Technology Corp. (the “Registrar”). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2019. On May 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 2019, 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 May 27, 2019 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 May 28, 2019. On May 27, 2019, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On May 28, 2019, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. 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, in English and Chinese, of the Complaint, and the proceedings commenced on June 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2019. The Center appointed Joseph Simone as the sole panelist in this matter on July 4, 2019. 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 a global outdoor advertising company active in the three principal segments: street furniture, transport advertising, and billboards. It has more than one million advertising panels at airports, rail and metro stations, shopping malls, as well as on billboards and street furniture. The Complainant is part of a group listed on the Premier Marché of the Euronext Paris Stock Exchange and is part of Euronext 100 Index. It operates in more than 80 countries and 4,030 cities and generated revenue of EUR 3,619 million in 2018. The Complainant is the owner of an international trademark registration for JCDECAUX, International Registration No. 803987, which was registered on November 27, 2001, and was extended to several countries, including China, in Classes 6, 9, 11, 19, 35, 37, 38, 39, 41 and 42. It also operates a website at the following domain name incorporating its trademark <jcdecaux.com>. The disputed domain name <cd-jcdecaux.com> was registered on May 15, 2019 by the Respondent. It currently resolves to a Macau gambling website. 5. Parties’ Contentions A. Complainant Identical or confusingly similar The Complainant contends that the disputed domain name is identical or confusingly similar to the mark JCDECAUX in which it has rights. The addition of the acronym “CD” and a dash to the trademark is insufficient to avoid a finding of confusing similarity and the addition of the generic Top-Level Domain does not change the overall impression of the designation as being connected to the Complainant. Rights or legitimate interests The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons. The Respondent is not known in the WhoIs database by the disputed domain name, which can be taken to show that the Respondent is not commonly known by the disputed domain name. The Respondent is not related in any way to the Complainant, nor licensed or authorized by the Complainant to use its trademark JCDECAUX. Registered and used in bad faith The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. The disputed domain name is confusingly similar to its trademark JCDECAUX, which previous UDRP panels have determined to be well known. Given its distinctiveness and reputation, the Complainant believes the Respondent had full knowledge of the trademark when it registered the disputed domain name. The disputed domain name did not resolve to an active website at the time of the Complainant’s review, and the Complainant contends that it would not be possible to conceive of any plausible actual or contemplated active use which would be legitimate, as it would constitute passing off, infringement of consumer protection legislation and / or trademark infringement. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Procedural Issues In accordance with paragraph 11 of the Rules: “[…] the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” In this case, the language of the Registration Agreement is in Chinese. However, the Complainant filed the Complaint in English and requested that English be the language of the proceeding as it is the most widely used language in international relations, the disputed domain name is in Roman characters (“ASCII”) and is confusingly similar to the Complainant’s trademark. In addition, to initiate the Complaint in Chinese, the Complainant would have had to retain specialized translation services at a cost likely higher than the overall cost of the proceedings. The Panel agrees that requiring the Complainant to translate the Complaint would cause undue burden and delay. As the disputed domain name resolves to a Chinese-language website, it is unclear whether the Respondent understands the English language. However, the Respondent was notified in both English and Chinese regarding the nature and the specifics of the proceeding and issue of language and did not express a language preference or submit a Response. Given this and noting the aim of conducting proceedings with due expedition and in a cost-efficient manner, the Panel will proceed in English. 6.2 Substantive Issues A. Identical or Confusingly Similar Under the first element of the Policy, the Complainant must prove that the disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has rights (paragraph 4(a)(i) of the Policy). The Complainant has submitted evidence of its international trademark registration No. 803987 and its country designations for the mark JCDECAUX. This satisfies the requirement that the Complainant possesses rights in the trademark. The test for identity or confusing similarity involves a side-by-side comparison of the disputed domain name with the trademark. A domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold test ( Britannia Building Society v. Britannia Fraud Prevention , WIPO Case No. D2001-0505 ; V&S Vin & Sprit AB v. Ooar Supplies , WIPO Case No. D2004-0962 ). In this case, the disputed domain name <cd-jcdecaux.com> clearly incorporates the entirety of the Complainant’s trademark JCDECAUX with the addition of the letters “cd” to the front of the mark, separated by a hyphen. The addition of these two letters does not detract from the confusing similarity to the Complainant’s mark, particularly given that they are separated by a hyphen. Accordingly, the Panel finds the disputed domain name is confusingly similar to the Complainant’s mark, and the first requirement of the UDRP is satisfied. B. Rights or Legitimate Interests Under the second element, the Complainant must demonstrate that the Respondent should be deemed as having no rights or legitimate interests in respect of the disputed domain name that is the subject of the Complaint (paragraph 4(a)(ii) of the Policy). The Respondent is not authorized, affiliated with or licensed by the Complainant. Nor is there any evidence to suggest that the Respondent “zhangdongkai” is commonly known by the disputed domain name. In light of this, it is highly unlikely that any use of the disputed domain name would be bona fide use. The disputed domain name currently resolves to a Chinese-language page of gambling advertisements purporting to be operated by “Macau Crown Navigation, composed of 12 of Asia’s most authoritative gaming companies”. The page also refers to the “Gaming Inspection and Coordination Bureau Macao SAR” and depicts a logo presumably associated with this entity. A link to the operator’s “business licence” instead resolves to what purports to be a grant contract between the government of Macao, China, and an entity called “Bo Jin Ba Entertainment City., Co.”. The legitimacy of this content, including the entities referred to therein and any relationship between them, is unclear. It is also unclear whether the page is controlled by the Respondent or a third-party; but in any case, the Respondent is responsible for the content that appears on any website to which the disputed domain name resolves. Based on the above facts, the Panel concludes there is no legitimate reason for the Respondent to have registered the disputed domain name. Accordingly, the use of the disputed domain name does not vest any rights or legitimate interests in the Respondent and the second element is satisfied by the Complainant. C. Registered and Used in Bad Faith The Complainant must prove that the disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy). A strong inference of bad faith can arise where the Respondent “knew or should have known” of the Complainant’s trademark rights ( Volkswagen AG v. Jan-Iver Levsen , WIPO Case No. D2015-0069 ; Yahoo! Inc. v. Yahoo-Asian Company Limited , WIPO Case No. D2001-0051 ). In this case, the disputed domain name clearly contains the Complainant’s trademark with only the addition of two letters which are separated from the mark by a hyphen. Given the high distinctiveness of the Complainant’s mark, the fact that it is in Roman lettering, is used globally and appears on public advertising including in China, the Panel infers that the Respondent had actual knowledge of the Complainant’s rights when registering the disputed domain name. In addition, as demonstrated above, the Respondent has established no rights or legitimate interests in the use of the disputed domain name. Consumers could easily end up at the disputed domain name given the close similarity to the website which the Complainant operates at “www.jcdecaux.com” and the use of the disputed domain name for a gambling website is disruptive to the Complainant’s business. 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 <cd-jcdecaux.com> be transferred to the Complainant. Joseph Simone Sole Panelist Date: July 18, 2019
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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