WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jcdecaux SA v. Whois Privacy Protection Foundation / Anderson Paul
Case No. D2019-1143
1. The Parties
The Complainant is Jcdecaux SA, France, represented by Nameshield, France.
The Respondent is Whois Privacy Protection Foundation, Netherlands / Anderson Paul, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <usa-jcdecaux.com> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2019. On May 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 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 22, 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 22, 2019.
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 proceedings commenced on May 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 14, 2019.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on June 21, 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 multinational outdoor advertising company with its headquarters in Paris. It results from the evidence provided by the Complainant that the latter owns multiple trademark registrations incorporating its JCDECAUX trademark, including International Registration No. 803987 registered November 27, 2001 for a wide range of goods and services in classes 06, 09, 11, 19, 20, 35, 37, 38, 39, 41 and 42.
The registrar disclosed in its verification response that the disputed domain name <usa-jcdecaux.com> was registered on May 15, 2019. Finally, it results from the Complainant’s documented allegations that the disputed domain name does not resolve to an active website, but was used for sending fraudulent emails.
5. Parties’ Contentions
The Complainant contends to be the world’s most important outdoor advertising company since 1964 who has been offering its services comprising street furniture, transport advertising and billboard in more than 80 countries.
The Complainant provided evidence of a fraudulent email being sent from an email address associated with the disputed domain name ([…] @usa-jcdecaux.com) to the Complainant itself. The email in question was purportedly sent by ‘an employee’ of JCDecaux North America and requested the recipient to disclose some contact details on a third party who provides services to the Complainant.
The Complainant contends that the disputed domain name is identical and/or confusingly similar to the Complainant’s trademark, since it incorporates the trademark JCDECAUX combined with the geographic indication “usa”.
The Complainant further contends that the Respondent has no prior rights or legitimate interests in the disputed domain name. In particular, the Complainant has not licensed or authorised the Respondent to use the JCDECAUX trademark and is not related in any way with the Respondent. In addition, there is no evidence that the Respondent uses the disputed domain name in connection with a bona fide offering of goods or services. To the contrary, according to the Complainant’s non-contested allegations the disputed domain name is solely used for the purpose of hosting an email address which is used for a phishing scheme.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. In particular, the trademark JCDECAUX is well-known so that the Respondent has registered the disputed domain name with full knowledge of the Complainant’s trademark JCDECAUX. Furthermore, the Respondent has used the disputed domain name for a phishing scheme and attempted to pass off as one of the Complainant’s employees to contact the Complainant and obtain undue benefits. According to the Complainant, using a domain name for purposes of phishing or other fraudulent activity constitutes solid evidence of bad faith use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must, first of all, establish rights in a trademark or service mark and, secondly, establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
It results from the evidence provided that the Complainant is the registered owner of International Trademark Registration No. 803987 JCDECAUX registered November 27, 2001 for a wide range of goods and services in classes 06, 09, 11, 19, 20, 35, 37, 38, 39, 41 and 42. This trademark largely predates the creation date of the disputed domain name, which is May 15, 2019.
Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Elliot Elliot, WIPO Case No. D2018-0213; F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt, WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola, WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com, Inc., WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0464). This Panel shares this view and notes that the Complainant’s registered trademark JCDECAUX is fully included in the disputed domain name.
Finally, it is the view of this Panel that the combination of the trademark JCDECAUX with the geographic term “usa” does not avoid the confusing similarity between the disputed domain name and the Complainant’s trademark. The term “usa” is the three-letter country abbreviation for the United States of America. It will therefore be understood as a mere geographic term (see LEGO Juris A/S v. Kamran Khan, WIPO Case No. D2019-0013; BeSweet Creations LLC v. Ahmed Aludayni, WIPO Case No. D2019-0306).
In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark
in which the Complainant has rights.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name:
According to the Complaint, which has remained unchallenged, the Complainant has no relationship in any way with the Respondent and did, in particular, not authorize the Respondent’s use of the trademark JCDECAUX by registering the disputed domain name comprising said mark entirely.
Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.
In addition, it results from the undisputed evidence before the Panel that the disputed domain name is used for sending fraudulent emails. UDRP panels have categorically held that the use of a domain name for illegal activity can never confer rights or legitimate interests on a respondent (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 2.13.1 with further references). In the case at hand, the Complainant submitted substantial evidence of such illegal activities by providing email correspondence sent from an email account under the disputed domain name. This email correspondence has been signed in the name of “JCDecaux North America”. The Panel considers this evidence as sufficient to support the Complainant’s credible claim of illegal respondent activity.
Previous UDRP panels have found that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
One of those circumstances are those specified in paragraph 4(b)(iv), i.e. where the domain name is used to intentionally attempt to attract, for commercial gain, Internet users to the respondent’s website or other online 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.
This Panel approves the approach taken by previous UDRP panels following which the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers (see WIPO Overview 3.0 at section 3.4). As explained under section 6.B. above, it results from the undisputed evidence submitted by the Complainant that the disputed domain name has been used for sending fraudulent emails in the name of the Complainant by using its company name Jcdecaux. In addition, the use of the disputed domain name in such an illegal scheme additionally demonstrates that the Respondent not only knew of the Complainant, its business and marks, but also attempted to pass itself off as the Complainant (see Virgin Enterprises Limited v. Registration Private, Domains by Proxy, LLC / Name Redacted, WIPO Case No. D2018-0645).
Finally, the further circumstances surrounding the disputed domain name’s registration and use confirm the findings that the Respondent has registered and is using the disputed domain name in bad faith. In fact, (1) the Respondent originally used a privacy service hiding its identity and (2) did not provide any response with conceivable explanation of its behavior.
Consequently, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy. The Complainant is therefore deemed to also have satisfied the third element, paragraph 4(a)(iii) of the Policy.
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 <usa-jcdecaux.com> be transferred to the Complainant.
Tobias Malte Müller
Date: July 7, 2019