The Complainant is Decathlon SAS of Villeneuve d’Ascq, France, represented by AARPI Clairmont Avocats, France.
The Respondent is Chen Boxin of Hangzhou, Zhejiang, China. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2017. On March 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 31, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 April 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 24, 2017.
The Center appointed John Swinson as the sole panelist in this matter on May 3, 2017. 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 Decathlon SAS, a well-known French retail chain which has been operating since 1976. The Complainant designs, manufactures and sells athletic apparel and equipment. These goods are marketed under 20 core brands.
Based on figures from the end of 2016, the Complainant has 78,000 employees worldwide and 1,171 stores throughout the world. Annual sales are close to EUR 10 billion.
The Quechua brand is one of the Complainant’s 20 core brands. It was created in 1997 in France and is dedicated to hiking. Quechua merchandise is endorsed by a number of famous sportspeople and the brand is well known for a number of innovative products.
The Complainant owns registered trade marks for QUECHUA in a number of jurisdictions, the earliest of which was filed on October 30, 1997 (French registered trade mark number 97702142) (the “Trade Mark”).
The Complainant is also the owner of number domain names consisting of or containing their Trade Mark, including: , , , and . Quechua products are promoted, and are available to be purchased, via these websites.
The Disputed Domain Name was registered on October 16, 2014. The website at the Disputed Domain Name (“Respondent Website”) is a parking page featuring generic pay-per-click (“PPC”) links. The parking page also includes a link stating “enquire about this domain” which leads to a page which states that the domain name might be for sale. 5. Parties’ Contentions A. Complainant
Identical or confusingly similar
The Complainant contends that the Disputed Domain Name is confusingly similar to the Trade Mark given that it fully comprises the Trade Mark. The Complainant points out that the only difference between the Disputed Domain Name and their Trade Mark is the addition of the “.co” country-code Top-Level Domain (“ccTLD”). The Complainant submits that this is irrelevant as it does not reduce the confusing similarity to their Trade Mark.
The Complainant also highlights that while the ccTLD is the country code for Columbia, it is also a code which is marketed and sold by registrars as a shortened form of .com, or possibly to suggest “company”, “corporation” or “commerce” rather than Columbia.
Rights or legitimate interests
With regard to whether the Respondent has any rights or legitimate interests in the Disputed Domain Name, the Complainant submits that the Respondent has no connection with the Complainants’ business or with the Disputed Domain Name to be able to demonstrate a bona fide connection with the offering of goods or services. Furthermore, the Complainant has never authorised the Respondent to register or use its Trade Mark. As such, the Complainant states that the Respondent has deprived them of a strategic domain name.
Registration and use in bad faith
In order to establish bad faith, the Complainant argues that the Respondent would have been aware of its brand and international reputation and registered the Disputed Domain Name for the sole purpose of capitalising on their fame and goodwill.
The Complainant argues that the Respondent registered, and is currently using, the Disputed Domain Name for the purpose of commercial gain with the express intention of selling it, potentially to the Complainant or one of its competitors. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must prove that each of the elements provided in paragraph 4(a) of the Policy have been met. These include:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
Regardless of the fact the Respondent has not filed a response, the onus of proving these elements remains on the Complainant. A. Procedural Issues
No response from the Respondent
The Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyP,WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Panel considers that the Disputed Domain Name, which incorporates the Trade Mark in its entirety, is confusingly similar to the Trade Mark.
In addition, the Panel considers that the Respondent’s choice of ccTLD could cause additional confusion given it is so similar to the Complainant’s domain name which redirects to their primary website “www.”. Previous panels have found that the standard suffix “.co” enhanced the likelihood of confusion given it could be construed as a misspelling of the generic TLD “.com” (see, e.g., Caviar Petrossian v. Bihua Hosting,WIPO Case No. DCO2013-0004). This view is supported by the Panel in this case.
The Complainant is successful on the first element of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
The Panel finds that the Complainant has made out a prima facie case. This finding has been reached after consideration of the following facts:
- The Respondent has not used or made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. The Respondent Website is commercial in nature. It is a PPC link website which presumably generates “click-through” advertising revenue. The Disputed Domain Name is not being used to describe the sponsored links, and is not related to the content of the website. Nor is the website used to display information on the “Quechua people”. There is also a statement on the Respondent Website which suggested the Disputed Domain Name is for sale. In the circumstances, this use in not bona fide.
- The Panel accepts that the Respondent’s use of the Disputed Domain Name is unauthorised and without permission from the Complainant.
- There is no evidence that the Respondent is, or has ever been, known by the Disputed Domain Name.
- The Respondent has no connection whatsoever to the Complainant’s business.
- There is no evidence to suggest the Respondent is making, or has ever made, any legitimate noncommercial or fair use of the Disputed Domain Name.
The Respondent, despite having the opportunity to present a defence, chose not to submit a Response. Consequently, the Respondent has not rebutted the Complainant’s prima facie case.
The Complainant is successful on the second element of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Complainant’s brand is a well-known company that has been in operation for more than 40 years. It has grown into a business that employs 78,000 people worldwide and generates annual sales of nearly 10 billion euros. While the business began in France, 65 percent of its 1,171 stores are now located outside of France. It is evident that the Complainant has taken measures to protect their intellectual property by registering trade marks and domain names associated with their business. The Trade Mark is protected in a number of jurisdictions and a number of domain names have been registered which incorporate the Trade Mark.
The Panel believes it is highly probable that the Respondent was aware of the Complainant when registering the Disputed Domain Name and registered the Disputed Domain Name for the primary purpose of commercial gain.
It appears that the Respondent has not used the Disputed Domain Name other than to display PPC links. While these links do not advertise products which compete with the Complainant’s products, the Respondent is presumably deriving a financial benefit from PPC revenue from that website.
The website at the Disputed Domain Name also contains a link offering the Disputed Domain Name for sale. As the Respondent has provided no other reason to explain the registration of the Disputed Domain Name, it is open to the Panel to infer that the Respondent registered the Disputed Domain Name primarily for the purpose of selling it for more than the Respondent’s out-of-pocket costs (see paragraph 4(b)(i) of the Policy).
The Panel considers that the most likely source of traffic that the Disputed Domain Name would generate is from Internet users who mistakenly type the Disputed Domain Name into their Internet browser instead of the Complainant’s domain name. As such, the Panel also infers that the Respondent has attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to the source, affiliation or endorsement of the website. This amounts to evidence of bad faith use under paragraph 4(b)(iv) of the Policy.
The Disputed Domain Name is not descriptive of the services advertised via the PPC links. Based on the case file there appears to be no other obvious reason for the Respondent to register this particular domain name other than for the purpose of attempting to trade off the Complainant’s goodwill in the Trade Mark.
These inferences are open to the Panel on the evidence provided. The Respondent had an opportunity to rebut the Complainant’s contentions, but did not do so. It has not provided any evidence as to its reasons for registering and using the Disputed Domain Name. Therefore, the Panel finds the Respondent has registered and is using the Disputed Domain Name in bad faith.
On these points, see this Panel’s decision in PHH Corporation v. Wu Shangxiao,WIPO Case No. D2015-0825.
As stated by the panel in Nike, Inc v. B.B. de Boer,WIPO Case No. D2000-1397, “since the Complainant’s trademark is well-known throughout the world, it is very unlikely, if not nearly impossible, that, when the Respondent registered the Domain Name, it was not aware that it was infringing on the Complainant’s trademark rights”.
The Complainant is successful on 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 Name, , be transferred to the Complainant.
John Swinson
Sole Panelist
Date: May 16, 2017
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