WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
JD Sports Fashion (France) S.A.S. v. Name Redacted
Case No. D2017-1326
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” or “UK”).
The Respondent is Name Redacted of Paris, France.1
2. The Domain Name and Registrar
The disputed domain name <chausportly.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 July 10, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 12, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 proceedings commenced on July 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2017. The Center received communications from a third party on July 26, 2017 (two communications) and July 28, 2017.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on August 10, 2017. 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 French simplified company limited by shares, and states that it was founded in 1980. It is a leading multi-channel retailer of international footwear brands and sports fashion wear in France, with 77 stores in premium locations and strong online sales through its e-commerce website, “www.chausport.com”. It is since 2009 a subsidiary of the listed UK company JD Sports Fashion Plc, active in 14 countries with 25,800 employees in 1,288 stores.
The Complainant owns the European Union Trade Mark CHAUSPORT registered under No. 008519977 on February 22, 2010, which claims seniority from the French Trademark CHAUSPORT registered under No. 1698343 on October 1, 1991 (“the Mark”).
The Complainant is the registrant of the domain name <chausport.com>, which directs to its e-commerce website.
The disputed domain name <chausportly.com> was created on April 19, 2014, and does not resolve to an active website.
5. Parties’ Contentions
(i) The Complainant submits that the disputed domain name <chausportly.com> reproduces the Mark in which the Complainant has rights and is confusingly similar to the Mark.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith with the intent to take advantage of the trademark rights of the Complainant.
(iv) The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions. However, in email communications to the Center, a third party claimed that his daughter, in whose name the disputed domain name is registered, had received written notification of the Complaint by courier, but had not registered the disputed domain name and was the victim of an identity theft.
6. Discussion and Findings
As a preliminary matter, the Panel notes the third party’s persuasive claim that his daughter is a victim of identity theft and had no knowledge of the registration and use of the disputed domain name. Accordingly, the Panel finds that the named Respondent was a victim of identity theft, had no knowledge of the registration and use of the disputed domain name, and that it is therefore appropriate in this proceeding to redact the actual name of the Respondent. See Independent Health Association Inc. v. Registration Private, Domains By Proxy, LLC / [K.A.], WIPO Case No. D2016-1625.
6.1 Procedural Aspects
The Respondent is formally in default pursuant to paragraphs 5(f) and 14(a) of the Rules because no Response was received from the Respondent within the time limit set by the Policy and the Rules.
Under the Rules, paragraphs 5(f) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, it is still the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name have been met, even when the Respondent is in default.
Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009; see also Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.
6.2 Requirements of Paragraph 4(a) of the Policy
A. Identical or Confusingly Similar
In comparing the disputed domain name <chausportly.com> with the Mark, the Panel finds that the Mark is replicated entirely in the disputed domain name, the latter simply having the distinctive element “chausport” followed by the letters “ly”.
In this case, the Panel finds that the dominant component of the disputed domain name <chausportly.com> is “chausport”, and that the addition of the suffix “ly” is not sufficient to avoid a finding of confusing similarity in the sense of the Policy.
Consequently, the Panel finds that the similarity between the disputed domain name and the Mark is such as to create confusion for Internet users.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Although a complainant bears the burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that, with regard to paragraph 4(a)(ii) of the Policy, this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of a right or legitimate interest in a domain name once the complainant has made a prima facie showing, as the Panel finds the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
By not submitting a Response, the Respondent offered no reason for selecting the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name or a corresponding name or uses a corresponding name in a business.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
On the contrary, the Complainant asserted that it has no business or other relationship with the Respondent, that it did not consent to the registration of the disputed domain name and that, to the best of its knowledge, the Respondent is not known by the disputed domain name. The Complainant credibly argued that the Respondent (i) has no rights or legitimate interests in the disputed domain name and (ii) has registered the disputed domain name with the intent to take advantage of the Mark.
In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name.
C. Registered and Used in Bad Faith
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the actual Respondent acted in bad faith by creating confusion with the Complainant and the Mark.
It has been established in prior UDRP decisions that the registration of a domain name confusingly similar to a trademark by any entity that has no relationship to that trademark may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Pfizer Inc. v. NA, WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492.
In this case, the Panel notes that it is close to impossible that the Respondent chose to register the disputed domain name randomly with no knowledge of the Mark. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 (citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028); and SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.
Where a respondent knew or should have known of a trademark prior to registering a domain name containing this mark, such conduct may also suggest bad faith. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.
In addition, the Panel notes that many UDRP decisions have held that bad faith use of a domain name by a respondent may also result from the fact that its good faith use is in no way plausible (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148), considering the specificity of the activity.
The Panel notes further that the Complainant has been the target of various illicit activities concerning other domain names that are confusingly similar to the Mark, and that in several other UDRP cases, domain names were transferred to the Complainant. See JD Sports Fashion (France) S.A.S. v. Li Dong, WIPO Case No. D2016-1984; JD Sports Fashion (France) S.A.S. v. zhang shasha, WIPO Case No. D2016-1432 and JD Sports Fashion (France) S.A.S. v. Zhang Shasha, WIPO Case No. D2016-1800. Coincidentally or not, in these last two cases, the registrar used by the respondent was the same as in this case.
Besides, it is well established that the mere passive holding of a domain name may in appropriate circumstances be evidence not only of bad faith registration, but also of bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004; Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260.
Finally, some UDRP panels have held that, in certain circumstances, persons who are registering domain names have an affirmative duty to abstain registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
The Panel finds that the unrebutted claims of identity theft also supports a finding of bad faith under paragraph 4(a)(iii) of the Policy.
The Panel concludes in these circumstances that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is satisfied in this case.
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 <chausportly.com> be transferred to the Complainant.
Date: August 28, 2017
1 The Respondent appears to have used the name of a third party in the registration of the disputed domain name. In light of this potential identity theft, the Panel has redacted the Respondent’s name from the caption and body of this Decision. Attached as Annex 1 to this Decision is the Panel’s instruction to the Registrar regarding transfer of the disputed domain name, including the Respondent’s apparent name. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, but has indicated that Annex 1 to this Decision shall not be published due to the circumstances of this case.