The Complainant is Decathlon, France, represented by AARPI Scan Avocats, France.
The Respondent is Contact Privacy Inc. Customer 12411289829, Canada / Marina, Brazil.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2021. On December 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 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 January 13, 2022, 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 in English on January 19, 2022.
On January 13, 2022, the Center transmitted another email communication to the Parties in English and Portugese regarding the language of the proceeding. On January 19, 2022, the Complainant submitted its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint 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 January 25, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2022.
The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on February 28, 2022. 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 Decathlon, a major French manufacturer specialized in the conception and retailing of sporting and leisure goods.
Since 2008, the Decathlon Group runs two main activities: the creation of sports products on the one hand and local and online commerce on the other hand. Internationally oriented, the company Decathlon is present on French (35 percent of its stores) and International (65 percent of its stores) markets.
In June 2021, the company Decathlon employs 99,165 employees worldwide with annual sales of EUR 11.4 billion. In 2021, it was operating 1,714 stores throughout the world.
The Complainant is the registered owner of a large number of trademarks consisting or including the wording DECATHLON in France and abroad, including, inter alia, International Registration No. 613216 for DECATHLON, registered on December 20, 1986. The Complainant also provides evidence that the DECATHLON trademark has been recognized repeatedly by the French judicial courts and prior UDRP decisions as a well-known trademark.
To promote its reputation on the Internet and sell its products, the Complainant registered numerous domain names, among which:
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The disputed domain name was registered on October 13, 2021, and redirects to the Complainant’s official website in Brazil “www.decathlon.com.br”.
5. Parties’ Contentions A. ComplainantThe Complainant states that the disputed domain name is confusingly similar to its DECATHLON trademarks as it identically reproduces the wording “decathlon” with the sole addition of the letters “br” separated with a hyphen, which will remain unnoticed by Internet users.
The Complainant also states that the adjunction of “-br” may be perceived as a way to indicate to users that the disputed domain name resolves to an official website targeting the Brazilian public, which increases the risk of confusion once the letters “br” correspond to the country code of Brazil, a territory where the Complainant operates, for example through the website “www.decathlon.com.br”.
Also, the Complainant states that the generic Top-Level Domain (“gTLD”) “.com” is not of distinguishing effect and must be removed from analysis.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name and the Complainant has never given any authorization or permission whatsoever to the Respondent to register or to use the disputed domain name.
Finally, the Complainant states that disputed domain name was registered and is being used in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings6.A. Preliminarily Matter – Language of the Proceeding
The Complainant requests that the language of proceedings be English as neither the Complainant nor its representatives are familiar with the Portuguese language. The Complainant supports this request by raising several points namely that the disputed domain name contains the English word “decathlon”, rather than the Portuguese word “declato”. Moreover, the Complainant argues that the commission of a translator would unfairly add additional costs and time on the Complainant.
Noting the Respondent did not reply to the Complainant’s contentions or object to the Complainant’s request that the language of the proceeding be English, and following the overriding principles in paragraph 10, in particular 10(b), stating that the parties should be treated equally and given a fair opportunity to present their case, and 10(c) preserving the time span of the process, the Panel agrees that compelling the translation of the case into Portuguese would not be in line with these principles. Moreover, the Panel notes that the Center’s communications to the Parties have been transmitted in both English and Portuguese. The Panel would have accepted a response in either English or Portuguese, however, no response was received by the Center.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.
6.B. Substantive Matters
A. Identical or Confusingly SimilarThe Complainant owns several trademark registrations for the trademark DECATHLON. The Panel is satisfied that the Complainant has established its ownership of the trademark DECATHLON.
The disputed domain name comprises the Complainant’s trademark DECATHLON with the addition of the letters “br” separated by a hyphen.
As stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”, section 1.8, 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. Here, the trademark DECATHLON is clearly recognizable in the disputed domain name.
The gTLD “.com” is a standard technical requirement and should generally be ignored when assessing confusing similarity, as also established by prior UDRP decisions.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe Complainant has made a prima facie case showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that the Respondent is not affiliated with nor authorized by the Complainant in any way and never authorized the Respondent to use its trademark as part of the disputed domain name. In these circumstances, using the confusingly similar disputed domain name to redirect Internet users to the Complainant’s Brazilian website does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use.
The Respondent did not reply to the Complainant’s contentions, therefore has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name.
Moreover, the nature of the disputed domain name carries a risk of implied affiliation (see WIPO Overview 3.0, section 2.5.1).
Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Complainant and its trademark are well-known worldwide. The Complainant has demonstrated the strong reputation and the leading position of its trademark DECATHLON throughout the world in the field of selling goods and products related to sport.
As a consequence, the reputation of the Complainant’s trademark in the field of retail of sport and leisure articles is such that it is highly likely that the Respondent knew of the existence of the Complainant’s trademark at the time the disputed domain name was registered. Also, as set out in WIPO Overview 3.0, section 3.1.4, redirecting a domain name to a complainant’s website may be evidence of bad faith. In these circumstances, it is clear that the Respondent knew of the Complainant’s trademark DECATHLON and is seeking to take unfair advantage of or otherwise abuse the Complainant’s trademark.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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
Gonçalo M. C. Da Cunha Ferreira
Sole Panelist
Date: March 15, 2022