The Complainant is Decathlon, France, represented by AARPI Scan Avocats, France.
The Respondent is Claudiu Badea, Romania.
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 Domain Name. On September 22, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 24, 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 28, 2021.
The Center appointed Gregor Vos as the sole panelist in this matter on November 14, 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 well-known French company active in the field of sports and leisure products.
The Complainant is the owner of inter alia the following French, international and European Union trademark registrations (hereinafter jointly referred to as: the “Trademarks”):
- French registration No. 1366349 for DECATHLON registered on April 22, 1986;
- International registration No. 613216 for DECATHLON registered on December 20, 1993, with designation of inter alia Australia, China and Romania; and
- European Union registration No. 000262931 for DECATHLON registered on April 28, 2004.
Further, it is undisputed that the Complainant is the holder of inter alia the following domain names:
-
-
-
The Domain Name was registered on June 2, 2020 and currently resolves to a website on which different sports and clothing products are offered for sale.
5. Parties’ Contentions A. ComplainantWith the Complaint, the Complainant seeks that the Domain Name is transferred to the Complainant. The Complaint is based on the following factual and legal grounds: the Domain Name is identical or confusingly similar to the Trademarks of the Complainant, the Respondent has no rights or legitimate interests in the Domain Name, and the Domain Name has been registered and is being used in bad faith.
Firstly, according to the Complainant, the Domain Name is identical or confusingly similar to its well-known Trademarks. The Domain Name reproduces the Trademarks entirely with the mere addition of the generic Top-Level Domain “.site” and the deletion of the letter “H”.
Secondly, according to the Complainant, the Respondent has no rights or legitimate interests in the Domain Name. The Respondent has never received a license or any other form of authorization from the Complainant to use the Trademarks and is not commonly known under the name DECATLON nor under the name DECATHLON. The website linked to the Domain Name does not provide visitors with any information on the Complainant and only seems to be used to attract visitors to the Respondent’s by diverting them from the Complainant’s website.
Finally, according to the Complainant, the Respondent has registered and is using the Domain Name in bad faith. In light of the well-known character of the Complainant’s Trademarks, it is inconceivable that the Respondent registered the Domain Name without knowledge of the Complainant and its Trademarks. Also, according to the Complainant, the Domain Name is being used in bad faith, since the Domain Name resolves to a website that mimics the Complainant’s websites and graphic charter and mimics the Complainant by offering to sell sports related products.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn view of the lack of a response filed by the Respondent as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(f), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding on the basis of the Complainant’s undisputed factual presentations.
For the Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
i. the Domain Name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in respect of the Domain Name; and
iii. the Domain Name has been registered and is being used in bad faith.
Only if all three elements have been fulfilled, the Panel is able to grant the remedies requested by the Complainant. The Panel will deal with each of the requirements in turn.
A. Identical or Confusingly SimilarParagraph 4(a)(i) of the Policy requires the Complainant to show that the Domain Name is (i) identical or confusingly similar to a trademark or service mark, (ii) in which the Complainant has rights.
With respect to having rights pursuant to paragraph 4(a)(i) of the Policy, it is noted that the Complainant is registered as the owner of the trademark DECATHLON. Consequently, the Panel finds that the Complainant has proven that it has rights in the Trademarks.
With regard to the assessment of identity or confusing similarity of the Domain Name with the Trademarks, it is generally accepted that this test involves a reasoned but relatively straightforward comparison between the Complainant’s Trademarks and the Domain Name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In 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 (see section 1.7 of the WIPO Overview 3.0).
In the present case, the Trademarks are incorporated almost in their entirety and are recognizable within the Domain Name. The addition of the generic Top-Level Domain “.site” and the deletion of the letter “h” does not prevent a finding of confusing similarity with the Trademarks (see sections 1.7 and 1.11 of the WIPO Overview 3.0). Consequently, the Panel finds that the requirement under paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate InterestsThe second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Domain Name. The onus of proving this requirement, like each element, falls on the Complainant. Given the difficulty in proving a negative, however, it is usually sufficient for a complainant to make out a prima facie case that a respondent lacks rights or legitimate interests. If a complainant does establish a prima facie case, the burden of production shifts to the respondent (see, e.g. WIPO Overview 3.0, section 2.1; Sanofi v. Cimpress Schweiz GmbH, WIPO Case No. D2017-0522).
Paragraph 4(c) of the Policy lists three non-limitative examples of instances in which a respondent may establish rights or legitimate interests in the disputed domain name.
The Complainant has substantiated that none of these circumstances apply in this case. By defaulting, the Respondent has failed to rebut the prima facie case established by the Complainant. Furthermore, based on the record before it, the Panel does not see an indication that any of the circumstances of paragraph 4(c) of the Policy is present.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. Paragraph 4(a)(ii) is thereby fulfilled.
C. Registered and Used in Bad FaithUnder paragraph 4(a)(iii) of the Policy, a complainant must show that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four non-limitative circumstances which may be considered as evidence of registration and use in bad faith of a domain name.
In the present case, the Trademarks are registered by the Complainant and have been used for many years. The Complainant’s rights to the Trademarks predate the registration date of the Domain Name. In light of the well-known character of the Trademarks, the Panel agrees with the Complainant that it is not conceivable that the Respondent chose the Domain Name without knowledge of the Complainant’s activities and its Trademarks under which the Complainant is doing business. The well-known character of the Trademarks of the Complainant has been confirmed by earlier UDRP panels (see e.g. 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; and Decathlon v. Decat,WIPO Case No. D2008-1523).
Further, the Panel has found that the Respondent lacks any rights to or legitimate interest in the Domain Name and finds that the Respondent mimics the Complainant’s activity by offering for sale similar sports products. Therefore, the Panel finds from the present circumstances that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s Trademarks as to the source, sponsorship, affiliation or endorsement(see e.g. “Dr. Martens” International Trading GmbH / “Dr. Maertens” Marketing GmbH v. Joan Mitchell,WIPO Case No. D2018-0226).
Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith and that the third element of paragraph 4(a)(iii) of the Policy is fulfilled.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name,
Gregor Vos
Sole Panelist
Date: November 24, 2021