JCDecaux SA v Sozinho Basilio

WIPO Case No. D2022-4365

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

JCDecaux SA v. Sozinho Basilio

Case No. D2022-4365

1. The Parties

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

The Respondent is Sozinho Basilio, United States of America.

2. The Domain Name and Registrar

The disputed domain name <jcidecaux.com> is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2022. On November 16, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 17, 2022, 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 18, 2022 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 21, 2022.

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 November 22, 2022. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2022.

The Center appointed Adam Samuel as the sole panelist in this matter on December 19, 2022. 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.

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4. Factual Background

The Complainant is a provider of outdoor advertising solutions in a number of countries. The Complainant owns a number of trademarks for the mark JCDECAUX, including the international trademark, number 803987, registered on November 27, 2001. The Complainant registered the domain name <jcdecaux.com> on June 23, 1997 through which it promotes its products.

The disputed domain name was registered on November 14, 2022. The disputed domain name has never resolved to a website.

5. Parties’ Contentions

A. Complainant

The disputed domain name contains an obvious misspelling of the Complainant’s registered trademark that the disputed domain name is connected to the Complainant’s trademark or prevent the likelihood of confusion between the disputed domain name and the Complainant and its trademarks. The extension “.com” must be disregarded for this purpose.

The Respondent is not known as the disputed domain name and has no rights or legitimate interests in the disputed domain name <jcidecaux.com> and is not related in anyway to the Complainant. The Complainant does not carry out any activity for, nor does any business with the Respondent. The Complainant has not granted the Respondent a license or authorization to make any use of the Complainant’s trademark JCDECAUX or apply for the registration of the disputed domain name. Typosquatting is additional evidence that Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not made any use of the disputed domain name since its registration and has no demonstrable plan to use the disputed domain name.

The JCDECAUX trademark is well-known and the Respondent knew about the Complainant’s trademark, which evidences bad faith. The misspelling of the trademark JCDECAUX was intentionally designed to be confusingly similar to the Complainant’s trademark. Typosquatting is a further indication of bad faith

registration and use. 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 in some way.

The fact that MX servers have been configured with respect to the disputed domain name suggests that the disputed domain name may be actively being used for email purposes.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name consists of the Complainant’s distinctive trademark JCDECAUX with the the letter “i” inserted after the first “c” and the generic top-level domain (“gTLD”) “.com”. The gTLD is irrelevant here as it is a standard registration requirement. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

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Section 1.9 of the WIPO Overview 3.0 says:

“A domain name which consists of a common, obvious, or intentional misspelling of a trademark is mark.”

considered by panels to be confusingly similar to the relevant mark for purposes of the first element.
For all these reasons, the Panel concludes that the disputed domain name is confusingly similar to the

Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent is not called “Jcidecaux” or anything similar. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. The Respondent does not appear to have used the disputed domain name for any legitimate purpose. It has, though, configured the MX servers to enable it to send emails using the disputed domain name.

Based on the available record, where the Complainant has made out a preliminary case that the Respondent
lacks rights or legitimate interests, and in the absence of any response on this point, the Panel concludes
that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See

section 2.1 of the WIPO Overview 3.0.

C. Registered and Used in Bad Faith

The insertion of the letter “i” in the reproduction of the Complainant’s trademark in the disputed domain name suggests that this is a typosquatting case.

Section 1.9 of the WIPO Overview 3.0 says:

“Under the second and third elements, panels will normally find that employing a misspelling in this way
signals an intention on the part of the respondent … to confuse users seeking or expecting the complainant.”

The Complainant’s trademark is known worldwide. The Respondent seems to have registered the disputed domain name to confuse Internet users into thinking that either the disputed domain name or emails sent using it were connected to the Complainant. That would be consistent with the configuration of the MX servers.

For all these reasons, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith.

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, <jcidecaux.com> be transferred to the Complainant.

/Adam Samuel/
Adam Samuel
Sole Panelist
Date: December 20, 2022