The Complainant is JCDECAUX SA, France, represented by Nameshield, France.
The Respondent is XPO Screens B.V., the Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with SIDN through TransIP Group. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2019. On the same day, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On September 9, 2019, SIDN 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 Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 12, 2019. In accordance with the Regulations, article 7.1, the due date for Response was October 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 3, 2019.
The Center appointed Alfred Meijboom as the panelist in this matter on October 9, 2019. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background
Since 1964, the Complainant has been offering solutions that combine urban development and the provision of public services. The Complainant currently has more than 1 million advertising panels in airports, rail and metro stations, shopping malls, on billboards and street furniture. The Complainant is listed on the Premier Marché of the Euronext Paris stock exchange and is part of the Euronext 100 index. Employing more than 13,000 people, the Complainant 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 owns several trademarks, including European Union trademark for the device with registration number 002238038, registered on February 26, 2003, for services in classes 35, 37, 38, and 42, and International Trademark JCDECAUX with registration number 803987, registered on November 27, 2001, designating several European and non-European jurisdictions, but not the Benelux or the European Union.
The Respondent registered the disputed domain name on August 30, 2019, which resolves to an error page without any substantial content. 5. Parties’ Contentions A. Complainant
According to the Complainant the disputed domain name is confusingly similar to the Complainant’s JCDECAUX trademarks, while the substitution of the letter “J” with the letter “W” is not sufficient to escape such a finding of confusing similarity. The Complainant contends that this is a clear case of “typosquatting”, i.e., the disputed domain name contains a deliberate misspelling of the Complainant’s trademark JCDECAUX.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent is not related in any way to the Complainant. The Complainant does not carry out any activity for, nor has any business with the Respondent. Neither a license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademark JCDECAUX, or to apply for registration of the disputed domain name. The Complainant also claims that the disputed domain name is a typosquatted version of the Complainant’s trademark JCDECAUX, which constitutes an attempt to take advantage of Internet users’ typographical errors and can be evidence that a respondent lacks rights and legitimate interests in a domain name. Furthermore, the disputed domain name is inactive, and the Complainant contends that the Respondent did not make any use of the disputed domain name since its registration, and it confirms that the Respondent has no demonstrable plan to use the disputed domain name. It demonstrates a lack of legitimate interests in respect of the disputed domain name.
According to the Complainant, past Uniform Domain Name Dispute Resolution Policy (“UDRP”) panels have confirmed the global notoriety of the trademark JCDECAUX and the Respondent is specialized in communication and media, so that it seems unlikely that the Respondent did not know about the Complainant and its activities. Consequently, the Complainant asserts that there is no doubt that the Respondent has registered the disputed domain name with full knowledge of the Complainant’s trademark JCDECAUX. Moreover, by registering the disputed domain name, which contains an obvious misspelling of the Complainant’s trademark JCDECAUX, the Complainant claims that this was intentionally designed to be confusingly similar with the Complainant’s trademarks. Previous UDRP panels have seen such actions as evidence of bad faith. Furthermore, the Complainant refers to the fact that the disputed domain name points to an error page and the Complainant contends that the Respondent has not demonstrated any activity in respect of the disputed domain name, and it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law. Finally, the Respondent also registered the domain name 1 . Therefore, the Complainant contends that the Respondent bad faith is demonstrated by this pattern of registration. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
As the Respondent has not filed a response, the Panel shall rule on the basis of the Complaint. In accordance with article 10.3 of the Regulations, the Complaint shall in that event be granted, unless the Panel considers it to be without basis in law or in fact.
The Panel notes that, in accordance with article 16.4 of the Regulations, the Center has fulfilled its obligation to employ reasonably available means to achieve actual notice of the Complaint to the Respondent.
Based on article 2.1 of the Regulations, a request to transfer the disputed domain name must meet three cumulative conditions:
a. the disputed domain name is identical or confusingly similar to:
I. a trademark, or trade name, protected under Dutch law in which the Complainant has rights; or
II. a personal name registered in the General Municipal Register (“gemeentelijke basisadministratie”) of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which the Complainant undertakes public activities on a permanent basis; and
b. the respondent has no rights to or legitimate interests in the disputed domain name; and
c. the disputed domain name has been registered or is being used in bad faith. A. Identical or Confusingly Similar
It is established case law that the country code Top-Level Domain “.nl” may be disregarded in assessing the similarity between the trademark(s) on the one hand and the disputed domain name(s) on the other hand (see, e.g., Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008-0008).
According to article 2.1 sub a of the Regulations, the Complainant can only rely on a trademark protected under Dutch law in which the Complainant has rights. Therefore the Complainant cannot rely on its International trademark registration which is not protected under Dutch law, but only on the European Union trademark registration for the device mark identified in paragraph 4 above. The stylized elements of the Complainant’s trademark JCDECAUX are incapable of representation in a domain name and shall be ignored when comparing the disputed domain name to the textual component of the Complainant’s trademark, being JCDECAUX.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark rights in JCDECAUX as they only differ by one letter (the “J” in the Complainant’s trademark is replaced by the letter “W” in the disputed domain name, which letters sound very similar in the Dutch language), which difference does not take away the likelihood of confusion and which the Panel, in view of the other findings below, considers an obvious attempt of the Respondent to take advantage of the Internet user who makes an error when typing in the Complainant’s trademark as a domain name.
Consequently, the Panel finds that the Complainant has satisfied the requirement of article 2.1(a) of the Regulations. B. Rights or Legitimate Interests
Article 2.1(b) of the Regulations requires the Complainant to demonstrate that the Respondent has no rights to or legitimate interests in the disputed domain name. This condition is met if the Complainant makes out a prima facie case that the Respondent has no such rights or legitimate interests and if the Respondent fails to rebut this (see, e.g., Technische Unie B.V. and Otra Information Services v. Technology Services Ltd.,WIPO Case No. DNL2008-0002).
The Panel is satisfied that the Complainant has made such a prima facie case, showing that the Complainant never authorized the Respondent to use or register a domain name incorporating the Complainant’s JCDECAUX trademark, that the Respondent before having any notice of the dispute, has not made demonstrable preparations to use the disputed domain name, and that the Respondent is not commonly known by the disputed domain name.
Noting that the Respondent has not disputed this prima facie case, the Panel finds that the Complainant has satisfied the requirement of article 2.1(b) of the Regulations. C. Registered or Used in Bad Faith
Article 2.1(c) of the Regulations requires the Complainant to show that the disputed domain name was registered and/or is being used in bad faith.
Previous panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (see, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.1.4).2
Given that “JCDecaux” is not a dictionary word and is highly distinctive, and therefore not an obvious choice, the Panel agrees with previous panels that the Complainant’s JCDECAUX trademark has a reputation (e.g. JCDecaux SA v. Whois Privacy Protection Service by / Kusano Tetsuya, WIPO Case No. D2015-1740; JCDecaux SA v. Wang Xuesong, Wangxuesong,WIPO Case No. DCC2017-0003) – according to the Panel, also in the Netherlands – and finds that the Respondent must have had the Complainant’s trademark JCDECAUX in mind when it registered the disputed domain name. This constitutes evidence of bad faith in accordance with article 3.2(a) of the Regulations.
For these reasons the Panel finds that the requirement of 2.1(c) of the Regulations has also been met. 7. Decision
For the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name be transferred to the Complainant.
Alfred Meijboom
Panelist
Date: October 21, 2019
1 A complaint in relation to this domain name is pending, see JCDecaux SA v. XPO Screens B.V., WIPO Case No. D2019-2158.
2 In view of the fact that the Regulations are to an extent based on the UDRP, it is well established that cases decided under both the Regulations and the UDRP are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V.,WIPO Case No. DNL2008-0050).
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