WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
JCDECAUX SA v. whois privacy / DEPARTEMENT juridique, JCDECAUXSA DEPARTEMENT juridique
Case No. D2017-2051
1. The Parties
The Complainant is JCDECAUX SA of Plaisir, France, represented by Nameshield, France.
The Respondent is whois privacy of Taipei, Taiwan Province of China / DEPARTEMENT juridique, JCDECAUXSA DEPARTEMENT juridique of Taipei, Taiwan Province of China.
2. The Domain Name and Registrar
The disputed domain name <jcdecaux.taipei> is registered with Net-Chinese Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2017. On October 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 23, 2017, 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 November 1, 2017, 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 November 2, 2017.
On November 1, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on November 2, 2017. The Respondent did not reply by the specified due date.
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, and the proceeding commenced on November 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 1, 2017.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on December 12, 2017. 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 company incorporated in France, and is a global leader in outdoor advertising, operating its business under the trade mark JCDECAUX (the “Trade Mark”) since 1964.
The Complainant is the owner of several registrations in jurisdictions around the world for the Trade Mark, including international registration No. 803987, with a registration date of November 27, 2001; and international registration No. 888494, with a registration date of April 20, 2006.
The Respondent is apparently an entity located in Taiwan Province of China.
C. The Disputed Domain Name
The disputed domain name was registered on October 18, 2017.
D. The Website at the Disputed Domain Name
The disputed domain name does not resolve to an active website.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar or identical to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the Parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. However, paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that the language of the proceeding be English, on the grounds:
1. English is the language most widely used in international relations and is one of the working languages of the Center;
2. The disputed domain name is formed by words in Roman characters (ASCII);
3. In order to proceed in Chinese, the Complainant would have to retain specialised translation services at a cost very likely to be higher than the overall cost of this proceeding;
4. The Complaint is written in English but the Center informed the Respondent in Chinese and afforded the Respondent the opportunity to respond in Chinese.
The Respondent, having received the Center’s communication regarding the language of the proceeding in both Chinese and English, did not make any submissions regarding the language of the proceeding. Having received notice of the proceeding in both Chinese and English, the Respondent chose not to file a response.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
There is no evidence before the Panel to demonstrate the likely possibility that the Respondent is conversant in English. However, in light of the Respondent’s decision to take no part in this proceeding, the Panel considers it would be inappropriate to conduct the proceeding in Chinese, which would necessarily involve extra costs on the part of the Complainant in translating the Complaint and Annexures into Chinese, and would delay the resolution of this proceeding.
In all the circumstances, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
6.2 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain name incorporates the entirety of the Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 1.7). Excluding the Top-Level Domain “.taipei”, the disputed domain name is identical to the Trade Mark.
The Panel therefore finds that the disputed domain name is identical to the Trade Mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name does not resolve to an active website.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and therefore finds that the requirements of paragraph 4(a)(ii) are met.
C. Registered and Used in Bad Faith
Given the notoriety of the Complainant and of its Trade Mark, the lack of any explanation from the Respondent, and the passive holding of the disputed domain name, the Panel has no hesitation in concluding the requisite element of bad faith has been made out. The Panel considers it is inconceivable the Respondent was not aware of the Trade Mark at the time it registered the disputed domain name.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith.
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 <jcdecaux.taipei> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: December 26, 2017