ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Decathlon v. Client Care, Web Commerce Communications Limited Case No. D2024-0020 1. The Parties The Complainant is Decathlon, France, represented by AARPI Scan Avocats, France. The Respondent is Client Care, Web Commerce Communications Limited, Malaysia 2. The Domain Names and Registrar The disputed domain names, , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and , are registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2024. On January 8, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 9, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (N/A) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 11, 2024, 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 January 12, 2024.
page 2 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 January 15, 2024. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 5, 2024. The Center appointed Ian Lowe as the sole panelist in this matter on February 9, 2024. 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 a French manufacturer engaged in the design and sale of sporting and leisure goods. It was founded in 1976 and has traded under the name and mark DECATHLON since at least 1980. By 2017 the Complainant was employing 87,000 employees worldwide with annual sales of 11 billion euros. In January 2022 it was operating 1,747 stores throughout the world. The Complainant is the proprietor of numerous registered trademarks around the world in respect of the word mark DECATHLON including France trademark number 1366349 registered on January 16, 1987; European Union trademark number 262931 registered on April 28, 2004; and International trademark number 613216 registered on December 20, 1993 designating over 45 countries. The Complainant operates a number of websites promoting and offering its products for sale, including “www.decathlon.com” and “www.decathlon.fr” which feature the following logo, comprising its stylised word mark DECATHLON against a blue background (the “Decathlon Logo”): The disputed domain names were variously registered on December 22, December 23, or December 26, 2023. With the exception of the disputed domain name , they all resolve to substantially similar websites featuring the Decathlon Logo and purporting to offer for sale a wide range of DECATHLON clothing, footwear, backpacks and accessories at significantly discounted prices in currencies appropriate to the respective domain name. The disputed domain name does not currently resolve to an active website, but at the time of preparation of the Complaint similarly resolved to a DECATHLON branded website. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain names are confusingly similar to its DECATHLON mark (the “Mark”), that the Respondent has no rights or legitimate interests in respect of the disputed domain names and that the Respondent registered and is using the disputed domain names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions.
page 3 6. Discussion and Findings For this Complaint to succeed in relation to the disputed domain names the Complainant must prove that: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar The Complainant has uncontested rights in the Mark, both by virtue of its trademark registrations and as a result of the goodwill and reputation acquired through its use of the Mark over many years. Ignoring the generic Top-Level Domain (“gTLD”) “.com”, the disputed domain names all comprise the entirety of the Complainant’s DECATHLON mark. In addition: - they all comprise a geographic reference, whether the name of a country (e.g., “canada” and “egypt”); or a two-letter country code (e.g., “gr” and “sk”); or the name of a city (e.g., “barcelona” and “paris”); or a combination of these; - some also comprise the words “online” or “store” or the relevant foreign language term for “store” (e.g., “tienda” – Spanish; “winkel” – Dutch; “lojas” - Portuguese); - some also comprise the relevant foreign language term for “backpack” (e.g., “mochilas” – Spanish/Portuguese; “sac a dos” – French; “nahrbtnik” – Slovenian; “zaini” - Italian); - some also comprise additional dictionary words – “telefono”, “tenis” and “near me”. Since the entirety of the Mark is reproduced within the disputed domain names, the disputed domain names are confusingly similar to the Mark for the purposes of the Policy (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)) and in the Panel’s view the various additions do not prevent a finding of confusing similarity between the disputed domain names and the Mark. Accordingly, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights, and the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. Accordingly, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the disputed domain names. The Respondent has used the disputed domain names not in connection with a bona fide offering of goods or services, but for websites purporting to offer for sale a very wide range of what claim to be the Complainant’s products at substantially discounted
page 4 prices. There is no suggestion that the Respondent has ever been known by the disputed domain names (WIPO Overview 3.0, section 2.3) and the Complainant has not authorised the Respondent to use the Mark. In addition, the nature of the disputed domain names carries a risk of implied affiliation with the Complainant’s Mark. WIPO Overview 3.0, section 2.5.1. Having reviewed the available evidence, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the disputed domain names and finds the second element of the Policy has been established. C. Registered and Used in Bad Faith In light of the nature of the disputed domain names, all comprising the entirety of the Mark, and the use to which the Respondent has put the disputed domain names – for websites purporting to sell the Complainant’s goods at substantially discounted prices – the Panel is in no doubt that the Respondent had the Complainant and its rights in the Mark in mind when it registered each of the disputed domain names. The Respondent has used the disputed domain names comprising the Complainant’s DECATHLON mark for websites that impersonate the Complainant using the Decathlon Logo and offering to sell what purport to be the Complainant’s products. In the Panel’s view, this cannot amount to fair use, and the Respondent has intentionally attempted to attract Internet users, for commercial gain, by creating a likelihood of confusion with the Complainant’s Mark. Accordingly, the Panel finds that the Complainant has established the third element of the Policy. 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 names, , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and , be transferred to the Complainant. /Ian Lowe/ Ian Lowe Sole Panelist Date: February 16, 2024
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