The Complainant is Decathlon of Villeneuve D’Ascq, France.
The Respondent is Tents Direct of Chesterfield, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2010. On June 17, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On June 17, 2010, Tucows Inc. 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” 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2010. The Response was filed with the Center on July 11, 2010.
The Center appointed Torsten Bettinger as the sole panelist in this matter on July 21, 2010. 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 has been established in 1976 and is specialized in the conception and retailing of sporting and leisure goods. The trademark QUECHUA has been created in 1997 to name the Complainant’s products in the field of mountain sports and leisure, such as camping, climbing, and hikes.
The Complainant is the proprietor of numerous registered trademarks comprising the word “QUECHUA” in many countries, including the United Kingdom (“UK”), where the Respondent is located, inter alia the following trademarks (the “QUECHUA Marks”):
- International trademark registration no. 1036641 QUECHUA, filed on December 21, 2009;
- International trademark registration no. 700271 QUECHUA, filed on April 14, 1998;
- International trademark registration no 917639 QUECHUA, filed on September 14, 2006; and
- Community trademark registration no. 006429501 QUECHUA, filed on October 7, 2008.
The Complainant offers its products on the Internet inter alia at “” and owns numerous domain names including its trademark QUECHUA.
The Respondent is a UK based online camping distributor. It has registered the disputed domain name on September 9, 2009 and is using it in connection with a website offering camping gear such as tents from different manufacturers, including the Complainant’s ones. The website included the word “QUECHUA” in the banner and stated that “QUECHUA” is one of “Our Brands”.
On May 12, 2010, the Complainant sent a warning letter to the Respondent. In reply to this letter, Respondent contacted the Complainant and offered the transfer of the disputed domain name provided that the Complainant reimburses all of the Respondent’s costs and potential loss of earnings by removing the website and accepts a grace period during which the Respondent can inform its customers of its new email addresses.
After receipt of the Complainant’s warning letter the Respondent changed the design of the homepage and removed the word “QUECHUA” from the banner as well as the phrase “Our Brands”. 5. Parties’ Contentions A. Complainant
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant argues that the disputed domain name is confusingly similar to the QUECHUA-Marks.
In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name as he neither owns a trademark nor a company name containing the word “QUECHUA” and as “QUECHUA” is not a generic word. The Complainant further argues that the Respondent is making an illegitimate commercial and unfair use of the domain name, because it intends to divert and mislead consumer for commercial gain.
In reference to the element in paragraph 4(a)(iii) of the Policy, the Complainant asserts that the QUECHUA-Marks are well-known throughout the world, that the Respondent offered the disputed domain name for sale after receipt of the Complainant’s warning letter, that the Respondent, by intending to divert and mislead consumer for commercial gain, makes an illegitimate commercial and unfair use of the domain name, and finally, that the Respondent uses the domain name to propose sport articles without the previous authorization of the Complainant and in order to let think that the Respondent is the owner of the trademark QUECHUA. B. Respondent
The Respondent states that it was not aware that it was incorrect to register a domain name that contained someone else’s trademark and that it registered the disputed domain name in good faith, believing that “if another party had a vested interest in a domain name it would already have purchased it”.
The Respondent further states that it has changed the design of the homepage as well as the phrase “Our Brands” after receipt of the cease and desist letter to avoid any confusion between its website and the Complainant’s website.
The Respondent argues that it has a legitimate interest in disputed domain name, as it has been using it since November 2009 to sell tents and associated goods and spent money for registering the domain name and customizing the site for its business. Furthermore, Respondent argues that it’s use of the domain is “fair use” within the meaning of the Policy.
With regard to bad faith, the Respondent states that it purchased the domain name in good faith, with the sole purpose of selling camping equipment to members of the public and that it did not try to sell the disputed domain name to the Complainant for profit but merely to cover its out of pocket expenses. 6. Discussion and Findings A. Identical or Confusingly Similar
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-l698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah‚WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327; BWT Brands, Inc. and British Am. Tobacco (Brands), Inc. v. NABR,WIPO Case No. D2001-1480; Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505).
The disputed domain name wholly incorporates the Complainant‘s distinctive QUECHUA-Marks, which are used in connection with camping gear. The fact that the word “tents” is added to Complainant‘s trademark does not eliminate the similarity between Complainant‘s trademark and the disputed domain name, as “tents“ is a descriptive component of the disputed domain name, merely describing one of the Complainant’s products. In numerous cases, it has been held that a domain name that wholly incorporates a complainant‘s registered mark may be sufficient to establish confusing similarity for purposes of the Policy despite the addition of descriptive words to such marks.
It is also well established that the specific top level of a domain name such as “.com“, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429).
The Panel thus finds that the disputed domain name is confusingly similar to the trademark in which Complainant has exclusive rights and that Complainant has established the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. However, it is the consensus view among panelists that if a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show such a right or legitimate interest, by for example providing proof of one of the three circumstances under paragraph 4(c) of the Policy, then the respondent is considered to lack a right or legitimate interest in the domain name.
The Panel finds that the Respondent has not provided sufficient evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.
The Panel is aware that there are different views regarding the conditions under which authorized or non-authorized resellers of a product have a legitimate interest to use a trademark as a domain name in identical form or with the addition of descriptive elements.
In the majority view, first put forward in the case of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, the use of a trademark as a domain name by a third party is only to be regarded as a bona fide offering of goods or services within the meaning of paragraph 4(c)(iii) of the Policy if the following conditions are satisfied:
- the respondent is actually offering goods or services at issue under the domain name;
- the respondent uses the website to sell only the trademarked goods;
- the site accurately discloses the registrant’s relationship with the trademark owner a does not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents;
- the respondent does not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
The factors developed by the Oki Data panel have been adopted by a number of UDRP panels (See Ferrari S.P.A., Fila Sport S.P.A., v. Classic Jack,WIPO Case No. D2003-0085; Experian Information Solutions, Inc. v. Credit Research, Inc.,WIPO Case No. D2002-0095) and have also been applied in cases where there was no contractual relationship between the complainant and the respondent (See Dr. Ing. h.c. F. Porsche AG. v. Del Fabbro Laurent,WIPO Case No. D2004-0481; Philip Morris Incorporated v. Alex Tsypkin,WIPO Case No. D2002-0946).
This Panel follows the majority view put forward in the Oki Data case that a third party can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits the above identified Oki Data requirements.
In the case before the Panel, the Respondent’s conduct does not meet all the Oki Data criteria.
The website at the disputed domain name offers various products, including products of the Complainant’s direct competitors. Furthermore, before notice of the dispute the Respondent used the QUECHUA-Marks prominently on the website available at the disputed domain name and did not accurately disclose its relationship with the Complainant.
The fact that the Respondent changed the content available at the disputed domain name after receipt of the Complainant’s warning letter does not refute the claim that Respondent intentionally diverted Internet customers to its website because the appropriate behavior to consider is the Respondent’s behavior prior to its receipt of notice from the Complaint (See Experian Information Solutions, Inc. v. Credit Research, Inc.,WIPO Case No. D2002-0095; UNIVERSAL CITY STUDIOS, INC. V. G.A.B. ENTERPRISES,WIPO Case No. D2000-0416).
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) is also satisfied. C. Registered and Used in Bad Faith
The Panel is also convinced that the Respondent registered and used the disputed domain name in bad faith.
The Respondent itself stated that it registered the disputed domain name to sell the Complainant’s products and was therefore aware of the Complainant’s QUECHUA-Mark.
By fully incorporating the QUECHUA-Mark in the disputed domain name and using the domain name in connection with a website offering products for sale, which directly compete with the Complainant’s ones, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain. Such use constitutes bad faith under paragraph 4(b)(iv) of the Policy.
The Panel therefore concludes that also the requirement of paragraph 4(a)(iii) of the Policy has been met. 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.
Torsten Bettinger
Sole Panelist
Dated: August, 4, 2010
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