WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION DECATHLON v. Decat Case No. D2008-1523 1. The Parties
The Complainant is DECATHLON, Villeneuve D'Ascq, France, represented internally.
The Respondent is Decat, Domain Administrator, Quebec, Canada. 2. The Domain Name and Registrar
The disputed Domain Name (the “Domain Name”) is registered with R Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2008. On October 7, 2008, the Center transmitted by email to R Corp. a request for registrar verification in connection with the Domain Name at issue. On October 8, 2008, R Corp. 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 (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 5, 2008.
The Center appointed Bernhard Meyer as the sole panelist in this matter on November 19, 2008. 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
The Complainant was created in 1976 in France. It specializes in the conception and retailing of sporting and leisure goods. Ten years later, the Complainant started also penetrating into foreign markets. According to the Complainant, its distribution network today consists of more than 400 stores worldwide.
The Complainant is the owner of the following trademarks:
- DECATHLON, community trademark, registration n° 000262931, filed on May 6, 1996;
- DECATHLON, international trademark, registration n° 436235 filed on March 28, 1978 for Austria, Benelux, Switzerland, Italy, Portugal;
- DECATHLON, international trademark, registration n° 516224 filed on September 22, 1987 for Austria, Bulgaria, Benelux, Switzerland, Czech Republic, Germany, Spain, Croatia, Hungary, Italy, Portugal, Russian Federation, Slovenia, Slovakia, Ukraine, Vietnam, (the then)Yugoslavia;
- DECATHLON international trademark, registration n° 613216 filed in 1993 for Algeria, Albania, Benelux, Austria, Bulgaria, Switzerland, China, Cuba, Czech Republic, Spain, Germany, Croatia, Hungary, Italy, Democratic People's Republic of Korea, Monaco, Morocco, Poland, Portugal, Romania, Russian Federation, Slovenia, Ukraine, Vietnam etc;
- DECATHLON Canadian registration n° TMA621 073.
In 2002, “DECAT” became a specific concept of sports stores in city centers and shopping malls and the Complainant also protected trademarks DECAT' for sporting accessories and articles in numerous countries:
- DECAT', international registration, n° 790180, filed on May 13, 2002 for Switzerland, China, Czech Republic, Hungary, Monaco, Poland, Russian Federation, Slovakia, Japan;
- DECAT', French registration, n° 013131051, registered on November 13, 2001;
- DECAT', French registration, n° 02 3 141 264, registered on January 11, 2002;
- DECAT', Community registration, n° 002695377, filed on May 13, 2002, registered on October 26, 2006;
- DECAT', Canadian registration, n° TMA619444, registered on September 14, 2004.
The disputed Domain Name was first registered on January 26, 2007. According to the Complaint, the website, on April 4, 2008, contained commercial links related to sports, including the trademark DECAT and DECATHLON (Annex 11). Today, the content of the webpage is different as a recent search by the Panelist revealed. The sporting links have been removed. 5. Parties' Contentions A. Complainant
The Complainant objects to the use of the Domain Name by the Respondent and bases its Complaint on the following grounds:
1. Firstly, the Complainant contends that the disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Domain Name reproduces the trademarks DECAT and is consequently confusingly identical [sic] to the DECAT trademarks.
2. It further argues that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Respondent does not have any legitimate interest since it does not have any intellectual property rights and “decat” is not a generic name.
3. Finally, the Respondent registered (and uses) the Domain Name in bad faith.
The Domain Name has been first registered on January 26, 2007. A warning letter has been sent by email and registered letter to the Respondent but the Complainant never received any response and the Respondent pursued its infringing use of the website, reproducing on its website DECATHLON trademarks.
The Respondent is paid for each Internet user click on the commercial link on the website “www.”. Consequently, the more attractive and famous the Domain Name is the more money it will generate for the Respondent.
Hence, the Respondent knowing about the trademark rights of the Complainant intentionally used the concerned brands in the field of sport to its own benefit. B. Respondent
The Respondent did not reply to the Complainant's contentions. Therefore, the Panel bases its findings on the facts as submitted by the Complainant, including the appearance of the domain name's website as of today. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following three elements in order to succeed in an administrative proceeding. Thus, for the Complainant to succeed, it must prove all of the three elements under the Policy.
(i) respondent's domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent's domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Domain Name reproduces the trademark DECAT' almost in its entirety and may easily be confused with the Complainant's trademark that has become known amongst consumers. There are no distinctive elements added to the trademark in the Domain Name and the lack of an apostrophe is not suitable to eliminate confusion.
Having a domain name which is confusingly similar to a registered trademark is sufficient to meet the requirement established by paragraph 4(a)(i) of the Policy. Therefore, the Panel finds that the Domain Name in dispute is confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests
The Complainant asserts that the Respondent has no right or legitimate interest in the Domain Name. According to paragraph 4(c) of the Policy, the following circumstances can demonstrate rights to or legitimate interests of a respondent in a domain name:
(i) before any notice was given to respondent of the dispute, respondent used, or demonstrably made 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) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even though it has not acquired any trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name.
There is no evidence, before any notice to the Respondent of the dispute, of use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services.
It is not substantiated that the Respondent is commonly known by the Domain Name even though it required no trademark or service mark rights.
The Respondent is actually making a commercial use of the Domain Nam since as stated by the Complainant and not contested by the Respondent, the Respondent is paid for each Internet
user click on the commercial link on the website “www.”.
Therefore, the Respondent lacks rights or legitimate interests in the Domain Name under the Policy and the Panel concludes that the prerequisites of paragraph 4(a)(ii) of the Policy have been proven by the Complainant. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, a domain name has been used and registered in bad faith if:
(i) circumstances indicating that respondent has registered and has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) respondent has 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 respondent has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, 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 complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on its website or location.
The prior knowledge on the part of the Respondent of the Complainant's rights in the trademark concerned is most likely since it is a widely known brand not only for consumers in France but throughout the world as well and because it is registered in Canada, the Respondent's domicile, since the year 2004. It cannot be mere coincidence or innocence that the Respondent chose both a designation similar to the Complainant's trademark in the disputed Domain Name and the trademark associated with a specific product range of the Complainant. (Schneider Electric SA v. Ningbo Wecans Network Technology Co., Ltd., Ningbo Eurosin International Trade Co., Ltd.,WIPO Case No. D2004-0554). Thus, the Panel finds that the Respondent registered the Domain Name in bad faith.
As it comes to the “use” of the Domain Name, there is no evidence of good faith by attracting internet users for commercial gain by means of taking advantage of the widely known brand of “DECAT” and “DECATHLON” respectively. As stated above, the Respondent would appear to earn money for each Internet user click on a commercial link on the website “www.”.
In light of these circumstances, the Panel concludes that the Respondent's holding of the Domain Name satisfies the requirement of paragraph 4(a)(iii) that the Domain Name is “being used in bad faith” by the Respondent. 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 Domain Name be transferred to the Complainant.
Bernhard Meyer
Sole Panelist
Dated: December 1, 2008
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