Complainant is Decathlon, France, represented AARPI Scan Avocats, France.
Respondent is Shima Hojjati, Iran (Islamic Republic of) (“Iran”).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2021. On October 11, 2021, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Domain Name. On October 12, 2021, IRNIC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the complete contact details.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 19, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2021. On October 27, 2021, the Center received two identical emails from Respondent indicating its willingness to transfer the Domain Name. On November 25, 2021, the Center notified the Parties that it would proceed to the panel appointment process. On November 27, 2021, the Center received another email from Respondent claiming that the Domain Name was no longer active since November 6, 2021.
The Center appointed Marina Perraki as the sole panelist in this matter on December 6, 2021. 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 BackgroundComplainant is a major French manufacturer specialized in the retailing of sporting and leisure goods. On July 27, 1976, Michel Leclercq opened a self-service supermarket dedicated to sport and leisure products near Lille, North of France under the name “Decathlon”. The company name “Decathlon” has been registered before the Trade and Companies Register of Lille (France) since March 31, 1980 under number 306138900. As regards its international presence, in 1986, Complainant opened its first store in Germany, since 1988 its first production office in Asia, and in 2003 its first store in Shanghai, China. Per Complaint, Complainant is present on French (35% of its stores) and international (65% of its stores) markets. End of 2017, Complainant employed 87,000 employees worldwide with annual sales of EUR 11 billion. In January 2020, it was operating 1,647 stores throughout the world. Complainant is present online through its main websites at “www.decathlon.fr” and “www.decathlon.com”. Per Complaint, Complainant’s commercial activity in Iran is in “ongoing development”.
Complainant owns trademark registrations for DECATHLON, including the International trademark registration No. 613216, DECATHLON (word), registered on December 20, 1993 for goods and services in International classes 1, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 16, 17, 18, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 35, 36, 37, 38, 39, and 42, designating, among others, Iran.
Complainant is also the owner of the domain name
The Domain Name was registered on September 4, 2019 and at the time of filing of the Complaint it led to a website selling products under the name DECATHLON that are copies of Complainant’s products (the “Website”). The only reference on the Website was to Complainant purportedly being the producer of the goods, while there was no information on the person or entity operating the Website. Also, as Complainant demonstrated, MX servers have been activated in relation with the Domain Name. The Domain Name currently resolves to an inactive website displaying “Unfortunately we have to close the website. Our team is no longer active.”
5. Parties’ Contentions A. ComplainantComplainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.
B. RespondentRespondent did not submit any formal response. On October 19 and October 27, 2021, Respondent sent email communications to the Center in which Respondent apologized for using Complainant’s logo and brand and stated, inter alia, that “over the next 10 days, I will clean the Domain”. On November 26, 2021, Respondent sent another email communication to the Center in which it stated that the Domain Name was no longer active since November 6, 2021.
6. Discussion and FindingsParagraph 4(a) of the Policy lists the three elements that Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered or is being used in bad faith.
A. Identical or Confusingly SimilarComplainant has demonstrated rights through registration and use on the DECATHLON mark.
The Panel finds that the Domain Name that incorporates Complainant’s DECATHLON mark in its entirety plus an additional word “iran” is confusingly similar to the DECATHLON trademark of Complainant. The addition of the term “iran” does not prevent a finding of confusing similarity.
The country code Top-Level Domain (“ccTLD”) “.ir” is disregarded, as ccTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275). 1
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate InterestsPursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to Respondent of the dispute, Respondent’s 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) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) Respondent is 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.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not replied to Complainant’s contentions and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.
Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrated, the Domain Name resolved at the time of filing of the Complaint to the Website, which suggested falsely that it is of an affiliated entity or of an authorized partner of Complainant.
Per Complaint, Respondent is not an affiliated entity or an authorised distributor or partner of Complainant and no agreement, express or otherwise, exists allowing the use of Complainant’s trademarks on the Website and the use of the Domain Names by Respondent.
A distributor or reseller can be making a bona fide offering of goods and thus have a legitimate interest in a domain name only if the following cumulative requirements are met (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.8.1: (i) respondent must actually be offering the goods at issue; (ii) respondent must use the site to sell only the trademarked goods; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) respondent must not try to “corner the market” in domain names that reflect the trademark.)
These requirements are not cumulatively fulfilled in the present case. The Domain Name falsely suggested that the Website is an official site of Complainant or of an entity affiliated to or endorsed by Complainant. The Website extensively reproduced, without authorization by Complainant, Complainant’s trademark, without any disclaimer of association (or lack thereof) with Complainant.
Furthermore, the use of a domain name which intentionally trades on the fame of another and suggests affiliation with the trademark owner cannot constitute a bona fide offering of goods or services (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,WIPO Case No. D2000-0847; AB Electrolux v. Handi Sofian, Service Electrolux Lampung,WIPO Case No. D2016-2416; WIPO Overview 3.0, section 2.5).
Furthermore, as Complainant has demonstrated, an email server has been configured on the Domain Name. This indicates the intention of Respondent to potentially use the Domain Name for purposes other than hosting a website, including potentially for constructing an email composition containing the Domain Name, to be used for deceiving purposes (Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj,WIPO Case No. D2017-1225).
In addition, the Domain Name consists entirely of Complainant’s mark and the term “iran”, and thus carries a risk of implied affiliation (WIPO Overview 3.0, section 2.5.1).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered or Used in Bad FaithParagraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith.
Because the DECATHLON mark had been widely used and registered by Complainant before the Domain Name registration, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc.,WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,WIPO Case No. D2000-0226). Furthermore, Complainant’s mark DECATHLON enjoys reputation as repeatedly recognised (WIPO Case No. D2017-1490 Decathlon v. Name Redacted,WIPO Case No. D2015-0198 Decathlon v. Wang Yongwei / Domain Admin, Information Privacy Protection Services Limited).
Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple browser search (Caesars World, Inc. v. Forum LLC,WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc.,WIPO Case No. D2009-0462).
Furthermore, Respondent could have conducted a trademark search and would have found Complainant’s prior registrations in respect of DECATHLON (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata,WIPO Case No. D2012-1338).
The Website content, eminently displaying Complainant’s trademarks and offering for sale goods identical/similar to those of Complainant and bearing Complainant’s trademarks, further supports knowledge of Complainant and its field of activity.
As Complainant demonstrated, the Website content is targeting Complainant’s trademark, as it prominently displayed Complainant’s DECATHLON trademark and products identical/similar to those of Complainant and bearing Complainant’s trademarks. This further supports registration in bad faith (WIPO Overview 3.0, section 3.1.4), reinforcing the likelihood of confusion, as Internet users are likely to consider the Domain Name as in some way endorsed by or connected with Complainant (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen,WIPO Case No. D2018-0625; Marie Claire Album v. Whoisguard Protected, Whoisguard, Inc. / Dexter Ouwehand, DO,WIPO Case No. D2017-1367).
As regards bad faith use of the Domain Name, Complainant has demonstrated that the Domain Name was used to resolve to the Website, which prominently displayed Complainant’s registered trademark and logo, offering for sale identical/similar goods bearing Complainant’s trademarks, thereby giving the false impression that it was operated by Complainant or a company affiliated to Complainant or an authorised reseller or partner of Complainant. Respondent therefore was using the Domain Name to intentionally create a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the Website. This supports the finding of bad faith use as described under paragraph 4(b)(iv) of the Policy (AB Electrolux v. Begad Negad,WIPO Case No. D2014-2092; Aktiebolaget Electrolux v. electroluxmedellin.com, Domain Discreet Privacy Service / Luis Rincon,WIPO Case No. D2014-0487; Aktiebolaget Electrolux v. Priscilla Quaiotti Passos,WIPO Case No. D2011-0388; and WIPO Overview 3.0, section 3.1.4).
The Panel also takes into account the implausibility of any good faith use to which the Domain Name may conceivably be put, given that, as Complainant has demonstrated, an email server has been configured on the Domain Name, which indicates a risk that Respondent potentially uses the Domain Name to create an email address to be used for deceiving purposes, which further supports a finding of bad faith (Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj,WIPO Case No. D2017-1225; and WIPO Overview 3.0, section 3.4).
The current non-use of the Domain Name does not prevent a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; WIPO Overview 3.0, section 3.3).
Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith.
Complainant has established Policy, paragraph 4(a)(iii).
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Marina Perraki
Sole Panelist
Date: December 15, 2021
1 The Panel follows prior decisions under the irDRP and, given the similarities between the irDRP and UDRP, finds it appropriate to refer to UDRP jurisprudence, including reference to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). See Inter IKEA Systems BV (IISBV) v. Mohammadreza Mohammadian,WIPO Case No. DIR2018-0003.