The Complainant is Decathlon, France, represented by AARPI Scan Avocats, France.
The Respondent is Nick Yei Gomez, Colombia. 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 July 17, 2019. On July 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 2019, 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 July 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2019. The Respondent sent an email communication on July 27, 2019. In this email, the Respondent offered some explanations for the purpose of the registration of the disputed domain name and offered to delete the same. The Center notified the Commencement of Panel Appointment Process on August 16, 2019.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on August 21, 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.
The language of the Registration Agreement is English. 4. Factual Background
The Complainant in this proceeding is Decathlon, a French company specializing in development and retail of sporting and leisure goods.
Decathlon and other brands, in stores or online, are used to distinguish the branded products of the Decathlon network, such as Starboard, Quechua, Arpenaz, Domyos, b’Twin, Solognac or materials developed through the component brands, such as Novadry, or Equarea Stratermic, and also products from international brands. As such, the Quechua brand is dedicated to camping and hiking.
The Complainant has proven to be the owner of the QUECHUA trademark, which enjoys protection also in Colombia, where the Respondent is based, through numerous registrations worldwide.
The Complainant is, inter alia, the owner of the following QUECHUA trademarks:
French trademark QUECHUA number 97702142, filed on October 30, 1997.
International trademark QUECHUA, number 700271, registered on April 14, 1998.
To promote its reputation on the Internet and sell its products, the Complainant has registered numerous domain names, including:
- registered since May 18, 2004;
- registered since February 17, 2005.
The disputed domain name was registered on November 21, 2018. The disputed domain name directs Internet users to a website that mirrors the Complainant’s website. On this website, the Complainant’s QUECHUA trademark and logo are prominently displayed at the top of the home page.
The Complainant’s trademark registrations predate the registration of the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant claims that the disputed domain name is confusingly similar to the Complainant’s registered trademark; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not file a formal Response to the Complainant’s contentions, but sent a short email, in Spanish, affirming that upon realizing the problems caused by his registration he agreed to cancel the disputed domain name (it should be noted that the Complainant requested the transfer of the same and not its cancellation). To this end, the Respondent sent a standard settlement form, indicating that the disputed domain name would be cancelled. In the above said email the Respondent said he was a self-taught web designer and that he had registered the disputed domain name and built the related website in order to better learn how to build and develop a website, all without any bad faith. In support of this claim the Respondent affirms that the disputed domain name is not published anywhere on the Internet, and therefore it does not appear in any search engine. In addition, all the products displayed are generic photos, the prices are randomized and the text is fake and meaningless. The Respondent concludes by affirming that there is no way to make payments on the platform, or to place orders. He insists that it is a test page created to understand how an online store works, in terms of the parameters, layout, design and so on. 6. Discussion and Findings
In order for the Complainant to obtain a transfer of the disputed domain name, paragraph 4(a) of the Policy requires that the Complainant must demonstrate to the Panel that:
(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. A. Identical or Confusingly Similar
The Complainant has established rights in the QUECHUA trademark.
The disputed domain name consists of the QUECHUA trademark with the addition of the geographical term “Colombia”. This Panel agrees with the Complainant’s assertion that the addition of the geographical term “Colombia” in the disputed domain name is irrelevant in countering the confusing similarity between the Complainant’s QUECHUA trademark and the disputed domain name.
Therefore, the Panel finds the disputed domain name to be confusingly similar to the QUECHUA trademark in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent does not appear to be commonly known by the name “quechua colombia” or by any similar name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. Indeed, the Respondent is using the disputed domain name to direct Internet users to a website that copies the Complainant’s website, and which prominently displays the Complainant’s QUECHUA trademark and logo on the top of the home page. Thus, the explanations given by the Respondent to justify his registration and use of the disputed domain name appear, at the very least, not credible, and in any case not sufficient to demonstrate any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain name was registered and has been used in bad faith.
In fact, the Complainant has provided sufficient evidence that the Respondent is using the disputed domain name to direct Internet users to a website that copies the Complainant’s website.
The Respondent’s knowledge of the QUECHUA mark is particularly obvious, given that the Respondent is apparently offering products bearing the QUECHUA mark for sale at the disputed domain name, and that the Complainant’s QUECHUA trademark and logo are displayed at the top of the home page. Consequently, the Panel finds that the Respondent knew of the Complainant’s marks and intentionally intended to create an association with the Complainant and its business at the time of registration of the disputed domain name.
The Panel finds that this use of the disputed domain name to mislead Internet users looking for the Complainant’s trademark and goods constitutes bad faith use. In addition, the Panel notes that the above-mentioned use of the disputed domain name also confirms that the Respondent knew of the Complainant’s trademarks, products and services when registering the disputed domain name, and this constitutes bad faith registration.
The Respondent’s assertions that he basically registered the disputed domain name with the sole purpose of understanding “how an online store works” do not justify or explain why he had to register a domain name containing the Complainant’s renowned trademark, nor why he had to create a website displaying the QUECHUA trademark and copying the Complainant’s website, and do not serve to show good faith in the registration and/or use of the disputed domain name.
Moreover, on the Respondent’s website the text strings “Copyright © 2019 Quechua Colombia” and “Powered by Quechua Colombia” are displayed, thus creating a misleading impression of an affiliation between the Complainant and the Respondent.
Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith.
Therefore, the Complainant has 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 the Complainant.
Fabrizio Bedarida
Sole Panelist
Date: September 2, 2019
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