The Complainant is Decathlon of Villeneuve D'ascq, France, represented by SCAN Avocats, France.
The Respondent is Name Redacted1. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 1, 2017. On August 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 2, 2017, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 7, 2017. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent's default on September 8, 2017.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on September 21, 2017. 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, Decathlon, is a major French company specialized in the conception and retailing of sporting and leisure goods.
The Complainant has been registered before the Trade and Companies Register of Lille, France on March 31, 1980.
The Complainant has registered the following trademarks which have been duly reniewed (thereafter the "DECATHLON trademarks"):
- The French trademark DECATHLON, No. 1366349, filed on April 22, 1986 registered for products and services in classes 3; 4; 5; 8; 9; 12; 13; 14; 16; 18; 20; 21; 22; 24; 25; 28; 32 ; 33; 35; 37; 39; 40; 42; 43; 44 and 45;
- The international trademark DECATHLON, No. 436235, filed on March 28, 1978 registered for products and services in classes 12; 28 and 41;
- The international trademark DECATHLON, No. 613216, filed on December 20, 1993 registered for products and services in classes 1; 3; 4; 5; 6; 7; 8; 9; 10; 11; 12; 13; 14; 16; 17; 18; 20; 21; 22; 23; 24; 25; 26; 27; 28; 29; 30; 31; 32; 35; 36; 37; 38; 39 and 42;
- The European Trademark DECATHLON, No. 302265, filed on May 6, 1996 registered for products and services in classes 1; 2; 3; 4; 5; 6; 7; 8; 9; 10; 11; 12; 13; 14; 15; 16; 17; 18; 19; 20; 21; 22; 23; 24; 25; 26; 27; 28; 29; 30; 31; 32; 33; 34; 35; 36; 37; 38; 39; 40; 41 and 42.
The Complainant registered the following domain names:
- registered since June 30, 1995;
- registered since May 31, 1995;
- registered since March 9, 2006.
The domain name was registered by the Respondent on February 8, 2017 with GoD, LLC.
The domain name resolves to an activate website offering sports goods related to soccer, namely jerseys, trousers and jackets.
The Complainant requested the hosting providers, initially Digital Energy Technologies Chile SA then Quadranet Inc, to suspend this exploitation of the domain name by sending notices on June 16, 2017 and on July 3, 2017. 5. Parties' Contentions A. Complainant
First of all, the Complainant contends that the disputed domain name is identical or confusingly similar to the DECATHLON trademarks on which the Complainant has rights.
The Complainant argues that considering their age, their intensive use, their international influence and the Complainant's efforts to promote them, the DECATHLON trademarks benefit from a well-known character and a solid reputation among French and foreign consumers.
The Complainant then explains that the generic Top-Level Domain Name ("gTLD") ".com" is not of distinguishing effect and must be removed from the analysis.
The Complainant then stands that the domain name is confusingly similar to its DECATHLON trademarks since the domain name is reproducing letter-by-letter the DECATHLON trademarks.
The Complainant adds that the addition of the descriptive term "foot" to the DECATHLON trademarks does not grant self-distinctiveness to the disputed domain name.
Furthermore, the Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant argues that the Respondent is not currently and has never been known under the name Decathlon. The Respondent has no connection or affiliation with the Complainant, its distributors, or any of the products provided by the Complainant under the DECATHLON trademarks.
Moreover, the Respondent has never been authorized or permitted by the Complainant to register or to use the DECATHLON trademarks. This absence of permission would be proved by the fact that the Respondent used the domain name to resolve to an activate website offering products which would be counterfeits of products sold by the Complainant on its websites or in its stores.
According to the Complainant, the Respondent chose to use this domain name to pass itself off as the company Decathlon, at the expense of the Complainant which has to support substantial monetary losses.
At least, the Complainant argues that the Respondent has registered and is using the disputed domain name in bad faith.
The Complainant contends that the Respondent has registered the disputed domain name in bad faith because it could not ignore the well-known reputation and the trademarks of the Complainant in the field of sporting and leisure goods, in France and throughout the world.
The Complainant ended by claiming that the Respondent is using the domain name in bad faith because of trying to confuse consumers as to the identity of the seller since the domain name resolves to an active website offering products which would be counterfeits of products. Internet users may believe that the disputed domain name directs to a website which is one of the Complainant's websites. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:
(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 has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
First of all, the Panel finds that the Complainant has provided evidence that it has rights on the DECATHLON trademarks.
Then, the Panel notices that the disputed domain name is composed of (i) the distinctive element "Decathlon", which is the exact reproduction of the DECATHLON trademarks, (ii) the dictionary term "foot" and (iii) the gTLD ".com".
As pointed out by the Complainant, the applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.
The Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing (See section 1.7 of the WIPO Overview of WIPO Panel Views on selected UDPR Questions, Third Editions ("WIPO Overview 3.0")).
Furthermore, the Panel concurs with the opinion of several prior UDRP panel decisions which have held that the fact that a domain name wholly incorporates a complainant's registered trademark may be sufficient to establish confusing similarity for purposes of the Policy (see, e.g., Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Bayerische Motoren Werke AG v. ,WIPO Case No. D2002-0615; RapidShare AG, Christian Schmid v. InvisibleR, Domain Admin,WIPO Case No. D2010-1059; Hoffmann-La Roche Inc., Roche Products Limited v.Vladimir Ulyanov,WIPO Case No. D2011-1474; Swarovski Aktiengesellschaft v. mei xudong,WIPO Case No. D2013-0150).
Regarding the disputed domain name , the Panel finds that the addition of the descriptive term "foot" to the DECATHLON trademarks is not sufficient to exclude confusing similarity. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview 3.0 and LEGO Juris A/S v. DBA David Inc/ DomainsByP,WIPO Case No. D2011-1290).
Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant's trademarks. B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interests in the disputed domain name.
These circumstances are:
- before any notice of the dispute, the respondent's use of, or demonstrable 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
- the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
- the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
According to prior UDRP panel decisions, it is sufficient that the Complainant shows prima facie that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the Respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out prima facie that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (See section 2.1 of the WIPO Overview 3.0).
According to the Panel, the Complainant has shown prima facie that the Respondent is not affiliated with the Complainant or with its distributors and has not been permitted, licensed or otherwise authorized by the Complainant to use its DECATHLON trademarks, and that the Respondent is not currently and has never been known under the name Decathlon. Moreover, the Respondent appears to have used the name of a third party in the registration of the disputed domain name.
The Complainant having established prima facie that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production has been shifted to the Respondent. However, it turns out that the Respondent has not provided any answer to the Complainant's contentions.
Therefore, the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and is being used in bad faith.
Particular circumstances panels may take into account in assessing whether the respondent's registration of a domain name is in bad faith include: (i) the nature of the domain name (e.g., a typo of a widely-known mark, or a domain name incorporating the complainant's mark plus an additional term such as a descriptive or geographic term, or one that corresponds to the complainant's area of activity or natural zone of expansion), (ii) the chosen top-level domain (e.g., particularly where corresponding to the complainant's area of business activity or natural zone of expansion), (iii) the content of any website to which the domain name directs, including any changes in such content and the timing thereof, (iv) the timing and circumstances of the registration (particularly following a product launch, or the complainant's failure to renew its domain name registration), (v) any respondent pattern of targeting marks along a range of factors, such as a common area of commerce, intended consumers, or geographic location, (vi) a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent's choice of the domain name, or (viii) other indicia generally suggesting that the respondent had somehow targeted the complainant (See section 3.2.1 of the WIPO Overview 3.0).
First of all, the Respondent appears to have used the name of a third party in the registration of the disputed domain name. This potential identity theft is a strong indication of both bad faith registration and use.
Then, the Panel finds that the Complainant's trademarks were registered long before the Respondent registered the disputed domain name.
Then, according to the Panel, the Complainant has shown that the Respondent knew, or should have known, that its domain name's registration would be identical or confusingly similar to the Complainant's mark specifically because of the notoriety of the DECATHLON trademarks throughout the world and its registration date.
In addition, the Panel finds that the disputed domain name redirects Internet users to a website offering sports goods related to football which are supposed to be counterfeits of Complainant's products.
Panels are generally not prepared however to accept merely conclusory or wholly unsupported allegations of illegal activity, including counterfeiting, even when the respondent is in default. However, panels have found that circumstantial evidence can support a complainant's otherwise credible claim of illegal respondent activity. Evidence that a respondent has improperly masked its identity to avoid being contactable, have been found relevant in this regard (See section 2.13.2 of the WIPO Overview 3.0 and Moncler S.r.l. v. Sandra Brown,WIPO Case No. D2010-1674).
The Respondent's reaction to this proceeding has been silence, a further evidence of bad faith.
Therefore, in view of all the circumstances of this case the Panel finds that the Respondent has 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 be transferred to the Complainant.
Christiane Féral-Schuhl
Sole Panelist
Date: October 2, 2017
1 The Respondent appears to have used the name of a third party in the registration of the disputed domain name. In light of this potential identity theft, the Panel has redacted the Respondent's name from the caption and body of this Decision. The Panel has, however, attached as Annex 1 to this decision an Instruction to the Registrar regarding the transfer of the disputed domain name that includes the name of the Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. The Annex 1 shall not be published.
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