WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jcdecaux SA v. Contact Privacy Inc. Customer 1247195667 / Muhammad Umar Piprawala

Case No. D2020-1229

1. The Parties

Complainant is Jcdecaux SA, France, represented by Nameshield, France.

Respondent is Contact Privacy Inc. Customer 1247195667, Canada / Muhammad Umar Piprawala, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <jcdecaux.tours> (“Domain Name”) is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2020. On May 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 16, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 19, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 20, 2020.

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 Respondent of the Complaint, and the proceedings commenced on June 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2020.

On June 4, 2020, an individual sent an email communication to the Center claiming that the Domain Name was registered by his son and that he is an employee of Complainant. On June 5, 2020, the Center informed the Parties of the possibility to suspend the proceeding. On June 8, 2020, Complainant requested the suspension the proceeding. On June 8, 2020, the Center confirmed that the administrative proceeding was suspended until July 8, 2020 for purposes of settlement discussions concerning the Domain Name. On June 16, 2020, the Complainant submitted a signed Standard Settlement Form. On June 17, 2020, the Center confirmed that the Standard Settlement Form needed to be signed by the named Respondent and sent from the email address provided by the Registrar. From July 6, 2020 to July 13, 2020, the Center sent three email communications to Complainant to which Complainant replied on June 8, 2020 and July 15, 2020. A Standard Settlement Form signed by both parties was never forthcoming.

The proceeding was reinstituted as of July 15, 2020 and the new Response due date was July 30, 2020. Respondent did not submit any formal response. Accordingly, the Center notified the Parties that it would proceed to Panel Appointment.

The Center appointed Marina Perraki as the sole panelist in this matter on August 13, 2020. 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

Complainant provides outdoor advertising services since 1964 in more than 80 countries. Per Complaint, Complainant has more than 1,061,630 advertising panels in airports, rail and metro stations, shopping malls, and on billboards and street furniture.

Complainant’s group is listed on the Premier Marché of the Euronext Paris stock exchange and is part of Euronext 100 index. Complainant’s group employs a total of 13,210 people and has generated revenues of EUR 3,890 million in 2019.

Complainant owns several trademark registrations for JCDECAUX including:

- International trademark registration No. 803987, JCDECAUX (word), registered on November 27, 2001 for goods and services in international classes 6, 9, 11, 19, 20, 35, 37, 38, 39, 41, and 42;

- French trademark registration No. 3068231 JCDECAUX (combined), filed on December 1, 2000 for goods and services in international classes 6, 9, 11, 16, 19, 20, 35, 37, 38, and 42; and

- European Union Trade Mark registration No. 2238038 JCDECAUX (figurative), registered on February 26, 2003 for services in international classes 35, 37, 38, and 42.

Complainant is also the owner of a large number of JCDECAUX domain names, such as <jcdecaux.com>, which was registered on June 22, 1997.

The Domain Name was registered on May 12, 2020 and resolves to an inactive page, whereas MX (email) servers are configured.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not formally reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith

A. Identical or Confusingly Similar

The Domain Name incorporates Complainant’s trademark JCDECAUX in its entirety.

The generic Top-Level Domain (“gTLD”) “.tours” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).

The Panel finds that the Domain Name is identical to the JCDECAUX mark of Complainant.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if Respondent has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.

Respondent has not submitted any formal response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.

Respondent has not demonstrated any preparations to use, or has not used the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.

On the contrary, as Complainant demonstrated, the Domain Name resolves to an inactive page.
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith. As recognized, Complainant’s trademark enjoys reputation in the field of outdoor advertising services (JCDecaux SA v. Wang Xuesong, Wangxuesong, WIPO Case No. DCC2017-0003).

Because the JCDECAUX mark had been widely used and registered by Complainant before the Domain Name registration, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple browser search (See Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462).

Furthermore, Respondent could have conducted a trademark search and should have found Complainant’s prior registrations in respect of JCDECAUX trademark (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).

Lastly, as follows from the email communication sent on June 4, 2020, by the apparent father of the Respondent to the Center, claiming that the Domain Name was registered by his son and that he is an employee of Complainant. This further supports knowledge by Respondent of Complainant and its business at the time of registration of the Domain Name, and begs the question why the Domain Name was registered.

The Domain Name currently leads to an inactive website. Previous UDRP decisions have established that the non-use of a domain name does not prevent a finding of bad faith (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003;WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 3.3).

Lastly, per Complainant, MX servers are configured in the Domain Name, which indicates a risk that Respondent potentially uses the Domain Name to create an email address to be used for deceiving purposes (Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj, WIPO Case No. D2017-1225).

Under these circumstances and on balance, the Panel finds that Respondent registered and used the Domain Name in bad faith.

Complainant has established Policy, paragraph 4(a)(iii).

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 Domain Name <jcdecaux.tours> be transferred to Complainant.

Marina Perraki
Sole Panelist
Date: August 27, 2020