ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Decathlon v. 谭良伟 (tan liang wei) Case No. D2022-4742 1. The Parties The Complainant is Decathlon, France, represented by AARPI Scan Avocats, France. The Respondent is 谭良伟 (tan liang wei), China. 2. The Domain Name and Registrar The disputed domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the "Registrar"). 3. Procedural History The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 9, 2022. On December 12, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 2022, 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 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 December 15, 2022. On December 13, 2022, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on December 15, 2022. The Respondent did not comment on the language of the proceeding. 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 in English and Chinese of the Complaint, and the proceedings commenced on December 19, 2022. In accordance with page 2 the Rules, paragraph 5, the due date for Response was January 8, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 9, 2023. The Center appointed Jonathan Agmon as the sole panelist in this matter on January 13, 2023. 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 Background The Complainant is one of the major manufacturers specializing in the conception and retailing of sporting and leisure goods based in Villeneuve d'Ascq, France. The Complainant is involved in developing, creating and selling sports and leisure products through its retail outlets and website. The Complainant's origins date back to 1976 when it opened its first retail outlet near Lille, France. In 2022, the Complainant operated 1,747 stores around the world with annual sales of an estimated EUR 13.8 billion. The Complainant is the owner of the DECATHLON word and figurative trademarks worldwide, including but not limited to: - French Trademark Registration No. 1366349 for DECATHLON, registered on January 16, 1987; - European Union Trademark Registration No. 000262931 for DECATHLON, registered on April 28, 2004; and - International Trademark Registration No. 613216 for DECATHLON, registered on December 20, 1993. The Complainant also states it has owned the registered domain name since May 31, 1995. The disputed domain name was registered on June 25, 2014, and currently does not resolve to any active website. 5. Parties' Contentions A. Complainant The Complainant argues that the disputed domain name is confusingly similar to the Complainant's registered DECATHLON mark as the disputed domain name comprises of the DECATHLON mark with the suffix "mall" and the generic Top-Level Domain ("gTLD") ".com". The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name as it has not licensed or permitted the Respondent to use any of its trademarks or register the disputed domain name. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the disputed domain name. The Complainant further argues that the disputed domain name was registered and is being used in bad faith as it does not resolve to any active website and the non-use of the disputed domain name does not preclude a finding of bad faith. B. Respondent The Respondent did not reply to the Complainant's contentions. page 3 6. Discussion and Findings 6.1 Preliminary Issues: Language of the Proceeding Paragraph 11 of the Rules provides that: "(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding." The language of the Registration Agreement for the disputed domain name is Chinese. The Complainant requested that the language of the proceeding be English for the following reasons: (i) the disputed domain name is in the English language; and (ii) translating the Complaint into Chinese would cause an undue burden on the Complainant and unnecessarily delay the proceeding. The Respondent did not comment on the language of the proceeding. The Panel cites the following with approval: "Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time, and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case." (See Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). Having considered the above factors, the Panel determines that English should be the language of the proceeding. The Panel notes that the disputed domain name consists of the Complainant's trademark and an English word "mall", that the Respondent has not participated in this proceeding, and that all of the Center's communications with the Parties have been sent in English and Chinese. The Panel also needs to ensure the proceeding is conducted in a timely and cost-effective manner. In the absence of an objection by the Respondent, the Panel does not find it procedurally efficient to have the Complainant translate the Complaint into Chinese. 6.2 Substantive Issues A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant has provided evidence that it owns the DECATHLON mark. The disputed domain name comprises the Complainant's DECATHLON mark in its entirety with the addition of the suffix "mall" and the gTLD ".com". It is well established that where the 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. page 4 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.8. The Complainant's mark is clearly recognizable in the disputed domain name. Further, it is well established that the adding of the gTLD ".com", as a standard registration requirement, is disregarded under the first element confusing similarity test (WIPO Overview 3.0, section 1.11.1). Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and the element under paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the domain name (WIPO Overview 3.0, section 2.1). In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests. The Complainant has provided evidence that it owned the DECATHLON trademark registrations long before the date that the disputed domain name was registered, and that it is not affiliated with nor has it licensed or otherwise permitted the Respondent to use the Complainant's trademark (see LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138). The Complainant has also submitted evidence that the Respondent is not commonly known by the disputed domain name. In addition, even where a domain name consists of a trademark plus an additional term, panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner (see WIPO Overview 3.0, section 2.5.1). In the present case, the evidence submitted by the Complainant suggests that the Respondent has registered a domain name which incorporates the Complainant's trademark in its entirety plus an additional term related to the Complainant's area of business, which was an attempt to falsely suggests an affiliation with the Complainant. This Panel finds that such use of the disputed domain name is not considered fair use. Further, the Respondent did not submit a Response in the present case and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant's prima facie case. The Panel is therefore of the view that the Respondent has no rights or legitimate interests in respect of the disputed domain name and accordingly, paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith The complainant must show that the respondent registered and is using the domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy. The Complainant has submitted evidence that the Respondent registered the disputed domain name long after the Complainant registered its DECATHLON trademark. Given that the notoriety of the Complainant's mark in the field of retail sport and leisure products, and the fact that the Complainant's trademarks have been registered for a long time, it is highly unlikely that the Respondent did not know of the Complainant and its DECATHLON mark prior to the registration of the disputed domain name. The disputed domain name incorporates the Complainant's DECATHLON mark in its entirety with the additional suffix "mall" and the gTLD ".com", which given the circumstances of this case, the Panel finds is an attempt by the Respondent to confuse and/or mislead Internet users seeking or expecting the Complainant's website. Previous UDRP panels have ruled that in such circumstances "a likelihood of confusion is presumed, and such confusion will page 5 inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site" (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). The Complainant has also submitted evidence that the disputed domain name is being passively held by the Respondent as it resolves to an inactive website. Panels have found that the non-use of a domain name (including a blank or "coming soon" page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good faith use, (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. (See WIPO Overview 3.0, Section 3.3). In this case, the Complainant's has submitted evidence showing that the DECATHLON mark has significant reputation. In addition, the Respondent failed to submit a response and did not provide any evidence. Finally, it is the Panel's finding that it is implausible that the Respondent can put the disputed domain name to any good faith use. Based on the evidence presented to the Panel, including the confusing similarity between the disputed domain name and the Complainant's mark, the notoriety of the Complainant's mark, that no response was submitted by the Respondent in response to the Complaint, and the implausibility of any good faith use to which the disputed domain name may be put, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith. 7. Decision For 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 be transferred to the Complainant. /Jonathan Agmon/ Jonathan Agmon Sole Panelist Date: January 26, 2023
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