The Complainant is Decathlon, of France, represented by AARPI Scan Avocats, France.
The Respondent is PGM Marketing, of Netherlands. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2019. On the same day, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On August 30, 2019, SIDN 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 Dispute Resolution Regulations for .nl Domain Names (the “Regulations”). In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 6, 2019. In accordance with the Regulations, article 7.1, the due date for Response was September 26, 2019. The Center received email communications from the Respondent on September 23, and 25, 2019, willing to settle the dispute. The Respondent did not submit a formal response. On October 4, 2019, SIDN commenced the mediation process. On November 20, 2019, SIDN informed parties that the dispute had not been solved in the mediation process. The Center appointed Willem Hoorneman as the panelist in this matter on December 5, 2019. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background The Complainant is a French manufacturer and retailer of sporting and leisure goods and is holder of various trademarks comprising the word QUECHUA. Among these trademark registrations, the following trademarks designate the Netherlands: European Union trademark registration No. 6429501 (registered on October 7, 2008); European Union trademark registration No. 6781058 (registered on January 20, 2009) and international trademark registration No. 700271 (registered on January 14, 1998). The above mentioned trademarks all comprise the single word QUECHUA. Hereinafter, the above trademarks are collectively being referred to as “Trademarks”’. Furthermore, the Complainant is the registrant of inter alia the following domain names: The disputed domain name was registered by Respondent on May 24, 2018 and resolves to a website selling tents from different brands and using the official pictures of QUECHUA 5. Parties’ Contentions A. Complainant The Complainant asserts that it is the rightful holder of the well-known Trademarks and that the disputed domain name infringes its Trademarks by incorporating the Trademarks in their entirety. The Complainant claims that the disputed domain name is confusingly similar to its Trademarks as the Trademarks have been incorporated in the disputed domain name in their entirety while only adding a generic term to it. The Complainant further asserts that the Respondent has no rights or legitimate interests in the disputed domain name as the Respondent is not in any way related to the Complainant’s business, that the Complainant has not authorized the Respondent to register a domain name incorporating the Complainant’s Trademarks, and that the disputed domain name is being used to sell infringing, competing or unauthorized products. Moreover, the Complainant claims that the disputed domain name has been registered in the bad faith by the Respondent. The Complainant claims that it is highly likely that Respondent was aware of Complainant’s prior rights and that Complainant’s notoriety in the field of sporting, leisure goods and camping gear is such that a prima facie presumption is raised that the Respondent registered the disputed domain name for the purpose of selling it to the Complainant or one of its competitors, or that it was intended to be used in some way to attract for commercial gain users to the website by creating a likelihood of confusion with the Complainant’s Trademarks. The Complainant further claims that the disputed domain name is being used in bad faith as the disputed domain name redirects to a website on which infringing, competing or unauthorized products are being sold. In addition, the Complainant claims that the fact that on said website official pictures and product’s description of its Trademark are being displayed contributes to the establishment of bad faith use by the Respondent. B. Respondent The Respondent submitted informal email communications on September 23 and 25, 2019 but he did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to article 2.1 of the Regulations, to be successful the Complainant’s request to transfer the disputed domain name must meet three cumulative conditions: (a) The disputed domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the Complainant has rights, or other name by means of article 2.1(a) under II of the Regulations; (b) The Respondent has no rights or legitimate interests in the disputed domain name; and (c) The disputed domain name has been registered or is being used in bad faith. The Respondent may demonstrate such rights or legitimate interests on its part, inter alia, through the circumstances mentioned in article 3.1 of the Regulations as listed below. The Complainant may provide evidence that the disputed domain name has been registered or is being used in bad faith, inter alia, through the circumstances mentioned in article 3.2 of the Regulations as listed below. As the Respondent has not filed any response, the Panel shall rule on the basis of the Complaint. In accordance with article 10.3 of the Regulations, the Complaint shall in that event be granted, unless the Panel considers it to be without basis in law or fact. A. Identical or Confusingly Similar The Complainant has provided copies of its registered Trademarks. It is established case law under the Regulations that the country code Top-Level Domain (“ccTLD”) “.nl” may be disregarded in assessing the confusing similarity between the disputed domain name on the one hand, and the relevant trademark on the other hand (see: Taylor Made Golf Company, Inc. v. Lotom Group S.A.,WIPO Case No. DNL2010‑0067; Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008‑0008). The disputed domain name is confusingly similar to the Trademarks as it incorporates these entirely. The disputed domain name differs only in that the suffix “-tent” has been added to the term “quechua”. This addition does not prevent a finding of confusing similarity as “quechua” remains the dominant element. It is established case law that the mere addition of a dictionary term element (in this case: “-tent”, bearing the same meaning in Dutch as well as English) before or after a trademark is insufficient to distinguish or differentiate the disputed domain name from the Complainant’s Trademark. In conclusion, the Panelist finds that the domain name is confusingly similar to the Trademarks within the meaning of the Regulations. The Complainant has thus established the first element of article 2.1 of the Regulations. B. Rights or Legitimate Interests According to established case law, the Complainant needs to show prima facie that the Respondent has no rights to or legitimate interests in the domain name (see LEGO Juris A/S v. Moensch, WIPO Case No. DNL2009-0052). While the overall burden of proof rests with the complainant, previous panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once such prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, the complainant is generally deemed to have satisfied the second element of article 2.1 of the Regulations (see, Schleich GmbH v. Ligteringen, M,WIPO Case No. DNL2018-0033). A respondent may demonstrate such rights or legitimate interests on its part inter alia through any of the following non-limitative circumstances listed in article 3.1 of the Regulations: a. before having any notice of the dispute, the respondent made 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; b. the respondent as an individual, business or other organization is commonly known by the domain name; c. the respondent is making a legitimate noncommercial use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish or otherwise damage the relevant trademark, trade name, personal name, name of a Dutch public legal entity or name of an association or foundation located in the Netherlands. The Respondent has not provided any evidence that it is known by the name “quechua”. Noting the asserted facts, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has failed to address the Complainant’s prima facie case, and the Panel sees no indication of the Respondent meeting any of the above mentioned circumstances or any other basis for a right to or legitimate interest in the disputed domain name. Based on the foregoing, the Panel is of the opinion that the Complainant has met the conditions of article 2.1 of the Regulations and has shown that the Respondent has no rights to or legitimate interests in the Domain Name. C. Registered or Used in Bad Faith Article 3.2 of the Regulations provides that any of the following non-limitative circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith: a. the domain name has been registered or acquired primarily for the purpose of selling, renting or transferring it to the complainant or to the complainant’s competitors for valuable consideration in excess of the cost of registration; b. the domain name has been registered in order to prevent the complainant from using it; c. the domain name has been registered primarily for the purpose of disrupting the complainant’s activities; d. the domain name has been or is being used for commercial gain, by attracting Internet users to a website of the registrant or other online location through the likelihood of confusion which may arise with the trademark, trade name, personal name, name of a Dutch public legal entity or name of an association or foundation registered in the Netherlands as to, for example, the source, sponsorship, affiliation or endorsement of the website of the registrant or other online location(s) or of products or services on the domain registrant’s website or another online location. The Trademarks significantly predate the registration of the disputed domain name by the Respondent. The Respondent noting the content of the website selling sports related products is most likely to have known of the Complainant, its products and the Trademarks prior to registering the disputed domain name. The Panel finds that the evidence submitted by the Complainant supports a finding of bad faith under article 3.2(d) of the Regulations. The fact that the website at the disputed domain name offers tents from a different brand is evidence of bath faith use, and the fact that the website at the disputed domain name also offers products of the Complainant does not alter the conclusion of misleading and bad faith use. The Panel finds that the Domain Name has been registered and is being used in bad faith. 7. Decision For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name Willem Hoorneman
Panelist
Date: December 23, 2019
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