The Complainant is JC Decaux SA of Plaisir, France, represented by Nameshield, France.
The Respondent is Salum Ally of Dar es Salaam, United Republic of Tanzania. 2. The Domain Name and Registrar
The disputed domain name is registered with Extreme Web Technologies. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 28, 2015. On October 28, 2015, the Center transmitted by email to tzNIC a request for registrar verification in connection with the disputed domain name. On November 6, 2015, tzNIC 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 for .TZ (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy for .TZ (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 7, 2015.
The Center appointed Zoltán Takács as the sole panelist in this matter on December 15, 2015. 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.
The language of this administrative proceeding is English, that being the language of the registration agreement. 4. Factual Background
Founded in 1964, the JC Decaux SA is the worldwide leading outdoor advertising company. JC Decaux SA operates in 3700 cities in 60 countries and employs 12,000 people. JC Decaux SA is present in all three principal segments of the outdoor advertising market: street furniture, transport advertising and billboard.
The Complainant owns the following trademark registrations for the purpose of this proceeding:
- International Trademark Registration No. 803987 for JCDECAUX registered on November 27, 2001 in numerous countries for goods and services in classes 6, 9, 11, 19, 20, 35, 37, 38, 39, 41 and 42 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks (the "Nice Classification");
- Community Trademark Registration No. 004961454 for JCDECAUX, registered on April 12, 2007 for goods and services in classes 6, 9, 12 and 39 of the Nice Classification.
The Complainant, among others, owns domain name registrations for since June 23, 1997, since August 20, 2001 and since November 19, 2001.
The disputed domain name was registered on September 17, 2015.
According to a October 27, 2015 dated screenshot, the website under the disputed domain name featured the website of JP Decaux Tanzania Limited, which claimed to be the number one outdoor advertising company in Tanzania.
At the time of rendering this administrative decision the disputed domain name was not used in connection with an active website. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its JCDECAUX trademarks, replacing only the "c" with the letter "p".
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant also contends that the disputed domain name was registered and is being used in bad faith, since it pointed to a website with content competing with the business model developed by the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Panel notes that the Policy is substantially similar to the Uniform Domain Name Resolution Policy ("UDRP") and, as such the Panel has drawn on authority concerning the UDRP, as has the Complainant.
According to paragraph 15(a) of the Rules "a Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
It has been a consensus view in UDRP panel decisions that a respondent's default does not automatically result in a decision in favor of the complainant. See paragraph 4.6 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
According to paragraph 4(a) of the Policy in order to succeed on the complaint a complainant must prove each of the three following elements, namely that;
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent and registrant of the disputed domain name has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been a consensus view among the UDRP panels that if the complainant owns a relevant trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced sufficient evidence that it holds registered rights in the trademark JCDECAUX, and for the purpose of this proceeding, the Panel establishes that the Complainant's International Trademark Registration No. 803987 for JCDECAUX and the Community Trademark Registration No. 004961454 for JCDECAUX satisfy the requirement of having trademark rights for the purpose of the Policy.
Having determined that the Complainant has trademark rights in the JCDECAUX mark, the Panel next assessed whether the disputed domain name is identical or confusingly similar to the JCDECAUX mark of the Complainant.
According to paragraph 1.2 of the WIPO Overview 2.0, in order to satisfy the threshold test for identity or confusing similarity under the Policy, the relevant trademark would generally need to be recognizable as such within the domain name and the applicable Top-Level suffix in the domain name would usually be disregarded under the confusing similarity test, as it is a technical requirement of registration.
The only element in the disputed domain name other than the country-code Top-Level Domain ("ccTLD") "." suffix – which is usually disregarded under the confusing similarity test – is the inherently distinctive JCDECAUX trademark of the Complainant. Although there is one letter difference between the two names – letter "c" is replaced with the letter "p" – these two names are too proximate, both visually and phonetically, they appear confusingly similar.
The Panel finds that the disputed domain name on its face is confusingly similar to the JCDECAUX trademark of the Complainant and that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondent's rights or legitimate interest to the domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the Respondent has used, or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or services 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 customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established rights in the JCDECAUX trademark.
The Complainant never authorized the Respondent to use its JCDECAUX trademark in any way, and the Complainant's prior rights in the JCDECAUX trademark long preceded the date of registration of the disputed domain name.
It has been a consensus view among UDRP panels, that although the burden of proof rests with the complainant, this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent.
If a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production then shifts to the respondent.
The Respondent failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant's prima facie case.
On the basis of all these facts and circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which may be indicative of registration and use in bad faith, out of which the most relevant in the present case is paragraph 4(b)(iv).
Paragraph 4(b)(iv) of the Policy provides that it shall be evidence of the registration and use of the domain name in bad faith for the purpose of the paragraph 4(a)(iii) of the Policy if by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location.
The Complainant, named after its founder Jean-Charles Decaux, became world leader in outdoor advertising long before the Respondent obtained the disputed domain name, which dominant element is Mr. Decaux's family name.
The Respondent linked the disputed domain name to a competing website with the almost identical content to that of the Complainant: airport, billboard, street furniture and transport advertising and claimed to be the number one outdoor advertising company in Tanzania.
All these facts and circumstances are in the view of this Panel clear indication that the Respondent obtained the disputed domain name to create a likelihood of confusion with the Complainant's JCDECAUX trademark and intentionally attract for commercial gain Internet users to its website under the disputed domain name, to benefit commercially from the notoriety and worldwide recognition of the Complainant trademark. This clearly represents bad faith registration and falls within paragraph 4(a)(iii) of the Policy.
At the time of rendering this administrative decision the Respondent was passively holding the disputed domain name; it did not resolve to any website.
According to paragraph 3.2 of the WIPO Overview 2.0, the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.
The Respondent had most likely been aware of the Complainant's worldwide known trademark when obtaining the disputed domain name. The Respondent also had an opportunity to come forward with an explanation surrounding registration and subsequent use of the disputed domain name, but it defaulted.
Lack of any response of the Respondent, along with all the facts and circumstances relating to registration and subsequent use of the disputed domain name discussed above in view of this Panel amount to both registration and use of the domain name in bad faith.
The Panel finds that paragraph 4(a)(iii) is satisfied. 7. Decision
For all 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, , be transferred to the Complainant.
Zoltán Takács
Sole Panelist
Date: December 23, 2015
Full & Egal Universal Law Academy