The Complainant is Decathlon, France, represented by AARPI Scan Avocats, France.
The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Danill Mastikov, Factory, Ukraine.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2021. On September 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 22, 2021, 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 23, 2021, 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 27, 2021.
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 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 20, 2021.
The Center appointed Gareth Dickson as the sole panelist in this matter on October 28, 2021. 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 BackgroundThe Complainant is a major manufacturer and retailer of sporting and leisure goods based in France. It has tens of thousands of employees worldwide and operates 1,714 stores globally.
The Complainant has been offering services under the DECATHLON trade mark (the “Mark”) for over 40 years. It is the owner of a number of trade mark registrations (all predating the registration of the disputed domain name) for or incorporating the Mark around the world, including:
- French Trade Mark registration number 1366349, filed on April 22, 1986;
- European Union Trade Mark registration number 000262931, filed on May 6, 1996, and registered on April 28, 2004; and
- International Trade Mark registration number 613216, filed and registered on December 20, 1993.
Earlier UDRP decisions have held that the Mark is well known and have upheld the Complainant’s rights in it.
The disputed domain name was registered on August 24, 2021. It currently directs Internet users to a webpage which mimics the Complainant’s own website at “www.decathlon.fr”.
5. Parties’ Contentions A. ComplainantThe Complainant argues that it has rights in the Mark by virtue of its ownership of various trade mark registrations for the Mark around the world, including those noted in section 4 above and its longstanding use of the Mark. The Complainant contends that the disputed domain name is confusingly similar to the Mark since it incorporates the Mark as the sole element of the second-level of the domain name, under the generic Top-Level Domain (“gTLD”) “.one”.
The Complainant confirms that the disputed domain name was registered by the Respondent without its permission and that the Respondent has no relationship with the Complainant. The Complainant alleges that the Respondent has been using the disputed domain name to divert consumers from the Complainant's website to the Respondent’s website, which is not being used to promote a bona fide offering of goods or services, nor does it appear to serve a legitimate noncommercial purpose.
The Complainant submits that there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name; is making, or intends to make, a legitimate noncommercial or fair use of it; or has ever used or demonstrated preparations to use it in connection with a bona fide offering of goods or services. The Complainant notes too that the Respondent has used a privacy service to conceal its identity for as long as possible.
The Complainant submits that the Respondent must have known of the Complainant and the Mark when it registered the disputed domain name, and therefore registered it and is using it in bad faith. The Mark, according to the Complainant, is well known throughout the world. The Respondent’s own use of the disputed domain name (and of the Complainant’s logo on the website to which the disputed domain name directs Internet users) further confirms that the Respondent knew of the Mark and the Complainant’s interest in it when it registered the disputed domain name and that it registered it in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
(a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) the disputed domain name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied.
A. Identical or Confusingly SimilarThe Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that: “[I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
Section 1.8 of the WIPO Overview 3.0 further provides that: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
The Panel therefore finds that the disputed domain name is confusingly similar to the Mark, since the Mark is wholly incorporated within the disputed domain name, without any distinguishing additions. The choice of the “.one” gTLD does not prevent a finding of confusing similarity.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate InterestsAlthough a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In the current proceeding, the Complainant has established its prima facie case. The evidence before the Panel is that the Mark is distinctive of the Complainant and is well known internationally, which makes a coincidental adoption by the Respondent highly unlikely; previous UDRP Panels have reached that conclusion and there is no basis for this Panel to reach a different conclusion in this Complaint.
The Complainant states that it has not given the Respondent permission to use the Mark, in a domain name or otherwise, and there is no evidence that the Respondent has acquired any common law rights to use the Mark, is commonly known by the Mark or has chosen to use the Mark in the disputed domain name in any descriptive manner or is making any use of the disputed domain name that would establish rights or legitimate interests as a result of a non-commercial or fair use of it.
The disputed domain name consists entirely of the Complainant’s Mark without modification and as such, carries a high risk of implied affiliation that suggests sponsorship or endorsement by the Complainant, which is not the case, and thus cannot constitute fair use. See section 2.5.1 of the WIPO Overview 3.0. By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element.
As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad FaithThe Panel notes that the Mark has already been found by previous UDRP panels to be well known and distinctive of the Complainant.
The Panel also notes that the disputed domain name was registered many years after the Mark was registered and accepts that the disputed domain name was chosen by reference to the Mark. The disputed domain name is also being used to host a site that impersonates the Complainant’s website at “www.decathlon.fr”, further implying an awareness of the Complainant.
As a result, and in the absence of evidence from the Respondent that the similarity of the disputed domain name to the Mark is coincidental or permitted, the Panel must conclude that the Respondent knew of the Complainant’s rights in the Mark when it registered the disputed domain name.
The Panel therefore finds that the Respondent’s registration of the disputed domain name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Complainant’s Mark.
The disputed domain name is also being used in bad faith since it will lead Internet users to wrongly conclude that the Respondent is connected to the Complainant.
The Panel notes that the Respondent has used the disputed domain name to direct Internet users to a website that will, and is intended to, confuse visitors of its origin and of the lack of any connection with the Complainant. The Respondent has not sought to explain its registration and use of the disputed domain name, has attempted to conceal its identity, and has not participated in these proceedings. In light of the totality of the evidence, there is no basis for the Panel to conclude that the Respondent’s use of the disputed domain name is justified.
Therefore, and on the basis of the information available to it, the Panel must, and does, find that the Respondent’s use of the disputed domain name is without justification and is inconsistent with the Complainant’s exclusive rights in the Mark. Consideration of these and other factors militates in favour of a finding of bad faith.
The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
7. DecisionFor 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
Gareth Dickson
Sole Panelist
Date: November 11, 2021