The Complainant is JCDecaux SA of Plaisir, France, represented by Nameshield, France.
The Respondent is Wang Xuesong, Wangxuesong of Chongqing, China. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with 22net, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on April 6, 2017. On April 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 7, 2017, 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. On April 11, 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 April 12, 2017. The Respondent did no comment on the language of the proceeding by the specified due date.
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 in English and Chinese, and the proceeding commenced on April 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 10, 2017.
The Center appointed Karen Fong as the sole panelist in this matter on May 16, 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
Founded in 1964, the Complainant is a global leading company in outdoor advertising. It has a presence in the three principal segments of the outdoor advertising market: street furniture, transport advertising and billboard. It now has more than 49,300 screens across 30 countries in airports, rail and metro stations, shopping malls, on billboards and street furniture.
The Complainant is part of a group which is listed on the Premier Marché of the Euronext Paris stock exchange and is part of Euronext 100 index. Employing a total of 12,000 people, the Complainant is present in more than 60 different countries and 3,700 cities and has generated revenues of EUR 2.67 billion in 2013.
The Complainant's services are provided under the trade mark JCDECAUX. It owns trade mark registrations for the JCDECAUX ("the Trade Mark") in many jurisdictions, including:
Trade Mark
Jurisdictions
Registration number
Registration Date
JCDECAUX
International (covering Australia)
888494
April 20, 2006
JCDECAUX
International
803987
November 27, 2001
JCDECAUX
European Union
004961454
April 12, 2007
The Complainant is also the owner of a large domain name portfolio which incorporates the Trade Mark including:
Domain Name
Registration Date
June 23, 1997
March 17, 2003
April 19, 2002
November 19, 2001
March 9, 2000
The Domain Name was registered by the Respondent on September 22, 2015. The Domain Name resolves to a website that offers the Domain Name for sale. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and being used in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and being used in bad faith. 6.2. Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits in Paragraph IV of the Complaint and confirmed in an email of April 12, 2017 that the language of the proceeding should be English. The Complainant contends that it is an international business which operates primarily in English and is not able to communicate in Chinese. The cost of translation services and the inconvenience of having to conduct the proceeding in Chinese impose a disproportionate burden on the Complainant. It would also cause undue delay. The Domain Name is in Latin characters indicating knowledge of the English language.
The Panel accepts the Complainant's submissions regarding the language of the proceeding. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that in any case all of the communications from the Center to the Parties were transmitted in both Chinese and English. There is therefore no question of the Respondent not being able to understand the nature of the proceeding. The Respondent chose not to respond to the Complaint or the language of the proceeding by the specified due date. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding. 6.3. Substantive Analysis A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has registered and unregistered rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine whether the domain name is confusingly similar to the trade mark. The trade mark would generally be recognizable within the domain name. In this case the Domain Name contains the Complainant's Trade Mark in its entirety. The only difference is that the Domain Name has a country code Top-Level Domain ("ccTLD"), ".cc" which is for the Cocos Islands. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the ccTLD as it is viewed as a standard registration requirement.
The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the 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 trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0") that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of production always remaining on the complainant.
The standard of proof required under the UDRP is "on balance". An asserting party needs to establish that it is more likely than not that the claimed fact is true.
The Respondent is not affiliated to the Complainant in any way nor has it been authorised by the Complainant to register and use the Domain Name. It has no independent right to the Domain Name. The offer for sale of the Domain Name which does not appear to have any connection to the Respondent but is instead comprised of a well-known trade mark of another cannot amount to legitimate activity in connection with the Domain Name. The Respondent has also not shown that it is making legitimate noncommercial or fair use of the Domain Name.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant's well-known JCDECAUX trade mark when it registered the Domain Name. It is implausible that it was unaware of the Complainant when it registered the Domain Name. The Complainant is well known through the world including in China where the Respondent is apparently based. The primary significance of the meaning of the word is its reference to the Complainant's trade mark and company name. WIPO Overview Jurisprudential 3.0, paragraph 3.2.2 states as follows:
"Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant's mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant's mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent's claim not to have been aware of the complainant's mark."
The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent's choice of the domain name is also a significant factor to consider (as stated in 3.2.1 of WIPO Jurisprudential Overview 3.0). The Domain Name falls into the category stated above and the Panel finds that registration is in bad faith.
The Domain Name is also used in bad faith. The Domain Name directs to a web page that purports to offer the Domain Name for sale for USD 2,500, a sum that far exceeds its registration cost. This demonstrates that the Domain Name has been used in bad faith. The offer to transfer the Domain Name for sums exceeding the reasonable cost of registration and maintenance falls squarely within the circumstances in paragraph 4(b)(i) of the Policy which is evidence of bad faith. The Respondent has chosen not to challenge these allegations. Considering the circumstances, the Panel considers that the Domain Name is also being used in bad faith.
Accordingly, the Complaint has satisfied the third element of the UDRP. 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 be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: May 31, 2017
Full & Egal Universal Law Academy