The Complainant is Decathlon, France, represented by AARPI Scan Avocats, France.
The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland/ Tanya Rivera, United States of America.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2021. On December 27, 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 the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 28, 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 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 the Respondent of the Complaint, and the proceedings commenced on December 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 19, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 20, 2022.
The Center appointed Luca Barbero as the sole panelist in this matter on January 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 a major French manufacturer founded on July 27, 1976 by Michel Leclercq who opened his first Decathlon self-service supermarket dedicated to sport and leisure products near Lille, in the North of France, with the aim of “equipping under one roof and at the best price all athletes, from beginners to enthusiast”. The Complainant is in fact specialized in the conception and retailing of sporting and leisure goods.
In 1986, while the subsidiary Decathlon Production was created with the mission of ensuring the design and manufacture of articles marked Decathlon, the company opened its first store outside of French territory, in Germany.
Growing production demands gave birth to a new international production office in Asia in 1988 followed in 2008, by the opening of its first Chinese store in Shanghai.
Since 2008, the Decathlon Group runs two main activities: the creation of sports products on the one hand and local commerce and other online on the other. Companies involved in Decathlon Group intervene therefore in different levels of the product development: research and development to sales through design, production and logistics.
Internationally oriented, the Complainant is present on French (35% of its stores) and International (65% of its stores) markets and by June 2021, employs 99,165 people worldwide with annual sales of EUR 11,4 billion. In 2021, it was operating 1,718 stores throughout the world.
The Complainant has provided evidence of ownership of trademarks consisting of, or comprising DECATHLON, including the following:
- French trademark registration n. 1366349 for DECATHLON (word mark), filed on April 22, 1986, in international classes 3, 4, 5, 8, 9, 12, 13, 14, 16, 18, 20, 21, 22, 24, 25, 28, 32, 33, 35, 37, 39, 40, 42, 43, 44, and 45;
- European Union Trade Mark registration n. 000262931 for DECATHLON (word mark), filed on May 6, 1996 and registered on April 28, 2004, in international classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 1 0, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, and 42;
- International trademark registration n. 613216, for DECATHLON (word mark), registered on December 20, 1993, in international classes 1, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 16, 17, 18, 20, 21, 2 2, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 35, 36, 37, 38, 39, and 42.
The Complainant is also the owner of the domain names
The disputed domain name
The Complainant contends that disputed domain name
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name because it is not commonly known by the disputed domain name and has failed to use the disputed domain name in connection with a bona fide offering of goods or services since the latter resolves to an error page stating that the disputed domain name is not connected to any website and does not provide Internet users with any information related to the Complainant’s historical background or its commercialized products or services.
The Complainant emphasizes that the Respondent is also in no way related to the Complainant, nor was it ever granted any authorization or permission to register or use the disputed domain name in any way.
The Complainant indicates that, by registering the disputed domain name, the Respondent intentionally attempt to create confusion in order to divert consumers from the Complainant’s websites to its own website, which is not used to promote a bona fide offering of goods or services, nor to serve a noncommercial legitimate purpose.
The Complainant states that the Respondent registered and is using the disputed domain name in bad faith since, in light of its reputation and world renown in the field of retail of sport and leisure articles, and considering the Complainant registered its trademark for DECATHLON long before the registration of the disputed domain name, the Respondent could not have been unaware of the Complainant at the time of registering the disputed domain name.
The Complainant underlines that it is also highly unlikely that the Respondent intended to use the disputed domain name in good faith since the disputed domain name resolves to an error page stating the disputed domain name is not linked to an active website, which proves that the Respondent did not intend to make available any content.
The Complainant further highlights that MX records have been activated in relation to the disputed domain name, which suggests that the Respondent intended to use the latter, to also support email accounts purportedly to create a phishing campaign or send fraudulent emails aimed at the Complainant’s customers.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsAccording to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Panel finds that the Complainant has established rights over the trademark DECATHLON based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annexes F1 to F3 to the Complaint.
It is well accepted that the first element functions primarily as a standing requirement, and that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain names to assess whether the trademark is recognizable within the disputed domain name (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel finds that the disputed domain name is identical to the Complainant’s trademark DECATHLON as it reproduces the trademark DECATHLON in its entirety with the mere addition of the generic Top-Level Domain “.work”, which is generally disregarded under the first element confusing similarity test (section 1.11.1 of the WIPO Overview 3.0).
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is identical to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the case at hand, the Panel finds that the Complainant has made a prima facie case and that the Respondent, by not submitting a Response, has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.
Moreover, there is no indication before the Panel that the Respondent is commonly known by the disputed domain name, has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the disputed domain name.
Indeed, as highlighted above, the Respondent has pointed the disputed domain name to an error page and has not provided any explanation about the reason why it registered the disputed domain name from which a possible fair use could be inferred. Furthermore, the Panel finds that the disputed domain name, being identical to the Complainant’s trademark, carries a high risk of implied affiliation (section 2.5.1 of the WIPO Overview 3.0).
Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithFor the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
In the case at hand, the Panel finds that, in light of i) the prior registration and use of the Complainant’s trademark DECATHLON in connection with the Complainant’s retail of sport and leisure articles; ii) the well-known character of the trademark also in the Respondent’s country, recognized also in prior UDRP decisions and iii) the identity of the disputed domain name with the Complainant’s trademark, the Respondent very likely registered the disputed domain name having the Complainant’s trademark in mind.
Moreover, in view of the notoriety of the Complainant’s trademark DECATHLON, the Panel finds that the Respondent acted in opportunistic bad faith at the time of registration, since the disputed domain name is so obviously connected with the Complainant that its very selection by the Respondent, who has no connection with the Complainant, suggests the disputed domain name was registered with a deliberate intent to create an impression of an association with the Complainant.
As to the use of the disputed domain name in bad faith, it does not resolve to an active website, but to an error page. However, it is well established that the non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding, as stated i.e. in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and section 3.3 of the WIPO Overview 3.0.
Indeed, in view of the Respondent’s registration of a domain name identical to the Complainant’s trademark, the absence of any documented rights or legitimate interests of the Respondent in the disputed domain name and its failure to respond to the Complaint, the Panel finds that the Respondent’s lack of use of the disputed domain name also amounts to bad faith.
Moreover, the fact that the mail exchanger record (MX record), which identifies the mail server dedicated to accepting email messages on behalf of a specific domain name, is configured, clearly suggests that the Respondent is using or is preparing to use the disputed domain name also to send and receive email communications. Such messages would in fact result to be sent from [...]@decathlon.work email addresses which therefore would certainly be apt to mislead the recipients as to their source and as to the endorsement of the content by the Complainant. The Panel considers this fact as a relevant additional circumstance evidencing the Respondent’s bad faith.
Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and has been using the disputed domain name in bad faith according to 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
Luca Barbero
Sole Panelist
Date: February 12, 2022