JCDecaux SE v Fitria Sari Dewi, personal

WIPO Case No. D2025-0092

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION
JCDecaux SE v. Fitria Sari Dewi, personal

Case No. D2025-0092

1. The Parties

Complainant is JCDecaux SE, France, represented by Nameshield, France.

Respondent is Fitria Sari Dewi, personal, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <jcdecauxid.store> (the “Domain Name”) is registered with

CV. Rumahweb Indonesia (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2025. On January 10, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 13, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Domain Data Guard) and contact information in the Complaint. The Center sent an email communication to Complainant on January 15, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint in English on the same day.

On January 15, 2025, the Center informed the parties in Indonesian and English, that the language of the registration agreement for the Domain Name is Indonesian. On January 15, 2025, Complainant requested English to be the language of the proceeding. Respondent did not submit any comment on Complainant’s submission.

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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent in English and Rules, paragraph 5, the due date for Response was February 6, 2025. Respondent sent an email communication to the Center on January 21, 2025. Respondent did not file formal response by the due date, then the Center informed the Parties of the commencement of the panel appointment process.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on February 11, 2025.
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

Since 1964, Complainant has been involved in outdoor advertising, including street furniture, transport advertising and billboard advertising, and now operates in over 80 countries, with over one million advertising panels in airports, metro stations, shopping malls, on billboards and street furniture. It is listed on the Paris stock exchange and currently has over 11,000 employees, generating EUR 3,530 million in 2023.

Complainant owns numerous registered trademarks for the JCDECAUX mark, including International registered trademark number 803987 for the JCDECAUX word mark, registered on November 27, 2001.

Complainant also owns the domain name <jcdecaux.com>, registered since June 23, 1997, and numerous other domain names.

The Domain Name was registered on January 8, 2025, and at the time of filing of the Complaint, resolved to a website offering mobile games, with configured MX servers.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the
Domain Name.

Complainant contends that (i) the Domain Name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith.

In particular, Complainant contends that it has trademark registrations for JCDECAUX, and that Respondent registered and is using the Domain Name with the intention to confuse Internet users looking for bona fide and well-known JCDECAUX products and services.

Complainant notes that it has no affiliation with Respondent, and that Respondent is using the Domain Name as a tool to exploit Complainant’s reputation for its own commercial gain, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Further, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights.

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B. Respondent

Respondent sent an email response to the Center on January 15, 2025, stating that the Domain Name is only used for his legal business in Indonesia. However, Respondent did not formally reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Preliminary Issue: Language of the Proceedings

The Rules, in paragraph 11(a), 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 proceedings 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 proceedings.

Complainant submitted its original Complaint in English. In its email dated January 15, 2025, and amended
Complaint, Complainant submitted its request that the language of the proceedings should be English.
According to the information received from the Registrar, the language of the Registration Agreement for the
Domain Name is Indonesian. Respondent did not submit any comment on Complainant’s submission.

Complainant submits that English is the language most widely used in international relations; that it would be burdensome, costly, and result in delay, if Complainant is required to translate the Complaint into Indonesian; and that the Center has informed the Respondent in Indonesian and afforded Respondent the opportunity to respond.

In exercising its discretion to use a language other than that of the Registration Agreement for the Domain Name, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time, and costs.

The Panel accepts Complainant’s submissions regarding the language of the proceedings. The Panel also notes that the Domain Name does not have any specific meaning in the Indonesian language, and that the Domain Name is formed using Latin characters, contains Complainant’s JCDECAUX trademark in its

entirety, the Domain Name directed to a website that provided content that was partially in English. The Panel further notes that the Center notified the Parties in Indonesian and English of the language of the proceedings as well as notified Respondent in Indonesian and English of the Complaint. Respondent chose
not to comment on the language of the proceedings, nor did Respondent choose to file a Response in
Indonesian or English.

Having considered all the circumstances of this case, the Panel determines that English be the language of the proceedings.

6.2. Substantive Issues

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i)        the Domain Name is identical or confusingly similar to a trademark or service mark in which

Complainant has rights;

(ii)       Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii)      the Domain Name was registered and is being used in bad faith.

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Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”) states that failure to respond to the complainant’s contentions would not by itself
mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an
admission that the complainant’s claims are true.

Thus, although in this case, Respondent has failed to formally respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence of its rights in the JCDECAUX trademarks, as noted above under section 4. Complainant has therefore proven that it has the requisite rights in the JCDECAUX trademarks.

With Complainant’s rights in the JCDECAUX trademarks established, the remaining question under the
first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain
(“TLD”) in which it is registered (in this case, “.store”), is identical or confusingly similar to Complainant’s
trademark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO
Case No. D2010-0842.

Here, the Domain Name is confusingly similar to Complainant’s JCDECAUX trademarks. The JCDECAUX trademark is recognizable in the Domain Name.

In particular, the Domain Name’s inclusion of Complainant’s JCDECAUX trademark in its entirety, with an addition of the term “id” which is generally known to be an abbreviation for the term “identification” or the country “Indonesia”, does not prevent a finding of confusing similarity between the Domain Name and the JCDECAUX trademark. See section 1.8 of the WIPO Overview 3.0.

Thus, the Panel finds that Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must make a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes out such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with relevant evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its JCDECAUX trademarks, and does not have any rights or legitimate interests in the Domain Name. In addition, Complainant asserts that Respondent is not authorized to promote Complainant’s services and is not related to Complainant. Respondent is also not known to be associated with the JCDECAUX trademarks and there is no evidence showing that Respondent has been commonly known by the Domain Name.

In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or
services or a legitimate noncommercial or fair use. Rather, at the time of the filing of the Complaint, the
Domain Name resolved to a website that offered mobile games. The Domain Name had also been set up
with MX records, which enabled it to be actively used for email purposes. For example, Respondent listed
[…]@jcdecauxid.store as one of its email addresses. This email is also listed on the website.

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Thus, such use by Respondent does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name.

Moreover, the nature of the Domain Name, incorporating the entirety of Complainant’s trademark
JCDECAUX with the term “id” – a common abbreviation for “identification” or the country “Indonesia”, cannot
be considered fair use as it may suggest an affiliation with the Complainant that does not exist. See
WIPO Overview 3.0, section 2.5.1.

Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. The Respondent sent an informal email to the

Center indicating that he only used the disputed domain name for his legal business in Indonesia. However, the Respondent did not provide any supporting evidence for his argument.

Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain

Name, and Complainant has met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain
Name in bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the
purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is
the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration

in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from
reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such

conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a

competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet
users to your website or other online location, by creating a likelihood of confusion with the complainant’s
mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or

service on your website or location.”

The Panel finds that Complainant has provided ample evidence to show that registration and use of the
JCDECAUX trademarks long predate the registration of the Domain Name. Complainant is also well
established and known. Indeed, the record shows that Complainant’s JCDECAUX trademarks and related
products and services are widely known and recognized. Therefore, the Panel is of the view of that
Respondent was aware of the JCDECAUX trademarks when it registered the Domain Name.
See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods
Limited, WIPO Case No. D2016-1973.

The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; and BellSouth Intellectual Property

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Corporation v. Serena, Axel, WIPO Case No. D2006-0007.

Further, the registration of the Domain Name similar to Complainant’s JCDECAUX trademark and official domain name <jcdecaux.com> suggests Respondent’s actual knowledge of Complainant’s rights in the JCDECAUX trademarks at the time of registration of the Domain Name and its effort to opportunistically capitalize on the registration and use of the Domain Name.

Moreover, Respondent registered and is using the Domain Name to confuse and mislead consumers looking
for bona fide and well-known JCDECAUX products and services of Complainant or authorized partners of
Complainant.

In particular, the evidence provided by Complainant indicated that at the time of filing of the Complaint, the Domain Name resolved to a website that offered mobile games. The Domain Name had also been set up with MX records, which enabled it to be actively used for email purposes. For example, Respondent listed […]@jcdecauxid.store as one of its email addresses. This email is also listed on the website.

The use of the JCDECAUX mark in the Domain Name is intended to capture Internet traffic from Internet users who are looking for Complainant’s products and services. Therefore, by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s

website by creating a likelihood of confusion with Complainant’s JCDECAUX mark as to the source,
sponsorship, affiliation, or endorsement of Respondent’s website. All these actions may result in tarnishing

Complainant’s reputation and goodwill in the industry.

At the time of the Decision, the Domain Name resolved to an inactive webpage, which does not change the
Panel’s finding of Respondent’s bad faith under the circumstances of this case.

Further, the Panel also notes the failure of Respondent to submit a formal Response, or to provide any evidence of actual or contemplated good-faith use, its use of what appeared to be false contact information.

Accordingly, the Panel finds that Respondent registered and is using the Domain Name in bad faith and

Complainant succeeds under the third element of paragraph 4(a) of the Policy.

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 <jcdecauxid.store> be transferred to Complainant.

/Kimberley Chen Nobles/
Kimberley Chen Nobles
Sole Panelist
Date: February 20, 2025