The Complainant is Decathlon, France, represented by AARPI Scan Avocats, France.
The Respondent is Perfect Privacy, LLC, Unites States of America (the “United States”) / This domain may be for sale at , New Ventures Services, Corp, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with F LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2019. On September 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 3, 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 September 6, 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 September 9, 2019. Following a request for clarification sent by the Center on September 16, 2019, the Complainant sent a second amended Complaint on September 16, 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 September 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2019.
The Center appointed Ian Blackshaw as the sole panelist in this matter on October 9, 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 manufacturer specialized in the conception and retailing of sporting and leisure goods.
At the end of 2017, the Complainant employed 87,000 employees worldwide with annual sales of 11 billion euros. In April 2019, it was operating 1520 stores throughout the world. Evidence of this has been provided to the Panel in Annex E to the Complaint.
The Complainant is the registered owner, in many classes, of a large number of trademarks consisting of or including the word DECATHLON in France, Europe, internationally and in the United States, evidence of which has been provided to the Panel. All of these trademarks predate the disputed domain name, which was registered by the Respondent on December 7, 2017, and have been continuously used in commerce since their registration.
The Complainant’s trademark DECATHLON was first filed in 1986, and, as a result of its intensive use, its international influence and the Complainant’s efforts to promote it, the trademark DECATHLON benefits from a solid reputation with French and foreign consumers.
Its well-known character has been recognized repeatedly by the French judicial courts. Examples have been provided to the Panel in the Complaint.
The well-known character of the Complainant’s trademark DECATHLON has also been recognized in previous UDRP decisions. Again, examples have been provided to the Panel in the Complaint.
In the light of all the above, it should be considered that the trademark DECATHLON is a well-known trademark.
Furthermore, to promote its reputation on the Internet and sell its products, the Complainant has registered numerous domain names, among which are the following:
- registered since June 30, 1995;
- registered since May 31, 1995;
- registered since June 23, 1998;
- registered since February 17, 2005. 5. Parties’ Contentions A. Complainant
The Complainant makes the following assertions:
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
First, the generic Top-Level Domain (“gTLD”) “.com” is not of distinguishing effect and must be removed from analysis.
It is indeed of constant law that the inclusion of the TLD extension does not give any distinctiveness to the domain name. See Champagne Lanson v. Development Services/MailP, Inc.,WIPO Case No. D2006-0006; and HERMES INTERNATIONAL v. Zhang Feng,WIPO Case No. D2011-1125.
Secondly, the Complainant claims that the disputed domain name is similar to its DECATHLON trademark as it almost identically reproduces the denomination “DECATHLON” with a mere change in its spelling through the substitution of the letter “E” to the letter “H”, which will remain unnoticed by Internet users. Such change constitutes a typical “typosquatting” practice.
Indeed, previous UDRP cases have recognized that a domain name composed of the Complainant’s trademark to which a mere letter is added is confusingly similar to the Complainant’s mark; the mere addition of such letter being itself insufficient to avoid such similarity. See Decathlon SAS v. Wang Yongwei / Domain Admin, Information Privacy Protection Services Limited,WIPO Case No. D2015-0198; and Wikimedia Foundation, Inc. v. Domains by Proxy, LLC / Management Group, Nanci Nette,WIPO Case No. D2018-1453.
Therefore, the Complainant has demonstrated that the disputed domain name is similar to the trademarks in which the Complainant has rights and has thus established the first element of the Policy paragraph 4 (a)(i).
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
Firstly, to the Complainant’s best knowledge, the Respondent is not currently and has never been known under the name DECATHLON.
The Complainant notably conducted a trademark search on “DECATELON” and notes that the Respondent has never filed any trademark identical or similar to its own rights. Evidence provided to the Panel.
The Complainant grants that it did not know the Respondent and ascertains that the Respondent is not in any way related to its business; is not one of its distributors; and does not carry out any activity for or have any business with it.
Furthermore, the right to use such mark as a basis for a domain name requires an express authorization. In this case, the Complainant submits it has never given any authorization or permission whatsoever to the Respondent to register or to use the disputed domain name.
Such a position was approved by previous UDRP panels, notably in:
Archer-Daniels-Midland Company v. tao bang hua,WIPO Case No. D2016-0990.
This absence of a link and authorization is all the more objectionable, since the Respondent (i) registered a domain name which is highly similar to the Complainant’s trademark; and (ii) uses the disputed domain name, which is for sale, to resolve to the Complainant’s official Indian website reachable through multiple sponsored redirections. Thus, the Complainant submits the Respondent is intentionally creating confusion in order to divert consumers from the Complainant’s websites for commercial gain.
It will be further noted that the Complainant tried to resolve this matter amicably by sending a cease and desist letter to the Respondent, through its counsel, which remains unanswered, despite a reminder to proceed as requested.
Since the Complainant has not authorized the Respondent to use its trademark and domain names, this use can only be fraudulent, and confirms that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant refers to decisions issued in recent cases involving the Complainant and its trademark DECATHLON:
Decathlon v. Name Redacted,WIPO Case No. D2017-1490; Decathlon SAS v. Wang Yongwei / Domain Admin, Information Privacy Protection Services Limited,WIPO Case No. D2015-0198.
The disputed domain name was registered and is being used in bad faith.
The Complainant has previously demonstrated the strong reputation and the leading position of its registered trademark DECATHLON throughout the world in the field of sporting and leisure goods.
The Complainant submits that it is highly likely that the Respondent knew the Complainant and its well-known trademarks in the field of sporting and leisure goods, when filing the application for the disputed domain name, at least for the following reasons:
- The DECATHLON trademarks and domain names were registered long before the disputed domain name was registered;
- The disputed domain name is highly similar to the Complainant’s trademarks, the mere difference between the signs at stake being typical “typosquatting” practices;
- Any search for “decathlon” conducted with a search engine, such as Google, leads in the first place to websites relating to the Complainant and its products;
- The Respondent has listed the disputed domain name for sale and uses it to resolve to the Complainant’s official Indian website, reachable through multiple sponsored redirections.
See: Decathlon v. Nin Ma,WIPO Case No. D2014-1941.
Several previous UDRP decisions have already been issued against the Respondent, all in favor of the complainant. See: Dr. Rebecca Parsons, ThoughtWorks, Inc. v. Perfect Privacy, LLC / This Domain May be for Sale at , New Ventures Services, Corp, WIPO Case
No. D2019-0866, Universal Services of America, LP d/b/a Allied Universal v. This Domain May be for Sale at , New Ventures Services, Corp,WIPO Case No. D2019-0834, Ashok Leyland Limited v. New Ventures Services Corp., WIPO Case No. D2015-0762 and Amara Raja Batteries Limited v. New Ventures Services, Corp,WIPO Case No. D2009-0343. Such circumstances constitute supplemental evidence of the Respondent’s bad faith.
The Complainant argues that the elements above indeed prove that the Respondent was fully aware of the Complainant’s prior rights and registered the disputed domain name for the sole purpose of attracting the Complainant’s customers, thereby misleading them to a third-party’s website for commercial gain.
This combination of facts confirms the bad faith registration of the disputed domain name.
The Respondent is using the disputed domain name, which is for sale, to resolve to the Complainant’s official Indian website, reachable through multiple sponsored redirections.
The Complainant submits that such use of the disputed domain name is in bad faith, since the Respondent has, therefore, attempted to attract Internet users to its website by creating a likelihood of confusion as to the source, affiliation or endorsement of the website, for commercial gain.
Such bad faith is confirmed by the fact that the Respondent used a privacy protection service in order to avoid being contacted.
In addition, the Complainant notes that the Respondent did not reply to the cease and desist letter and the reminder sent by the Complainant, through its counsel, which constitutes supplemental evidence of bad faith. Decathlon v. Contact Privacy Inc. Customer 0151988799 / Balticsea LLC,WIPO Case No. D2019-0698; and Marie Claire Album v. Whoisguard Protected, Whoisguard, Inc. / Dexter Ouwehand, DO, WIPO Case
No. D2017-1367; and MARLINK SAS v. Stephen Okonkwo,WIPO Case No. D2017-1356. B. Respondent
The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in these proceedings. 6. Discussion And Findings
To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(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.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and under paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP cases in which the respondents failed to file a response, the panels’ decisions were based upon the complainants’ reasonable assertions and evidence, as well as inferences drawn from the respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp.,WIPO Case No. D2001-0936.
Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas,WIPO Case No. D2000-0140. In the present case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true. A. Identical or Confusingly Similar
It is well established in previous UDRP decisions that, where the disputed domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525.
In the present case, the disputed domain name essentially incorporates the Complainant’s DECATHLON registered trademark, with a slight misspelling as mentioned below, and this makes the disputed domain name confusingly similar to the Complainant’s well-known DECATHLON registered trademark.
Furthermore, the substitution of the letter ‘E’ for the letter ‘H’ as part of the disputed domain name is irrelevant and does not eliminate any possibility of confusion. This appears to have been included by the Respondent to cover cases of possible “typosquatting” on the part of persons wishing to connect with the Complainant and its products and services. See Decathlon SAS v. Wang Yongwei / Domain Admin, Information Privacy Protection Services Limited,WIPO Case No. D2015-0198; and Wikimedia Foundation, Inc. v. Domains by Proxy, LLC / Management Group, Nanci Nette,WIPO Case No. D2018-1453. See also Philip Morris USA Inc. v. Compsys Domain / Compsys Domain Solutions Private Limited,WIPO Case No. D2017-2395 and the previous UDRP cases cited therein.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s well-known DECATHLON registered trademark, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has prior rights in and prior commercial use of the same.
The first element of the Policy, therefore, has been met. B. Rights or Legitimate Interests
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances, in particular, but without limitation:
- whether there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute;
- whether the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights;
- whether 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.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint or taking any part in these proceedings. See Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
There is no evidence either before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s well-known DECATHLON registered trademark. In fact, in the view of the Panel, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s well-known DECATHLON registered trademark, which the Panel considers, as asserted above by the Complainant, would appear not to be by mere chance but by design, inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products.
Further, the Panel finds that the Respondent is consequentially trading unfairly on the Complainant’s well-known DECATHLON registered trademark and also the valuable goodwill that the Complainant has established in that trademark through the Complainant’s legal actions and prior commercial use, as evidenced above, without any right or legal justification for doing so.
Also, the Panel finds no evidence that the Respondent has used or undertaken any demonstrable preparations to use the disputed domain name in connection with any bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which constitute prima facie evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris,WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [its] web site or location.”
Based on the evidence provided on the record, the Panel considers that the Respondent, by registering the disputed domain name incorporating the Complainant’s well-known DECATHLON registered trademark, is trading unfairly on the Complainant’s valuable goodwill established in such trademark.
The incorporation of the Complainant’s well-known registered trademark DECATHLON in the disputed domain name, in the view of the Panel, is bound to lead to confusion on the part of consumers and Internet users seeking information about the Complainant and its products marketed under its well-known DECATHLON registered trademark.
Also, the effect of such conduct on the part of the Respondent is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the evidence provided on the record, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet,WIPO Case No. D2004-0649.
Furthermore, see also Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493, in which it was stated that “consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark”. As this is not, in fact, the situation in the present case, the use by the Respondent of the disputed domain name is confusing and misleading and, in the view of the Panel, this is a further indication that the disputed domain name was registered and is being used in bad faith.
Again, in the absence of any explanation to the contrary by the Respondent, of which none is forthcoming on the record, the Panel agrees with the Complainant’s contention that the Respondent did not register and use the disputed domain name by chance; but, as noted above, appears to have been – or, at least, should have been – fully aware of the notoriety of the Complainant and its business activity, as well as its well-known DECATHLON registered trademark and its prior commercial use.
Also, there is evidence on the record that would suggest that the Respondent registered the disputed domain name with a view to its sale, which, pursuant to paragraph 4(b)(i) of the Policy, is prima facie evidence of bad faith on the part of the Respondent.
Further, the failure of the Respondent to respond to the Complainant’s cease and desist Letter and its reminder is also, in the view of the Panel, an indication of bad faith. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787.
Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787.
Therefore, taking all these particular facts and circumstances into account, and for all the above-mentioned reasons, as well as the arguments advanced by the Complainant in it contentions, as set out above, including the use by the Respondent of a privacy protection service, and the previous UDRP cases cited above, the Panel concludes 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.
Ian Blackshaw
Sole Panelist
Date: October 10, 2019
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