The Complainant is Decathlon, France, represented AARPI Scan Avocats, France.
The Respondent is UniversalArtandStructure, Iran (Islamic Republic of).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2021. On December 17, 2021, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On December 18, 2021, IRNIC 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 .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 the Respondent of the Complaint, and the proceedings commenced on December 22, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was January 11, 2022. On January 12, 2022, the Center notified the Respondent’s default.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on January 12, 2022. 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 BackgroundThe Complainant is specialized in sporting and leisure goods and was established in 1980 in France. Over the years, it expanded its operations internationally. The Complainant uses the trademark QUECHUA with respect to camping and hiking products. The trademark QUECHUA has been held by prior UDRP1 panels as being a well-known trademark.
The Complainant owns many trademark registrations for QUECHUA such as:
- French trademark registration No. 97702142, registered on October 30, 1997;
- International trademark registration No. 700271 registered on April 14, 1998;
- International trademark registration No. 917639, registered on September 14, 2006; and
- International trademark registration No. 1036641, registered on December 21, 2009.
The disputed domain name was registered on August 1, 2021. The disputed domain name resolves to a website which offers products related to camping and hiking. These products may be genuine products of the Complainant, or counterfeits thereof. They may also be products of competitors.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is similar or identical to a trademark or service mark in which the Complainant has rights. The country code Top-Level-Domain (“ccTLD”) “.ir” should be ignored. The disputed domain name incorporates the Complainant’s trademark in its entirety followed by the word “iran”, which gives the impression that the domain name directs to the Complainant’s official website for the country of Iran (Islamic Republic of). The addition of a geographical indicator is insufficient to prevent a finding of similarity.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name. The use of the disputed domain name cannot be considered a bona fide offering of goods or services. The Respondent is not authorized by the Complainant to use its trademark nor is it affiliated with the Complainant.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent knew of the Complainant’s trademark as it is well known. Attracting Internet users for commercial gain by creating a likelihood of confusion constitutes bad faith. The registration of the disputed domain name must have taken place with the Complainant’s trademark in mind. The domain name is being used in bad faith as it resolves to a website selling products under the brand QUECHUA, which are copies of Complainant’s products. The Respondent is using the disputed domain name in order to attract Internet users by creating confusion. Furthermore, an MX server has been activated in connection with the disputed domain name, which creates the risk of fraudulent use.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant owns trademark registrations for the trademark QUECHUA. The Panel is satisfied that the Complainant has established its ownership of the trademark QUECHUA. The disputed domain name incorporates the Complainant’s trademark QUECHUA in its entirety. It is established by prior UDRP panels that when a domain name incorporates a complainant’s registered trademark, such incorporation is sufficient to establish identity or confusing similarity for the purposes of the Policy even if other terms are added as part of the disputed domain name. E.g., Oki Data Americas, Inc v. ASD, Inc.,WIPO Case No. D2001-0903 (“Oki Data”).
The addition of the term “iran” does not alter the fact that the disputed domain name is confusingly similar to the Complainant’s trademark. The ccTLD “.ir” should generally be ignored when assessing confusing similarity as established by prior UDRP decisions.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once such showing is made, the burden of production shifts to the respondent.
In the instant case, the Complainant asserts that the Respondent is not affiliated with nor authorized by the Complainant to use its trademark. The Complainant further asserts that the use of the disputed domain name cannot be considered a bona fide offering of goods or services. Therefore, the Complainant has established a prima facie case and the burden of production shifts to the Respondent to show that it has rights or legitimate interests. The Respondent has not provided any evidence to show that it has any rights or legitimate interests in the disputed domain name. However, according to the Policy, the use of the disputed domain name would be legitimate if it is used in connection with a bona fide offering of goods or services. The website to which the disputed domain name resolves offers products related to camping and hiking. These products may be genuine products of the Complainant, or counterfeits or products of competitors.
If these products are genuine products of the Complainants, there may be an argument that the disputed domain name is being used in connection with a bona fide offering of products. In line with the Oki Data test, a number of requirements have to be met (see Oki Data,supra):
1. “Respondent must actually be offering the goods or services at issue”;
2. “Respondent must use the site to sell only the trademarked goods”;
3. “The site must accurately disclose the registrant’s relationship with the trademark owner”; and
4. “The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name”.
The Panel analyzes each of these requirements below:
a. Requirement No. 1: This requirement may have been met in the instant case as the disputed domain name resolves to a website which may be offering the Complainants’ products. However, there is no way for the Panel to ascertain whether this is indeed the case.
b. Requirement No. 2: The Respondent may be offering the Complainant’s products but competing products may be offered as well. Here again, there is no way for the Panel to ascertain such fact. If competing products are also on offer, such use has been found by prior UDRP panels as not being bona fide (see Experian Information Solutions, Inc v. Credit Research, Inc.,WIPO Case No. D2002-0095).
c. Requirement No. 3: This requirement is not met as the website does not include a statement demonstrating that it does not belong or is not affiliated with the Complainant.
d. Requirement No. 4: This requirement is met as there are no numerous registrations by the Respondent of domain names containing the trademark of the Complainant.
There is doubt on whether requirements 1 and 2 are met. Even if they were, Requirement No. 3 has not been met. Therefore, it is the Panel’s view that the requirements of the Oki Data test have not been met.
Moreover, the Panel finds that the nature of the disputed domain name carries a risk of implied affiliation with the Complainant. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
If the disputed domain name is offering solely competing products or counterfeit products, then this does not constitute a bona fide offering of goods or services.
Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered or Used in Bad FaithThe Respondent clearly knew of the Complainant’s business and trademark as the disputed domain name resolves to a website offering products related to the field of the Complainant. The nature of the disputed domain name suggests affiliation with the Complainant as it incorporates the Complainant’s trademark in full. The use of the geographical term “iran” reinforces the impression that the disputed domain name is the Complainant’s website for the Iranian market.
The disputed domain name resolves to a website, which offers products related to camping and hiking. These products may be genuine products of the Complainant, or counterfeits or products of competitors. Offering competing products or counterfeit products is an indication of bad faith use. As such, the disputed domain name suggests affiliation with the Complainants in order to attract consumers and offer competing services. This is an act of bad faith (see Intex Recreation Corp. v. RBT, Inc., Ira Weinstein,WIPO Case No. D2010-0119; MasterCard International Incorporated v. Global Access,WIPO Case No. D2008-1940). If genuine products are being offered, the Complainant still wins its claim as the requirements of the Oki Data test have not been met, and the disputed domain name has been registered and used to take commercial advantage due to its similarity with the Complainant’s trademark. Additionally, an email service seems to be attached to the disputed domain name, which creates a risk of abuse.
Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Nayiri Boghossian
Sole Panelist
Date: January 24, 2022
1 Considering the substantive similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”), the Panel also refers to UDRP case law and analysis, where appropriate.