WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
JD Sports Fashion (France) S.A.S. v. Zhang Shasha
Case No. D2016-1800
1. The Parties
The Complainant is JD Sports Fashion (France) S.A.S. of Tourcoing, France, represented by Urquhart‑Dykes & Lord LLP, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
The Respondent is Zhang Shasha of Zhoukou, Henan, China.
2. The Domain Name and Registrar
The disputed domain name <chausport-vip.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 September 5, 2016. On September 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 6, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on September 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 30, 2016.
The Center appointed Halvor Manshaus as the sole panelist in this matter on October 11, 2016. 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 multi-channel retailer of international footwear brands and sports fashion wear in France. The Complainant has traded under the Chausport brand since 1980.
The Complainant registered the International trademark CHAUSPORT, registration number 629283, on December 23, 1994, with priority from a French trademark application on October 1, 1991. The International trademark CHAUSPORT is registered for "shoes, socks, clothing" in class 25 and "sporting goods" in class 28. The Complainant filed the European trade mark CHAUSPORT, registration number 008519977, on September 1, 2009 (registered on February 22, 2010). The European Union trade mark CHAUSPORT is registered for a range of goods and services in classes 9, 14, 18, 25, 28, 35 and 36, including "Clothing; footwear; headgear; belts" in class 25 and "The bringing together for the benefit of others of clothing, footwear, […]" in class 35. The Complainant operates an e-commerce website through the domain name <chausport.com>, through which, e.g., shoes from brands such as Nike and Adidas are offered for sale.
The Respondent is a private individual. The Respondent is listed as the owner of the disputed domain name <chausport-vip.com>, first registered on July 25, 2016. As of the date of this decision, the disputed domain name resolves to an e-commerce website, through which, e.g., shoes from brands such as Nike and Adidas are offered for sale.
5. Parties' Contentions
The Complainant contends that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights. The disputed domain name consists of the Complainant's trademark, CHAUSPORT, in its entirety and without modification plus the suffix "VIP", which is a common abbreviation for "Very Important Person". The addition of this suffix is not sufficient to avoid confusion between the disputed domain name and the trademark of the Complainant.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has no business or other relationship with the Respondent and it has not consented to the Respondent's registration and use of the disputed domain name. The Respondent is not making a legitimate or noncommercial or fair use of the disputed domain name and it is clear that the Respondent is using it, as well as certain copyrighted material owned by the parent company of the Complainant, with the intent of misleading consumers and/or harming the reputation enjoyed by the Complainant.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. Due to the reputation that the Complainant enjoys in the trademark CHAUSPORT, it is hard to believe that the domain name was registered or is being used without the Respondent's awareness of the Complainant and its trademark CHAUSPORT. Further, the Complainant has previously brought a dispute against the Respondent in JD SPORTS FASHION (France) S.A.S. v. zhang shasha, WIPO Case No. D2016-1432, pursuant to which the domain name <chausport-fr.com> was transferred to the Complainant. The use of the disputed domain name entails infringement of the trademark CHAUSPORT. By virtue of the longstanding and widespread use of the trademark CHAUSPORT in France, members of the public would believe that any website under the disputed domain name was operated by the Complainant or in association with the Complainant. The disputed domain name is being used in such a way as to create an association with the Complainant for the commercial gain of the Respondent, as it currently resolves to a website through which the Respondent is advertising and offering for sale sports footwear.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Complainant has, in accordance with paragraph 4(i) of the Policy, requested that the disputed domain name be transferred to the Complainant.
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant 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.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
A. Identical or Confusingly Similar
The disputed domain name, <chausport-vip>, comprises the trademark CHAUSPORT in its entirety. The addition of a hyphen, the term "vip", commonly used as an abbreviation for "Very Import Customer", and the extension ".com" is insufficient to distinguish the disputed domain name from the Complainant's trademark. See Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Rohit Katoch, WIPO Case No. D2011-0402 and SuperMedia LLC v. Superpages Vip, WIPO Case No. D2011-1293.
The Panel concludes that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel finds that the Respondent has not received any license or other permission to use the Complainant's trademarks or use any domain name incorporating or simulating these marks. Further, the Panel has not been presented with, or otherwise discovered, any evidence showing that the Respondent is commonly known by the disputed domain name or that it has acquired any trademark or service mark rights to use the name.
The term "chausport" does not have a common dictionary meaning in the English language. The term is likely derived from an amalgamation of the French words "chaussure" (meaning "shoe" in English) and "sport". The resulting combination is a fanciful term, most commonly associated with the Complainant's business and trademarks. Similarly, the fanciful term "chausport" together with the common English abbreviation "vip" is easily associated with the Complainant's business and trademarks.
The presented evidence referred to by the Complainant is, in the Panel's view, sufficient to establish prima facie that the Respondent has no rights or legitimate interests in the disputed domain name. As held by the panel in Ticketmaster Corporation v. Global Access, WIPO Case No. D2007-1921, the Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name when such prima facie case is made.
The Respondent has not replied to the Complainant's contentions. The Panel thus concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith. According to paragraph 4(b)(iv) of the Policy, this includes circumstances indicating that the Respondent has "intentionally attempted to attract, for commercial gain, Internet users to [its] website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location".
In the present case, the Panel considers that the following circumstances when seen together sufficiently indicate the Respondent's intent in this regard: (i) At the time of this decision, the disputed domain name, <chausport-vip.com>, resolves to an e-commerce website, through which goods and services covered by the trademark CHAUSPORT, e.g., shoes from brands such as Nike and Adidas, are offered for sale, in direct competition with the Complainant, (ii) the domain name <chausport-vip.com> is well suited for creating an association with the Complainant for the commercial gain of the Respondent, and (iii) the Respondent has not substantiated any actual or contemplated good faith purpose for the registration of the disputed domain name and it is difficult to conceive of any such good faith purpose.
Further, the Panel considers it likely that the Respondent was aware of the Complainant's well-known and distinctive trademark CHAUSPORT at the time of registration of the disputed domain name. The Panel notes that the Complainant's trademark CHAUSPORT is registered in Italy, while the language used by the Respondent on the website to which the disputed domain name currently resolves is Italian. This website offers payment in EUR and GBP, which further indicates that the use of the disputed domain name is directed towards, amongst others, countries in the European Union where the trademark CHAUSPORT is registered. The Panel refers to paragraph 2 of the Policy, pursuant to which it is the Respondent's responsibility to determine whether the domain name registration infringes or violates someone else's rights.
The Panel thus concludes that the Respondent is using the fame of the Complainant's trademark to improperly increase traffic to its websites for the Respondent's own commercial gain, which constitutes bad faith registration and use under the Policy. See Speedo Holdings B.V. v. Tyrone L Glenn-Bus, WIPO Case No. D2003-0440.
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 <chausport-vip.com> be transferred to the Complainant.
Date: October, 24, 2016