WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
JCDecaux SA v. Domain Admin, Whois Privacy Corp.
Case No. D2019-2092
1. The Parties
The Complainant is JCDecaux SA, France, represented by Nameshield, France.
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas.
2. The Domain Name and Registrar
The disputed domain name <jcdefraud.com> is registered with TLD Registrar Solutions Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2019. On August 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 29, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 September 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 26, 2019.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on October 11, 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 French corporation founded in 1964 that provides outdoor advertising in more than 80 countries. It is the owner, amongst others, of the European Union trademark registration No. 002238038, filed on May 30, 2001 and registered on February 26, 2003 for the word and device mark JCDECAUX in classes 35, 37, 38 and 42 (Annex 4 to the Complaint).
The disputed domain name <jcdefraud.com> was registered on March 25, 2019 and currently does not resolve to an active webpage. In the past it resolved to a webpage depicting the Complainant’s logo altered to read JCDEFRAUD instead of JCDECAUX also displaying information on the Complainant and its potential involvement in a corruption case.
5. Parties’ Contentions
The Complainant asserts to be the worldwide number one company in outdoor advertising, providing services in more than 80 countries and 4,030 cities, having generated revenues of EUR 3,619 million in 2018 under the JCDECAUX trademark which has already been found well-known in past UDRP cases (JCDecaux SA v. Wang Xuesong, Wangxuesong, WIPO Case No. DCC2017-0003).
The Complainant further asserts that the disputed domain name is confusingly similar to its registered trademark, combining the well-known JCDECAUX mark with the word FRAUD as well as especially targeting the Complainant in view of the reproduction of the Complainant’s logo and display of information related to the Complainant in the webpage that resolved from the disputed domain name.
As to the Respondent’s lack of rights or legitimate interests, the Complainant contends that the Respondent:
(i) is not commonly known by the disputed domain name;
(ii) is not related in any way with the Complainant, not carrying out any activity for, nor having any relationship therewith;
(iii) has not been licensed or granted authorization to make any use of the Complainant’s trademark or to apply for the registration of the disputed domain name; and
(iv) has used the disputed domain name to display false information on the Complainant, intending to cause damage to the Complainant’s business, with accusations and insults;
(v) did not display on the website that resolved from the disputed domain name any disclaimer or legal information;
(vi) has used the Complainant’s logo illegally what demonstrates the Respondent’s illegitimacy to use the disputed domain name; and
(vii) the use of the Complainant’s logo in the webpage that resolved from the disputed domain name demonstrates the lack of rights or legitimate interests of the Respondent on the disputed domain name given that the logo is famous and its use amounts to an attempt to pass off as the Complainant.
Lastly, the Complainant alleges that given the distinctiveness of the Complainant’s trademark and the contents of the website that resolved from the disputed domain name the Respondent registered the disputed domain name with full knowledge of the Complainant’s trademark JCDECAUX. In addition to that, the Complainant asserts that such website displayed fake news in relation to the Complainant so as to tarnish the Complainant’s reputation, characterizing the Respondent’s bad faith in an attempt to disrupt the Complainant’s business.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name:
(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 Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present so as to have the disputed domain name transferred, according to the Policy.
A. Identical or Confusingly Similar
The Complainant has established rights in the JCDECAUX trademark.
The disputed domain name only differs from the Complainant’s trademark in view of the substitution of the consonants “c” and “x” for “fr” and “d”. In addition to that, given the overall facts and circumstances of the case and the reproduction of the Complainant’s logo at the webpage that resolved from the disputed domain name, it appears that the Respondent “registered the [disputed] domain name precisely because it believed that the domain name was confusingly similar to a mark held by the [C]omplainant” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, “WIPO Overview 3.0”, section 1.7).
Given that the disputed domain name contains sufficiently recognizable aspects of the Complainant’s trademark the Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
(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 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 trademark 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 trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In what it relates to the use made of the disputed domain name in connection with a webpage displaying the Complainant’s logo altered to read JCDEFRAUD instead of JCDECAUX also displaying information on the Complainant and its potential involvement in a corruption case, the Panel finds that the Respondent was undoubtfully aware of the Complainant.
The question then lies on whether or not such use made by the Respondent characterizes a legitimate interest to criticize the Complainant or an intent to tarnish the Complainant’s trademark.
Past Panels have, since the beginning of the UDRP, dealt with similar questions, having found that:
“Tarnishment in this context refers to such unseemly conduct as linking unrelated pornographic, violent or drug-related images or information to an otherwise wholesome mark. See, e.g., Nicole Kidman v. John Zuccarini d/b/a Cupcake Party, WIPO Case No. D2000-1415 (January 23, 2001); cf. Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654 (January 31, 2001). In contrast, fair-use criticism, even if libelous, does not constitute tarnishment and is not prohibited by the Policy, the primary concern of which is cybersquatting. Cf. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (September 19, 2000) (protection for genuine criticism sites is provided by Policy’s legitimate interest and bad faith prongs). Claims sounding in commercial libel must be brought in other legal venues (apud Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505).”
More recently, the already quoted WIPO Overview 3.0 summarizes in its section 2.6.3 that “[w]here the domain name is not identical to the complainant’s trademark, but it comprises the mark plus a derogatory term (e.g., <trademarksucks.tld>), panels tend to find that the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is prima facie noncommercial, genuinely fair, and not misleading or false. Some panels have found in such cases that a limited degree of incidental commercial activity may be permissible in certain circumstances (e.g., as “fundraising” to offset registration or hosting costs associated with the domain name and website)”.
The issue then turns to whether or not the Respondent’s use of the disputed domain name is prima facie noncommercial, genuinely fair, and not misleading or false.
From the evidence submitted, the contents of the website appear to collect pieces of news and comments on a potential corruption case involving the Complainant and the city of Prague. The website did not appear to have a commercial intent but clearly evoked the Complainant’s trademark, altering its logo to read JCDEFRAUD.
Such alteration of the Complainant’s logo however does not appear to have been done in a commercial attempt, not being applicable the precedent invoked by the Complainant, whereas in the present case the criticism aspect of the website appears to be evident as from its first page, making a closer precedent, Royal Institution of Chartered Surveyors v. Martin Rushton, WIPO Case No. D2016-0951 where:
“In the present case the Panel notes the following <rics-corruption.com> includes a term (‘corruption’) which in the Panel’s view clearly indicates the likely nature of any linked content as being of a criticism nature and does not impersonate the Complainant. The Respondent’s use is noncommercial. The Respondent as a member of the Complainant has a legitimate interest in complaining about the Complainant. If those complaints are expressed in way which is untrue, meant to tarnish the Complainant’s reputation or libelous or which breaches the Complainant’s rules these are matters the Complainant has to seek remedies for elsewhere – they are not matters this Panel can assess. The Panel considers it would be immediately apparent to any users visiting the Criticism Website that it is not operated by the Complainant. The Respondent has not registered all obvious domain names suitable for the Complainant. It does not seem to the Panel likely that email intended for the Complainant would be directed to the Respondent and the Panel sees no need for the Respondent to place a link to the Complaint on his website – anyone seeking the Complainant’s website could readily find it themselves. All of these factors suggest to the Panel that the Respondent establishes a legitimate interest.”
Given the limited scope of this procedure, the Panel is not in a position to analyze whether or not the contents of the website that resolved from the disputed domain name were/are false or contain “accusations and insults”. Therefore, in view of the evidence submitted the disputed domain name has been used prima facie in connection with a criticism webpage that did not have a commercial attempt or sought to profit from the Complainant’s trademark and goodwill.
The issue of whether or not such information displayed in the website that resolved from the disputed domain name was false information and intended to cause damage to the Complainant’s business, with accusations and insults, is better analyzed at other instances. The Panel notes the limited scope of the UDRP, which is designed to deal with cybersquatting cases. Hence, matters as the ones raised in this proceeding are best dealt with by courts of competent jurisdiction.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent has a legitimate interest with respect to the disputed domain name.
C. Registered and Used in Bad Faith
In view of the finding of a legitimate interest, the Panel does not need to analyze the third element.
For all the foregoing reasons, the Complaint is denied.
Wilson Pinheiro Jabur
Date: October 25, 2019