Complainant is Decathlon, France, represented by AARPI Scan Avocats, France.
Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Babak Sagharichi, Turkey.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2021. On December 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 27, 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 named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 29, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 29, 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 Respondent of the Complaint, and the proceedings commenced on January 7, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2022. Respondent’s communication was received by the Center on January 22, 2022. The Center notified the Parties of the Commencement of Panel Appointment Process on January 28, 2022.
The Center appointed Kariņa-Bērziņa, Ingrīda as the sole panelist in this matter on February 9, 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 BackgroundComplainant is a French manufacturer specialized in sporting and leisure goods. It sells its goods through its network of shops and operates online stores at the domain names
- International registration No. 613216 for DECATHLON (word mark), registered on December 20, 1993 for goods and services in classes 1, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 16, 17, 18, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 35, 36, 37, 38, 39, and 42;
- International registration No. 684080 for DECATHLON (word mark), registered on December 8, 1997 for services in class 41.
The disputed domain name was registered on June 17, 2021. It does not currently resolve to an active website. The record contains evidence that it previously resolved to a website featuring pay-per-click (“PPC”) links.
5. Parties’ Contentions A. ComplainantComplainant’s contentions can be summarized as follows:
Under the first element, Complainant states that the DECATHLON mark has been used in connection with sport and leisure products since 1976, when a shop of that name was opened in France. Complainant started its business in France in 1980, and the company began its international expansion in 1986. Complainant manufactures its own sports products and also operates online and offline retail outlets. As of 2017, Complainant employed 87,000 employees and has revenues of EUR 11 billion, and operates more than 1,600 stores around the world. The DECATHLON mark has established a reputation internationally and has been recognized as well known by the French courts and by UDRP panels. The disputed domain name is confusingly similar to Complainant’s mark.
Under the second element, Complainant states that Respondent is not commonly known by the disputed domain name, which is not used to promote a bona fide offering of goods or services, nor to support a noncommercial legitimate use. There is no relationship between Complainant and Respondent.
Under the third element, Complainant states that its reputation in the field of retail of sport and leisure articles is such that it is highly likely that Respondent knew of the existence of Complainant’s mark at the time the disputed domain name was registered. The DECATHLON mark and related domain names were registered long before the registration of the disputed domain name, which reproduces Complainant’s mark in its entirety, along with the term “iran”. The disputed domain name originally led to a parking page featuring sponsored links in the French language related to Complainant’s business. The disputed domain name is now inactive.
Complainant requests transfer of the disputed domain name.
B. RespondentRespondent states that he purchased the disputed domain name from the Registrar, but has not commenced any activity for it, and that he is willing to transfer it.
6. Discussion and FindingsParagraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) Respondent has registered and is using the disputed domain name in bad faith.
A. Identical or Confusingly SimilarComplainant has provided evidence, not challenged by Respondent, establishing that it has trademark rights in the DECATHLON mark through registrations in numerous jurisdictions. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.
In comparing Complainant’s DECATHLON mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to it. The disputed domain name comprises Complainant’s DECATHLON mark in its entirety, followed by the term “iran”. It is the consensus view of UDRP panels that, where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark. Moreover, 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. See WIPO Overview 3.0, sections 1.7 and 1.8.
It is the well-established view of UDRP panels that the addition of the generic Top-Level Domain (“gTLD”), in this case, “.com”, to a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsThe circumstances stated in the Complaint and evidence in support set forth in the annexes thereto indicate that Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not authorized by Complainant and is not commonly known by the disputed domain name. Furthermore, the disputed domain name comprises Complainant’s mark, with the addition of a geographic term, thereby creating a likely risk of connection with Complainant. Such holding of the disputed domain name cannot confer rights or legitimate interests.
Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.
Respondent has not provided any rebuttal of Complainant’s prima facie case and has therefore not proved rights or legitimate interests in the disputed domain name. There is no evidence that Respondent is commonly known by the disputed domain name, or that there are any circumstances or activities that would establish Respondent’s rights therein. Rather, as Respondent admits, the disputed domain name is inactive at the time of this decision. The record shows that it previously resolved to a webpage featuring PPC links related to Complainant’s business. It is well-established that such use does not establish rights or legitimate interests. See, e.g., Harpo, Inc. and Oprah’s Farm, LLC v. Robert McDaniel,WIPO Case No. D2013-0585; and The Knot, Inc. v. In Knot We Trust Ltd, WIPO Case No. D2006-0340; Get Away Today.com Inc. v. Warren Gilbert,WIPO Case No. DCO2010-0021. See also WIPO Overview 3.0, section 2.9, and cases cited thereunder.
Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithThe Panel finds that Complainant has demonstrated Respondent’s bad faith registration and use of the disputed domain name. Complainant provides uncontroverted evidence that its rights in the DECATHLON mark predate the registration of the disputed domain name by more than 30 years. The disputed domain name contains Complainant’s DECATHLON mark together with the term “iran”. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4. Respondent has not provided any information that would rebut this presumption.
The evidence provided by Complainant indicates that the disputed domain name used to resolve to a PPC website with keywords related to Complainant’s industry. The Panel finds this is evidence of bad faith use of the disputed domain name. Under similar circumstances, previous UDRP panels have found bad faith. See, for instance, Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315; Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912.
The Panel also finds that Respondent has demonstrated bad faith by passive holding of the disputed domain name. Such a finding is consistent with previous UDRP decisions, such as Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. See also WIPO Overview 3.0, section 3.3. Complainant has provided sufficient evidence that its DECATHLON mark is well known, and Respondent has provided no evidence of actual or contemplated good faith use of the disputed domain name. Respondent has not presented any rational basis for registering and using the disputed domain name, nor does the Panel find that any such a basis is plausible. Such circumstances indicate bad faith in registration and use of the disputed domain name.
The Panel therefore finds that Complainant has established the third element under paragraph 4(a) 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
Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: February 22, 2022