WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
JD Sports Fashion (France) S.A.S. v. Contact Privacy Inc. Customer 0153747917 / Elodie Guetes, Chausport
Case No. D2019-0312
1. The Parties
The Complainant is JD Sports Fashion (France) S.A.S. of Tourcoing, France, represented by Urquhart‑Dykes & Lord, United Kingdom.
The Respondent is Contact Privacy Inc. Customer 0153747917 of Ontario, Canada / Elodie Guetes, Chausport of Paris, France.
2. The Domain Name and Registrar
The disputed domain name <chausport.store> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2019. On February 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 11, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed 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 11, 2019, 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 15, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 12, 2019.
The Center appointed Isabelle Leroux as the sole panelist in this matter on March 21, 2019. 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 founded in 1980. It is a leading multi‑channel retailer of international footwear brands and sports fashion wear in France, with 78 stores in premium locations and strong online sales through its e-commerce website, “www.chausport.com”. Since 2009, it is a subsidiary of the United Kingdom company JD Sports Fashion Plc, active in 14 countries with 25,800 employees and 1,288 stores.
The Complainant owns the European Union Trade Mark CHAUSPORT registered under No. 008519977 filed on September 1, 2009 and registered 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 also the registrant of the domain name <chausport.com>, registered on December 19, 2000, which directs to its corporate e-commerce website.
The Respondent is a company based in Ontario, Canada, which appears to be a privacy service, and an individual, Elodie Guetes, based in France.
The disputed domain name <chausport.store> was registered on January 23, 2019 through a company based in Ontario, Canada, and resolves to a Shopfiy page indicating the shop is currently unavailable.
5. Parties’ Contentions
(i) The Complainant submits that the disputed domain name <chausport.store> reproduces the Mark in which the Complainant has rights and is identical 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 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.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles it is to use in determining the dispute:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:
(i) The 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.
These elements will be examined in turn below.
A. Identical or Confusingly Similar
The Panel is satisfied with the fact that the Complainant has established its rights to the Mark, which are prior to the Respondent’s registration of the disputed domain name, for the purpose of the Policy.
The mark CHAUSPORT is fully and identically reproduced in the disputed domain name <chausport.store>.
The disputed domain name consists of the Complainant’s registered mark, CHAUSPORT, and the generic top-Level Domain (“gTLD”) suffix “.store”. The relevant part of the disputed domain name is “chausport” as the gTLD “.store” is not relevant in determining confusing similarity or identity.
Previous UDRP panels have long held that in such situations a disputed domain name is identical to the previous trademark.
Therefore, the Panel finds that the disputed domain name is identical to the Mark to which the Complainant has prior rights, and the requirements under paragraph 4(a)(i) of the Policy are satisfied.
B. Rights or Legitimate Interests
The Complainant submits that the Respondent has not been authorized by the Complainant to use its Mark and that there is no business relationship existing between the Complainant and the Respondent.
It appears that the Respondent is not commonly known by the disputed domain name or the name “Chausport” and the disputed domain name resolves to a Shopify page indicating the shop is currently unavailable.
Accordingly, the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name.
Since the Respondent has not replied to the Complaint and, thus, has not presented any other evidence or elements to justify any rights or legitimate interests in connection with the disputed domain name, the Panel shall decide the dispute based on the Complaint.
Therefore, given the circumstances described above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and thus the requirement under paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the UDRP Policy sets out examples of circumstances that will be considered by an administrative panel to be evidence of bad faith registration and use of a domain name, as follows:
(i) Circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the domain name registrant’s out-of-pocket costs directly related to the domain name; or
(ii) The domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct; or
(iii) The domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the domain name registrant intentionally attempted to attract for financial gain, Internet users to the registrant’s 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 the registrant’s website or location or of a product or service on the registrant’s website or location.
The Complainant states that due to the reputation of its trademark CHAUSPORT, it is hard to believe that the disputed domain name was registered, or is being used in good faith, without the Respondent having been aware of the Complainant’s mark, and that by virtue of the longstanding and widespread use of the CHAUSPORT trademark in France and abroad, members of the public would deduce that the disputed domain name is related to the Complainant.
Moreover, the registration of the Complainant’s mark as a domain name with the gTLD “.store” is descriptive of the Complainant’s business and therefore could suggest that the Respondent was aware of the Mark when it registered the disputed domain name.
It has been proved to the Panel’s satisfaction that the Complainant’s mark is known by virtue of the longstanding and widespread use, and therefore the Panel agrees with the Complainant that the Respondent could not reasonably ignore the Complainant’s mark and activities when the registration was made.
Besides, the Complainant argues that the Respondent is making preparations to operate an e-commerce store from the disputed domain name. The Panel agrees with the Complainant that the Respondent might use the disputed domain name to operate an e-commerce store.
Finally, the Respondent has already and recently been condemned in a previous UDRP decision to transfer another similar domain name to the Complainant (JD Sports Fashion (France) S.A.S. v. Contact Privacy Inc. Customer 0153772162 / Elodie Guetes, Chausport, WIPO Case No. D2019-0215 (<fr-chausport.com>)).
Accordingly, this Panel finds that the Respondent’s bad faith and intention to take undue advantage of the Mark have been demonstrated.
In the absence of a response, the Respondent offered no information on the intention of such use.
The Panel therefore finds that the circumstances of this case strongly suggest that the Respondent was aware of the Complainant’s rights at the time of registration of the disputed domain name and that it did so in order to take undue advantage of such rights.
The Panel finds that the Respondent has both registered and used the disputed domain name in bad faith.
The Complainant has therefore satisfied 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 <chausport.store> be transferred to the Complainant.
Date: April 4, 2019