WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jcdecaux SA v. chenglong li

Case No. D2019-2871

1. The Parties

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

The Respondent is chenglong li, China.

2. The Domain Name and Registrar

The disputed domain name <jcecaux.com> is registered with Jiangsu Bangning Science & technology Co. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2019. On November 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 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 November 25, 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 November 26, 2019.

On November 25, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on November 26, 2019. 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 of the Complaint, and the proceedings commenced on December 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2020.

The Center appointed Douglas Clark as the sole panelist in this matter on January 20, 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

The Complainant is a leading outdoor advertising company worldwide since 1964. The Complainant has been offering solutions that combine urban development and the provision of public services for more than 50 years in over 80 countries. The Complainant’s group is listed on the Premier Marché of the Euronext Paris stock exchange and is part of the Euronext 100 index. The Complainant employs a total of 13,030 people and its group is present in more than 80 different countries and 4,030 cities and has generated revenues of EUR 3,619 million in 2018.

The Complainant is the owner of various JCDECAUX trademarks in the world, including French trademark no. 3068231 registered on December 1, 2000 in classes 6, 9, 11, 16, 19, 20, 35, 37, 38 and 42; European Union trademark no. 002238038 registered on February 26, 2003 in classes 35, 37, 38 and 42; international trademark no. 972204 registered on June 19, 2008 in classes 6, 9, 11, 20, 35, 37, 38 and 42 and international trademark no. 803987 registered on November 27, 2001 in classes 6, 9, 11, 19, 20, 35, 37, 38, 39, 41 and 42.

The Complainant is also the owner of a large domain names portfolio, including the wording JCDECAUX, such as <jcdecaux.com> registered since June 23, 1997.

The Respondent is an individual based in China.

The disputed domain name was registered on November 20, 2019. The disputed domain name was inactive at the time of the filing of the complaint. At the day of Notification of Complaint the disputed domain name resolved to a page that has links to various online gambling platforms.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant contends that the disputed domain name <jcecaux.com> and the Complainant’s JCDECAUX trademark are confusingly similar. Reliance is made on three cases where the previous UDRP panels have confirmed the Complainant’s rights over the term “Jcdecaux”.

The Complainant submits that this is a clear case of “typosquatting” i.e. the disputed domain name contains an obvious misspelling of the Complainant’s JCDECAUX trademark. The omission of the letter “D” in the word “Jcdecaux” and use of the generic Top-Level Domain (“gTLD”) “.com” do not change the overall impression of the designation as being connected to the Complainant’s JCDECAUX trademark, and are not sufficient to affect the finding that the disputed domain name is confusingly similar to the Complainant’s JCDECAUX trademark. The Complainant submits that slight spelling variations do not prevent the disputed domain name from being confusing similar to the Complainant’s trademark.

No Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name and it is not related in any way with the Complainant. The Complainant submits that it does not carry out any activity nor has any business with the Respondent. Further, it has never grant license or authorization to the Respondent to use the Complainant’s JCDECAUX trademark or apply for registration of the disputed domain name.

The Complainant submits the disputed domain name was inactive at the time of filing the complaint and contends that the Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy 4(c)(i) or (iii).

Registered and Used in Bad Faith

The Complainant submits that the disputed domain name is confusing similar to the Complainant’s JCDECAUX trademark. The Complainant contends that given its fame the Respondent has registered the disputed domain name with full knowledge of the Complainant’s JCDECAUX trademark.

The Complainant submits that the Respondent has registered the disputed domain name in order to create a direct affiliation with the Complainant and its business in breach of paragraph 4(b)(iv) of the Policy. Further, the Complainant contends that the disputed domain name seeks to take advantage of the situation where Internet users may make a typographical error.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the proceedings

The language of the Registration Agreement is in Chinese.

The Complainant requested the language of the proceedings be in English on that grounds that (i) English language is the language most widely used in international relations and is one of the working languages of the Center; (ii) the disputed domain name is formed by words in Roman characters (ASCII) and not in Chinese script; (iii) the disputed domain name is confusingly similar to the Complainant’s JCDECAUX trademark; and (iv) in order to proceed in Chinese, the Complainant would have had to retain specialized translation services at a cost very likely to be higher than the overall cost of these proceedings and the use of Chinese in this case would therefore impose a burden on the Complainant which must be deemed significant in view of the low cost of these proceedings.

The Respondent did not respond to this request.

Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, 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.”

The Center made a preliminary determination to:

1) accept the Complaint as filed in English;

2) accept a Response in either English or Chinese;

3) appoint a Panel familiar with both languages mentioned above, if available.

The final determination of the language of the proceedings lies with this Panel.

The Respondent did not respond to the Center’s preliminary determination.

This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceedings “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.

As set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delays and expense. This factor leads the Panel to determine to follow the Center’s preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English.

6.2 Substantive issues

A. Identical or Confusingly Similar

The disputed domain name is only a slight misspelling (i.e. the omission of letter “D”) of the Complainant’s JCDECAUX”mark. The gTLD “.com” should be disregarded under the first element of the confusing similarity test. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0, section 1.11). The disputed domain name is therefore confusingly similar to the Complainant’s registered JCDECAUX trademark.

The first element of paragraph 4(a) of the Policy is therefore satisfied.

B. Rights or Legitimate Interests

The Respondent has not responded to the Complaint to assert any rights or legitimate interests.

Section 2.1 of the WIPO Overview 3.0 provides:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name.

The Respondent has no business or any kind of relationships (i.e. licensor, distributor) with the Complainant. Considering the absence of a response by the Respondent to the Complainant’s contentions and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.

The second element of paragraph 4(a) of the Policy is therefore satisfied.

C. Registered and Used in Bad Faith

Based on the evidence, the Panel has no hesitation in finding that the disputed domain name <jcecaux.com> was registered in bad faith and is being used in bad faith.

The Panel is satisfied that the Respondent must have known the Complainant’s well known JCDECAUX trademark when it registered the disputed domain name.

The fact that the disputed domain name did not resolve to an active page at the time of filing the complaint does not preclude a finding that it has been used in bad faith. It is well established that passive use or non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. (WIPO Overview 3.0, section 3.3). See also Telstra Corporation Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003.

In fact, after filing of the complaint, the disputed domain name did resolve to a website advertising online gambling services. The disputed domain name is clearly being used to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s JCDECAUX trademark as to the source sponsorship, affiliation, or endorsement of the services of the website in breach of paragraph 4(b)(iv) of the Policy.

Under all the circumstances of this case as described above, the Panel is satisfied that the Respondent registered the disputed domain name with the Complainant’s JCDECAUX trademark and has used the disputed domain name in bad faith.

For the above reasons, the third part of the paragraph 4(a) of the Policy is therefore satisfied.

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 <jcecaux.com> be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: January 30, 2020