WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Decathlon SAS v. Wang Yongwei / Domain Admin, Information Privacy Protection Services Limited
Case No. D2015-0198
1. The Parties
The Complainant is Decathlon SAS of Villeneuve d’Ascq, France, represented by Fidal, France.
The Respondent is Wang Yongwei of Xinxiang, Henan, China; Domain Admin, Information Privacy Protection Services Limited of Hangzhou, Zhejiang, China.
2. The Domain Name and Registrar
The disputed domain name <decathlonn.com> (“the Domain Name”) is registered with Hangzhou AiMing Network Co., LTD (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2015. On February 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 9, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 10, 2015 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 February 16, 2015.
On February 10, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On February 16, 2015, the Complainant confirmed its language request included in the Amended Complaint that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on February 19, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 12, 2015.
The Center appointed Karen Fong as the sole panelist in this matter on March 24, 2015. 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 major French producer specialized in the conception and retailing of sporting and leisure goods under the name DECATHLON (the “Trade Mark”). It was started in 1976. From Europe, it moved into Asia in 1988 with the opening of the first production office in Asia. The company continued its international development when it opened its first Chinese store in Shanghai in 2003. The Complainant employs more than 60,000 employees worldwide, operating nearly 807 stores, including 284 in France and 91 in China. It has annual sales of nearly EUR 7.4 billion.
The Complainant is the registered owner of a large number of trade marks consisting or including the word DECATHLON worldwide including France, the European Union, the United States of America and China.
The Complainant owns various domain names incorporating the Trade Mark including:
- <decathlon.fr> registered since June 30, 1995;
- <decathlon.com> registered since May 31, 1995;
- <decathlon.eu> registered since March 9, 2006;
- <decathlon.co.uk> registered since March 12, 1997;
- <decathlon.es> registered since May 14, 1998;
- <decathlon.cn> registered since May 24, 2010.
Its main online presence is through its website at “www.decathlon.com” which includes the offer for sale of its sporting and leisure goods online.
The Respondent registered the Domain Name on August 19, 2014. The Respondent is based in Henan, China. The website connected to the Domain Name (the “Website”) offers for sale bicycles and replicates the look and feel of the Complainant’s Chinese website. The Domain Name was registered in the name of a privacy or proxy registration service. The underlying registrant was revealed by the Registrar after the Complaint was filed.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and being used in bad faith.
B. Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits in paragraph IV of the Complaint that the language of the proceeding should be English. The Complainant contends that Domain Name is in Latin characters rather than Chinese. English is one of the most spoken languages in the world. The evidence points to the Respondent being able to communicate in English whilst the Complainant is unable to speak in Chinese. Further, the time taken and the costs involved in translating the Complaint would be unfair to the Complainant. The Respondent has failed to file a defence or take issue with the language of the proceeding.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Having considered all the circumstances of this case, the Panel is satisfied that the Respondent is familiar with the English language and determines that English is the language of the proceeding.
C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has registered and unregistered rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Domain Name comprises the Trade Mark and the letter “n” at the end of “decathlon”. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain. Further, the additional letter “n” as a suffix to “decathlon” does not negate the identity or confusing similarity encouraged by the Respondent’s use of Trade Mark in the Domain Name.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the 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 trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a domain name, it is well established that, as it is put in paragraph 2.1 of the Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant alleges that the Respondent is not commonly known by the Domain Name. It does not have any trade mark registrations for “Decathlon” or any other similar mark in China. The Respondent is not in any way related to the Complainant, is not one of its distributors and does not have any business with it. The Respondent has not been authorized or licensed by the Complainant to register the Trade Mark as a domain name. The Complainant also alleges that the use of the Domain Name is to phish for personal data and financial information in an attempt to defraud the Complainant’s customers.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
E. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the Trade Mark when it registered the Domain Name. The Trade Mark is a well-known mark and it is highly unlikely that the Respondent ignored its substantial reputation in the field of sporting and leisure goods when it registered the Domain Name.
The very incorporation of the Trade Mark in the Domain Name and the confusing similarity of the look and feel of the Website with the Complainant's genuine website confirm the Respondent’s awareness of the Trade Mark. It would be inconceivable that the Respondent had no knowledge of the Trade Mark when the Domain Name was registered.
Thus, the Panel concludes that the Respondent deliberately registered the Domain Name in bad faith.
The Panel also concludes that the actual use of the Domain Names was in bad faith. The Website reproduces the look and feel of the Complainant's own website. The Respondent is purported to be using the Domain Name to phish for personal data and probably also financial information as the copycat Website is intended to create confusion for Internet users.
The consensus view of paragraph 3.9 of the WIPO Overview 2.0 is that although the use of a privacy or proxy registration service is not of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. In the Panel’s view, the use of the privacy service is such a factor in this case when taken together that this is likely to be a phishing site.
From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s Website is and the products sold on it are those of or authorised or endorsed by the Complainant. The above is clearly bad faith under paragraph 4(b)(iv) of the Policy and the Panel concludes that the Respondent’s registration and use of the Domain Name were in bad faith.
Thus, the Panel concludes that the Respondent deliberately registered and is using the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <decathlonn.com> be transferred to the Complainant.
Date: April 7, 2015