Complainant is JD Sports Fashion (France) S.A.S. of Tourcoing, France, represented by Urquhart-Dykes & Lord, United Kingdom.
Respondent is Contact Privacy Inc. Customer 0153772162 of Toronto, Ontario, Canada / Elodie Guetes, Chausport of Paris, France. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2019. On January 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 29, 2019, 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 Complainant on January 30, 2019 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 on February 1, 2019.
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 Respondent of the Complaint, and the proceedings commenced on February 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 26, 2019.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on March 5, 2019. 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
Complainant is a leading multi-channel retailer of international footwear brands and sport fashion wear in France. The first store opened in Lille and a second followed in Tourcoing shortly afterwards. Complainant operates in 78 stores, in premium locations, in town centres and shopping centres across France under the CHAUSPORT brand.
Complainant is the owner of the European Union Trademark Registration No. 008519977 CHAUSPORT, filed on September 1, 2009 and registered on February 22, 2010 which covers the goods and services 9, 14, 18, 25, 35 and 36.
Complainant operates its activities through the domain name .
The disputed domain name is was registered on January 25, 2019, which resolved to a website advertising and offering for sale sports footwear. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to its CHAUSPORT trademark. Complainant argues that the addition of the term “fr” does not change the overall impression that the designation is connected to Complainant’s trademark, but rather strengthens the confusing similarity by making Internet users mistakenly believe that the website might be Complainant’s official website in France.
Complainant has asserted that Respondent has no business or other relationship with Complainant. Complainant argues that it has not consented to the registration of the disputed domain name or its subsequent use by Respondent. Complainant submits that to the best of its knowledge Respondent is not commonly known by the disputed domain name. Complainant further argues that Respondent is not making legitimate or noncommercial or fair use of the disputed domain name.
Complainant claims that the disputed domain name was registered and is used in bad faith. Complainant states that Respondent, has targeted Complainant and its trademark CHAUSPORT. Complainant states that Respondent could not have ignored Complainant’s trademark CHAUSPORT at the time of the registration of the disputed domain name, given the reputation of Complainant. Furthermore, Complainant asserts that the website in connection with the disputed domain name offers for sale sports footwear, and that it is likely to lead to disruption of the business of Complainant under the CHAUSPORT trademark. Complainant argues that consumers will believe that the website is in some way related to Complainant B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that to obtain the transfer of the disputed domain name, Complainant must prove that each of the following three elements are present:
(i) the disputed 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 to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraphs 10(b) and 10(d) also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.
Furthermore, paragraph 14(b) provides that “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.
Respondent did not reply to Complainant’s contentions. Respondent’s failure to respond, however, does not automatically result in a decision in favour of Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Taking the foregoing provisions into consideration the Panel finds as follows: A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Panel to consider in the first place, whether Complainant has established relevant trademark rights. The Panel is also required to examine under paragraph 4(a)(i) of the Policy whether the disputed domain name is identical or confusingly similar to Complainant’s trademarks. This test 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”. See section 1.7 of the WIPO Overview 3.0.
Complainant owns rights on the European Union trademark CHAUSPORT, No. 008519977, filed on September 1, 2009 and registered on February 22, 2010, in classes 9,14,18, 25, 35 and 36.
Complainant asserts that the disputed domain name consists of its trademark CHAUSPORT, in its entirety and without modification plus the descriptive country code indicator “fr” for France. Complainant argues that the dominant element part of the disputed domain name is the element CHAUSPORT. The addition of a country code indicator to a trademark within a domain name does not exclude a finding that the domain name is identical or confusingly similar to the trademark. Complainant further argues that the addition of the geographical term “fr” strengthens the confusing similarity by making Internet users mistakenly believe that the website might be Complainant’s official website in France.
According to the section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms such as geographical terms, would not prevent a finding of confusing similarity under the first element. See Allianz SE v. IP Legal, Allianz Bank Limited,WIPO Case No. D2017-0287.
In this case the addition of the term “fr” clearly refers to France. Therefore, the Panel finds that the addition of a geographical term does not prevent confusing similarity with Complainant’s trademark.
Moreover, the generic Top-Level Domain (“gTLD”) “.com” is generally disregarded under the identity or confusing similarity test, as it is a functional element. See section 1.11 of the WIPO Overview 3.0.
The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s trademarks.
Complainant has therefore satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires a complainant to demonstrate that a respondent has no rights or legitimate interests in the disputed domain name.
Complainant is required to establish a prima facie case that respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If, however, respondent fails to come forward with such relevant evidence, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.
Complainant has asserted that Respondent has no business or other relationship with Complainant. Complainant argues that it has not consented to the registration of the disputed domain name or its subsequent impersonating use by Respondent. Complainant submits that to the best of its knowledge Respondent is not commonly known by the disputed domain name. Complainant further argues that Respondent is not making legitimate or noncommercial or fair use of the disputed domain name.
The Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights to or legitimate interest in the disputed domain name and that, as a result of his default, Respondent has failed to rebut such a showing.
The Panel also finds that Respondent’s lack of rights or legitimate interests in the disputed domain name can also be inferred in the circumstances of this case from Respondent’s failure to respond to Complainant’s contentions. See Pomellato S.p.A v. Richard Tonetti,WIPO Case No. D2000-0493 (“non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”).
The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires Complainant to demonstrate that the disputed domain name was registered and is being used in bad faith.
Complainant argues that the disputed domain name is being used in relation to a website advertising and offering for sale sports footwear predominantly products bearing the well-known trademarks Nike, Adidas, Lacoste and Fila, which are the same activities than Complainant.
Complainant states that due to the reputation of its trademark CHAUSPORT, it is hard to believe that the disputed domain name was registered, or is being used in good faith without Respondent having been aware of Complainant’s trademark.
Moreover, Complainant argues that by virtue of the longstanding and widespread use of the CHAUSPORT trademark in France, members of the public would deduce that the disputed domain name is related to Complainant.
The Panel notes that the disputed domain name is used for offering the same activities as Complainant, and impersonates Complainant through the use of displaying Complainant’s mark on the website at the disputed domain name while offering no explanation of the relationship (or lack thereof) between Respondent and Complainant. Moreover, the Panel notes that the CHAUSPORT trademark enjoys a wide reputation in France, where Respondent is based. Thus, the Panel finds that the addition of the term “fr” which clearly refers to France, was for the purpose of misleading consumers.
Given the nature of the disputed domain name, which is confusingly similar to Complainant’s trademarks, there cannot be any good faith as this would invariably result in misleading diversion and taking unfair advantage of Complainant’s rights.
The Panel therefore finds that the circumstances of this case strongly suggest that Respondent was aware of Complainant’s rights at the time of registration of the disputed domain name and that it did so in order to take advantage of such rights.
The Panel finds that Respondent has both registered and used the disputed domain name in bad faith.
Complainant has therefore satisfied 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 Complainant.
Nathalie Dreyfus
Sole Panelist
Date: March 14, 2019
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