The Complainant is Decathlon of Villeneuve d’Ascq, France, represented by AARPI Scan Avocats, France.
The Respondent is WhoisGuard, Inc. of Panama City, Panama / Win Millett of Zephyrhills, Florida, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2018. On September 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 27, 2018, 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 September 28, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed amended Complaint on September 28, 2018.
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 October 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2018. The Center received email communications from the Respondent on October 4, 2018, October 7, 2018, and November 1, 2018, stating his willingness to settle the dispute. Taking into account the Respondent’s emails, the Center invited the Complainant to request a suspension of the proceedings in order to explore the possibility of a settlement between the Parties. The Complainant requested the suspension of the proceeding on October 5, 2018. The Center notified to the Parties the suspension of the proceeding on October 5, 2018. The Complainant requested the reinstitution of the proceedings on October 31, 2018. The Center notified the Parties of the reinstitution of the proceedings on November 1, 2018 and informated the Respondent that the new due date for Response was November 18, 2018. On November 20, 2018, the Center received an additional email communication from the Respondent.
The Center appointed Selma Ünlü as the sole panelist in this matter on November 29, 2018. 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 in this administrative proceeding, “Decathlon”, is a major French manufacturer and retailer of sports equipment since March 31, 1980, which is its official registration date before the Trade and Companies Register of Lille, France. Moreover, the Complainant runs two main commercial activities: the creation of sports products and local commerce and online sales of their products since 2008. The Complainant also has most of its stores, i.e. 65% of them, around the world.
The Complainant owns the registered DECATHLON trademarks in Europe and China, as well as in the United States. Considering the volume of use of the trademark and the effort of the Complainant to promote the trademarks, the trademark DECATHLON benefits from its well-known status. The well-known status of the trademark is also accepted by several judicial decisions.
The Complainant is the owner of the registered French trademark No. 1366349 for DECATHLON, registered since April 22, 1986; the European Union trademark no. 000262931 for DECATHLON, registered since April 28, 2004; the International trademark No. 613216 for DECATHLON, registered since December 20, 1993; the International trademark No. 1115888 DECATHLON, registered since April 12, 2012; and the United States trademark No. 86437386 DECATHLON, registered since March 22, 2016. The Complaint is also the owner of several domain names having the registered DECATHLON trademark, which are , registered since June 30, 1995; , registered since May 31, 1995; , registered since June 23, 1998; and , registered since September 5, 2013.
The Respondent has chosen not to submit any formal Response to the contentions raised in the Complaint but has merely sent three emails to the Centre.
The disputed domain name was registered on May 15, 2018, and displays a pay-per-click (“PPC”) landing page with links using the Complainant’s trademark DECATHLON. 5. Parties’ Contentions A. Complainant
Pursuant to paragraph 4(i) of the Policy, the Complainant requests the Panel to make a decision requesting the transfer of the disputed domain name to the Complainant. The Complainant submits the grounds for these proceedings listed in paragraph 4(a) of the Policy.
In summary, the Complainant contends the following: Confusingly Similar
The Complainant states that it owns registered and well-known DECATHLON trademarks and that the subject trademarks have been used on many stores and domain names belonging to the Complainant for many years. The Complainant is one of the largest sport equipment retailer of the world, who is also manufacturing its own products.
The Complainant asserts that the disputed domain name is comprised of the Complainant’s trademark DECATHLON, followed by the generic Top-Level Domain (“gTLD”) of “.club”, which does not vanish the overall confusingly similar impression to its registered DECATHLON trademarks.
The Complainant also alleges that the “my” phrase added to the DECATHLON trademark is a dictionary term and does not detract from the confusing similarity of the disputed domain name. Rights or Legitimate Interests
The Complainant alleges that the Respondent is not and has never been one of the Complainant’s distributors, nor is he otherwise authorized to use the Complainant's mark. The Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent is not known under the name of “DECATHLON”.
Therefore, the Complainant argues that the Respondent registered the disputed domain name to gain commercial profit from the PPC links, since the disputed domain name is almost identical to the domain name of the Complainant. Registered and Used in Bad Faith
The Complainant indicates that the disputed domain name has been registered and used in bad faith.
The Complainant contends that the disputed domain name is registered in bad faith since the trademark DECATHLON is a well-known mark throughout the world including the United States. It further claims that the Respondent must have been aware of the Complainant and its marks at the time that it chose the Complainant’s trademark and registered the disputed domain name to attract the customers of the Complainant.
The Complainant also alleges that the Respondent has been using the disputed domain name in bad faith to create a parking page and to gain commercial profit by creating confusing similarity through PPC links. Therefore, this is fraudulent since the Respondent is not authorized to act so. B. Respondent
The Respondent did not submit any formal Response to the contentions raised in the Complaint but has merely sent several emails to the Center. In the first email dated October 4, 2018, the Respondent stated that he is not using the disputed domain name, so the Complainant is welcomed to have it, while also stating that he wishes to settle. On October 7, 2018, the Respondent has asked whether the dispute is settled yet. Finally, the Respondent gave away the disputed domain name via his email dated November 29, 2018. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) The disputed domain name is identical or confusingly similar to the trademark in which the Complainants have rights; and
(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.
Paragraph 4(a) of the Policy states that the Complainants have the burden of proving that all these requirements are fulfilled. A. Identical or Confusingly Similar
The Policy simply requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of several registrations of the DECATHLON trademark.
The Panel finds that the addition of the gTLD “.club” is irrelevant when determining whether the disputed domain name is confusingly similar to the Complainant’s trademark (A.C.D. Lec v. Na Shan,WIPO Case No. D2017-1640; Groupon, Inc. v. Wun Li,WIPO Case No. D2017-1232). It has been stated in several previous UDRP decisions that gTLDs should typically be disregarded.
Finally, the inclusion of the term “my” within the disputed domain name does not prevent a finding of confusing similarity.
The Panel recognizes the Complainant’s rights and concludes that the disputed domain name is identical with the Complainant’s DECATHLON trademarks. Therefore, the Panel concludes that the requirements of paragraph 4(a)(i) of the Policy is provided. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [the Respondent] of the dispute, your 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
(ii) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iïi) you [the Respondent] are 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.
The burden of proof is on the Complainant to demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case, then the Respondent may, by, inter alia, showing one of the above circumstances, demonstrate rights or legitimate interests in the disputed domain name.
In light of the evidence submitted in the case file, e.g., trademark registration information, it is clear to the Panel that the Complainant has earlier and lawful rights on the DECATHLON trademarks. Therefore, the Panel finds on the current record that the Complainant has proved rights on the DECATHLON trademarks and, considering the use of the disputed domain name, has also established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name for the purposes of the Policy. The Complainant has not granted the Respondent any right or license to use the DECATHLON trademarks.
Consequently, in the absence of an official response, the Panel accepts the Complainant’s allegations as true that the Respondent has no authorization to use the DECATHLON trademark in the disputed domain name. Hence, as the Complainant has made out its prima facie case, and as the Respondent has not demonstrated any rights or legitimate interests as illustrated under paragraph 4(c) of the Policy, nor has the Panel found any other basis for finding any rights or legitimate interests of the Respondent in the disputed domain name, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the respondent's website or location or of a product or service on the respondent’s website or location.
By consideration of the foregoing, the Panel is of the opinion that due to the earlier rights of the Complainant in the trademark DECATHLON, as well as its extensive and intensive usage, the Respondent, who appears to be located in the United States where the Complainant has a recognition, was aware of the Complainant and its DECATHLON trademark at the time of registration of the disputed domain name. See e.g., Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087. Referring to Parfums Christian Dior v. Javier Garcia Quintas and C, WIPO Case No. D2000-0226, the Panel believes that the awareness of the Complainant’s trademark at the time of the registration of the disputed domain name is to be considered an inference of bad faith registration, due to the nature of the disputed domain name.
In addition,the Panel notes that the includion of the term “my” creates confusion with the Complainant’s domain name . Moreover, as is stated in previous WIPO UDRP panel decisions which are also cited to by the Complainant within the Complaint, the word “my” is more likely to used by the trademark holder to offer information on their products and it does not eliminate the confusion (Philip Morris USA Inc. v. Domain Admin/Whois Protection,WIPO Case No. D2016-2575; Clarins v. Registration Private, Domains By Proxy, LLC,WIPO Case No. D2014-1485)
The Panel is of the opinion that Internet users will fall into the false impression that the disputed domain name is the official domain name of the Complainant.
Moreover, the Panel notes that:
(i) the Respondent did not submit any official response and is in default;
(ii) the Complainant’s trademark has a strong reputation and is considered as a well-known trademark in the United States; and
(iii) the dsiputed domain name has been used as a PPC website with links related to gifts, sports, and the Complainant’s DECATHLON trademark.
Therefore, in light of the above-mentioned circumstances in the present case, the Panel finds that the disputed domain name has been registered and is being used in bad faith and that the Complainant has established the third element under paragraph 4(a)(iii) 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 disputed domain name be transferred to the Complainant.
Selma Ünlü
Sole Panelist
Date: December 13, 2018
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