The Complainant is Decathlon of Villeneuve d’Ascq, France, represented by AARPI Scan Avocats, France.
The Respondent is Contact Privacy Inc. Customer 0151988799 of Toronto, Canada / Balticsea LLC of Kaliningrad, Russian Federation. 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 March 27, 2019. On March 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 28, 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 the Complainant on March 29, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 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 the Respondent of the Complaint, and the proceedings commenced on April 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2019.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on May 8, 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
The Complainant is a French company founded in 1980. Currently operating 1,510 stores in 49 countries around the world, it had a turnover of EUR 11 billion in 2017 (Annex E to the Complaint).
Its DECATHLON trademark has been used in connection with sport products since 1976 and has been recognized by French Courts and past UDRP decisions as a “well-known” trademark. This trademark has been subject of several registrations amongst which:
- French trademark registration No. 1366349 for DECATHLON, filed on April 22, 1986, covering goods 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 (Annex H1 to the Complaint);
- European Union trademark registration No. 000262931 for DECATHLON, filed on May 6, 1996, registered on April 28, 2004, covering goods 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 (Annex H2 to the Complaint);
- International trademark registration No. 613216 for DECATHLON, registered on December 20, 1993, covering goods 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 (Annex H3 to the Complaint).
The disputed domain name was registered on August 24, 2000 and presently redirects, through multiple sponsored redirections, Internet users to the Complainant’s local webpages. 5. Parties’ Contentions A. Complainant
The Complainant asserts to be a major manufacturer specialized in the conception and retailing of sporting and leisure goods, having developed a strong reputation in the DECATHLON trademark, which has become well known throughout the industry and a leading brand in terms of sales and innovation on the sporting market.
The Complainant further asserts that the disputed domain name is confusingly similar with the DECATHLON trademark, with a mere addition of the “e” letter unable to distinguish the disputed domain name from the Complainant’s trademark in a significant way, characterizing a typical typosquatting case.
In addition to that, the Complainant argues that the disputed domain name has been advertised for sale and is now used to redirect Internet users to the Complainant’s official webpages.
As to the Respondent’s lack of rights or legitimate interests, the Complainant contends that the Respondent:
(i) is not known by the disputed domain name, not holding trademark rights over the DECATHELON trademark (Annex I to the Complaint);
(ii) has no connection or affiliation with the Complainant and is not one of its distributors and does not carry out any activity for or have any business with it;
(iii) has not received any authorization or permission whatsoever to register or use the disputed domain name; and
(iv) is intentionally creating confusion in order to divert consumers from the Complainant’s websites for commercial gain, since Internet users are redirected to the Complainant’s official pages through multiple sponsored redirections.
Lastly, the Complainant alleges that the disputed domain name was registered and is being used in bad faith given (i) the well-known status of the Complainant’s DECATHLON trademark; (ii) the placing of the disputed domain name for sale; (iii) the Respondent’s lack of reply to the use warning letters sent by the Complainant (Annexes J1 and J2 to the Complaint); (iv) the redirection of the disputed domain name to the Complainant’s official webpages through multiple sponsored redirections (Annex G to the Complaint) and (v) the use of a privacy protection service in order to avoid being contacted. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has 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.
The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present so as to have the disputed domain name transferred, according to the Policy. A. Identical or Confusingly Similar
The Complainant has established rights in the DECATHLON trademark.
The disputed domain name only differs from the Complainant’s trademark in view of the addition of the “e” letter which under this Panel’s view does not avoid a finding of confusing similarity between it and the Complainant’s trademark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense the Complainant indeed states that it has not given the Respondent any authorization or permission whatsoever to register or use the disputed domain name as well as there is no connection or affiliation between the Parties, the Respondent not being one of its distributors nor carrying out any activity for or have any business with the Complainant.
Furthermore, the absence of any indication that the Respondent has rights in a term corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate the Panel’s finding of the absence of rights or legitimate interests.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b) that bad faith registration and use can be found when “(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other 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”.
In the present case, the Respondent’s conduct, while redirecting Internet users to the Complainant’s local webpages does that through multiple sponsored redirections, what characterizes the Respondent’s intent of commercial gain by misleadingly diverting the Complainant’s consumers or merely earning undue revenues from the links that solely exists in view of the association with the Complainant’s well-known mark.
Such use, in this Panel’s view, constitutes an attempt to profit from the fame and goodwill associated with the Complainant’s trademark, thus capitalizing on the DECATHLON trademark by creating a likelihood of confusion in Internet users who are likely to believe that the disputed domain name is either connected, endorsed or authorized by the Complainant, what is not true.
Also, as already mentioned, the Respondent did not reply to the warning letters sent by the Complainant prior to the beginning of this procedure nor did it file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration or use of the disputed domain name.
Lastly, the use of a privacy service by the Respondent may further support, in the circumstances of this case, the Panel’s finding of bad faith.
For the reasons stated above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use pursuant to paragraph 4(b)(iv) 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.
Wilson Pinheiro Jabur
Sole Panelist
Date: May 15, 2019
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