WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Go Sport v. Clara Toussaint
Case No. D2015-0389
1. The Parties
The Complainant is Go Sport of Sassenage, France represented by Fidal, France.
The Respondent is Clara Toussaint of Paris, France.
2. The Domain Name and Registrar
The disputed domain name <gosport-nike.com> is registered with 1API GmbH (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 5, 2015. On March 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 9, 2015, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 10, 2015.
On March 12, 2015 the Center received an email from Ms. Sophie Dourdin, claiming that the disputed domain name was registered without her knowledge or authorization by a third party using her mailing address. Ms. Dourdin filed a criminal complaint for identity fraud on March 12, 2015. Since Ms. Dourdin is not the domain name holder, the Complaint was not initiated against her, and the use of her mailing address has no consequence on the proceedings, Ms. Dourdin being a third party.
In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 31, 2015.
The Center appointed Isabelle Leroux as the sole panelist in this matter on April 2, 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 company specialized in the distribution of sporting and leisure goods, operating via two networks of stores: GO SPORT and COURIR.
The Complainant was created in 1978 and employs more than 4,300 employees worldwide, operating stores mainly in France but also in Poland, Belgium, the United Arab Emirates, Qatar, Morocco, Kuwait, Tunisia and Jordan.
The Complainant is the owner of a large number of trademarks registered in France as well as in many countries worldwide and notably:
- French word and device trademark GO SPORT registered on July 5, 1991 under number 1678206 covering products in classes 25 and 28;
- French word and device trademark GO SPORT registered on October 17, 1996 under number 96647008, covering products and services in classes 5, 8, 9, 10, 11, 12, 13, 14, 16, 18, 20, 22, 24, 25, 26, 27, 28, 32, 35, 36, 38, 39, 41, 42, 43 and 45;
- French word and device trademark GO SPORT registered on June 22, 2006 under number 3436566, covering products and services in classes 9, 12, 18, 22, 25, 28 and 35;
- International word and device trademark GO SPORT registered on February 29, 1988 under number 523820, covering products and services in classes 9, 25 and 28;
- International word and device trademark GO SPORT registered on August 6, 1998 under number 702165, covering products and services in classes 5, 8, 11, 13, 14, 16, 20, 22, 26, 27, 28, 32, 35, 36, 38, 39, 41 and 42.
According to the WhoIs records, the Respondent is based in France. However, given the third party's communication received by the Center on March 12, 2015, which informed such mailing address did not belong to the Respondent, his or her location is uncertain.
The disputed domain name <gosport-nike.com> was created on October 14, 2014.
5. Parties' Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the GO SPORT trademark in which the Complainant has rights. The Complainant explains that the generic Top-Level Domain ("gTLD") extension ".com" shall be disregarded as regards the appreciation of the likelihood of confusion, and that the reproduction in the disputed domain name of the Complainant's trademarks GO SPORT together with a third party's well-known trademark (NIKE) is generating a likelihood of confusion.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Complainant submits that the Respondent has never been known under the names "GO SPORT" or "NIKE", has never filed any trademark application for the marks "GO SPORT" or "NIKE", was never granted any authorization to use the trademark GO SPORT and is not in any way related to the Complainant's business.
The Complainant also submits that the Respondent registered the disputed domain name in bad faith, as the trademark GO SPORT is a worldwide famous trademark, which means that the Respondent knew, or should have known of the Complainant's rights and did not register the disputed domain name fortuitously.
In addition, the Complainant contends that the Respondent is using the disputed domain name in bad faith, as it redirects internet users to a website which constitutes a slavish reproduction of the French official website belonging to GO SPORT, apparently promoting and selling allegedly counterfeit products. This use of the disputed domain name to pass itself off as the Complainant, in order to promote and sale counterfeit products and phish personal data and financial information of potential clients, evidences the Respondent's registration and use of the disputed domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under paragraph 4 of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name be transferred:
(i) the disputed domain name is identical or confusingly similar to a trademark to which it has rights; and
(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.
Paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
A. Identical or Confusingly Similar
The Complainant demonstrates that it has rights in many GO SPORT trademarks. The Panel further acknowledges that the trademark GO SPORT is well-known for leisure and sports products, at least in France.
As to whether the disputed domain name is identical or confusingly similar to the Complainant's trademarks, the relevant comparison to be made is with the second-level part of the disputed domain name (i.e.,"gosport-nike") as it is well-established that the gTLD suffix (i.e., ".com") should be disregarded for this purpose.
The disputed domain name comprises the GO SPORT trademark, and only differs from the Complainant's trademarks by the addition of the third party's trademark NIKE.
Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name.
NIKE is a well-known trademark belonging to a third party. The Panel finds that this does not eliminate the confusing similarity between the Complainant's registered GO SPORT trademarks and the disputed domain name. On the contrary, given the fact that the Complainant sells NIKE branded products in its stores, the addition of the well-known trademark NIKE to the Complainant's trademark GO SPORT to form the disputed domain name increases the likelihood of confusion as that could lead consumers to believe that there is a link between the Respondent and the Complainant.
Therefore, the Panel finds the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights. As a result, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
A respondent may have rights or legitimate interests under the Policy in the circumstances set out in paragraph 4(c) of the Policy. The circumstances set out in paragraph 4(c) of the Policy are examples only, however, and are not an exhaustive enumeration of the ways in which rights or legitimate interests can be shown.
While paragraph 4(c) of the Policy states that these are circumstances where a respondent may show rights or legitimate interests in a domain name, the overall burden of establishing this requirement falls on the complainant. Nonetheless, in view of the difficulty inherent in proving a negative and because the relevant information is often in the possession of the respondent only, it will be sufficient for the complainant to establish a prima facie case which, if not rebutted, will lead to this ground being established (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1).
The Complainant alleges that the Respondent has no registered trademarks corresponding to the disputed domain name and that the Complainant has never given the Respondent any authorization to use the trademark GO SPORT, nor the Respondent is linked to the Complainant, as it is not one of its distributors and has no commercial relationship with it.
In addition, the evidence provided by the Complainant shows that the disputed domain name is used to direct Internet users to the Respondent's website, which is a slavish copy of the Complainant's website, in order to promote and sell counterfeit products and possibly phish personal data and financial information.
The Panel therefore finds that the Complainant has met the requirement of paragraph 4(a)(ii) of the Policy and that the Respondent has no right or legitimate interest in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant persuasively argues that the Respondent has registered and used the disputed domain name <gosport-nike.com> in bad faith.
The Panel also infers bad faith registration from the combination in the disputed domain name of the Complainant's trademark together with the worldwide well-known trademark NIKE, which practice is often illegitimately used by dishonest registrants. According to consensus view among UDRP Panelists, neither the Policy nor the Rules expressly require the consent of a third party to file a complaint when the disputed domain name is comprised by trademarks owned by different entities and previous panels have accepted complaints requesting that a domain name may be transferred to the complainant, noting that such decision would be expressly without prejudice to any rights which may be asserted by a third party trademark holder (See, for instance, LEGO Juris A/S v. Suka LLC, WIPO Case No. D2011-1057; and Guccio Gucci S.p.A. v. Brenda Hawkins, WIPO Case No. D2013-0603, and regarding in particular domain names reproducing NIKE trademark: Lacoste Alligator S.A. v. Lin Feng , WIPO Case No. D2008-1957 (<nikelacoste.com>); Décathlon v. Nadia Michalski , WIPO Case No. D2014-1996 (<decathlon-nike.com>)).
The fact that the disputed domain name is used to direct Internet users to a slavish copy of the Complainant's website demonstrates that the Respondent knew the Complainant and the Complainant's trademarks when it registered the disputed domain name, and that the Respondent did not register the disputed domain name fortuitously.
The Panel therefore finds that the disputed domain name was registered in bad faith.
According to paragraph 4(b)(iv) of the Policy, bad faith is established if it is evidenced that the domain name is used to intentionally attempt to attract, for commercial gain, Internet users to the registrant's website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or a product or service on the registrant's website or location.
In the present case, the disputed domain name is used to direct Internet users to the Respondent's website, which is a slavish copy of the Complainant's website, in order to promote and sell allegedly counterfeit products and possibly phish personal data and financial information. The Panel contends that the Complainant evidenced that the disputed domain name was thus being used in bad faith.
Accordingly, the Panel finds that the disputed domain name has been registered and used in bad faith and that the Complainant has met the requirement of paragraph 4(a)(iii) of the Policy.
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 <gosport-nike.com> be transferred to the Complainant.
This transfer is without prejudice to any rights that might be asserted by Nike International Ltd, with regard to the domain name <gosport-nike.com>.
Date: April 16, 2015