WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Decathlon v. Zimou Host, Zimouhost
Case No. D2019-0413
1. The Parties
The Complainant is Decathlon of Villeneuve d’Ascq, France, represented by AARPI SCAN AVOCATS, France.
The Respondent is Zimou Host, Zimouhost of Algiers, Algeria.
2. The Domain Names and Registrar
The disputed domain names <decaloisir-dz.com> and <decathlon-dz.com> (the “Domain Names”) are registered with Name.com, Inc. (Name.com LLC).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2019. On February 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 21, 2019, 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 and contact information for the Domain Names.
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 February 26, 2019. On March 16, 2019, in response to the Notification of Complaint and Administrative Proceeding, the Center received an email apparently from the beneficial holder of the Domain Names stating that they were not using the Domain Names, that they did not have “any bad intentions”, and that they “shut down the website”. The Center sent the possible settlement email to the Parties. The Complainant did not request a suspension of the proceeding.
In accordance with the Rules, paragraph 5, the due date for Response was March 18, 2019. The Respondent did not submit any formal response. Accordingly, the Center notified the Commencement of Panel Appointment Process on March 29, 2019.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on April 2, 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 following facts are undisputed.
The Complainant is a major French manufacturer specialized in the conception and is well known for retailing of sporting and leisure goods. The company Decathlon was founded in 1976, and nowadays employs 87,000 employees, operating 1,510 stores and has annual sales of EUR 11 billion.
The Complainant owns several trademarks for DECATHLON and DECAT, including the European Union trademark DECATHLON, filed on May 6, 1996 and registered on April 28, 2004, with number 000262931, and French trademark DECAT, registered on June 12, 2008 with number 08/3581543 (the “Trademarks”).
The Domain Names were registered on July 24, 2018 (<decathlon-dz.com>) and January 10, 2019 (<decaloisir-dz.com>).
The Domain Names in the past resolved to online shops offering for sale sport products and reproducing the Trademarks as the shops were copying the so-called look and feel of the official websites of the Complainant (the “Website”). The Domain Names currently do not resolve to any page.
5. Parties’ Contentions
Insofar as relevant, the Complainant contends the following.
The Domain Names are confusingly similar to the Trademarks. The domain name <decathlon-dz.com> reproduces the Trademarks in its entirety. The domain name <decaloisir-dz.com> reproduces the Complainant’s trademark DECAT with the mere deletion of the final letter T, as well as the trademark DECATHLON in an abbreviated form, together with the generic term “loisir”, term for “leisure” in French, which is referring to the core activity of the Complainant. Furthermore, to the Domain Names the letters “dz” are added, which refers to the international standard ISO 3166 country code for Algeria. Such addition is insufficient to dispel the likelihood of confusion.
The Respondent is not currently, and has never been known under the name “Decathlon” or “Decaloisir” and does not own any trademark registrations for these signs. The Respondent is not in any way related to the business of the Complainant. The Complainant has never given any authorization or permission to the Respondent to use the Trademarks in the Domain Names and to register or to use the Domain Names. The Respondent was intentionally creating confusion in order to divert consumers from the Complainant’s websites for commercial gain.
The Domain Names were registered in bad faith, as it is highly likely that the Respondent knew the Complainant and its well-known Trademarks. The Trademarks have been registered long before the Domain Names were registered and used. An Internet search for “decathlon” will show the Complainant as first hit.
The Domain Names are being used in bath faith. Currently the Domain Names do not resolve to an active website, but only after notices and takedowns carried out by (the attorney of) the Complainant. However, the Domain Names used to resolve to the Website, being an online shop offering sport articles, reproducing the Trademarks, and presenting to be an official website of the Complainant. The Complainant has not given permission for this use to the Respondent and thus this use is fraudulent. The purpose of the Respondent to register and use the Domain Names is to capitalize on the reputation of the Trademarks and to divert Internet users for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the Domain Names are 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 Names; and
(iii) the Domain Names have been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Names must be shown to be identical or confusingly similar to that mark.
The Complainant has sufficiently shown that it has rights in the Trademarks.
The Panel finds that the Domain Names are confusingly similar to the Trademarks. The Domain Name <decathlon-dz.com> reproduces the trademark DECATHLON in its entirety, only adding “dz” which is the international standard ISO 3166 country code for Algeria. The Domain Name <decaloisir-dz.com> is also confusingly similar as trademark DECAT is reproduced in the Domain Name, except for the letter “T”, with the addition of the dictionary term “loisir”. The Trademarks are recognizable within the Domain Names.
In addition, with regard to the generic Top-Level Domain (“gTLD”) “.com”, as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / email@example.com, WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and Crédit Industriel et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether a domain name is identical or confusingly similar; indeed, the gTLD is a necessary component of the domain name.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.
B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant’s contentions. However, on March 16, 2019, an individual who appears to be the beneficial holder of the Domain Names indicated that they were not using the Domain Names, that they did not have “any bad intentions”, and that they “shut down the website”.
The Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.
Based on the record, there is no evidence of any of the circumstances set forth in paragraph 4(c) of the Policy, such as:
(i) use or preparation to use the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Names (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence in the case file of any other rights or legitimate interests in the Domain Names.
There is also no evidence that the Complainant ever permitted in any way the registration or use the Complainant’s Trademarks, or to apply for or use any domain name incorporating the Trademarks. Moreover, the Website, to which the Domain Names resolved in the past, gave the Internet public the impression that it was the official website of the Complainant, as the Website was a mere reproduction of the official Website of the Complainant. Hence, the Panel finds that the Website was clearly misleading, which contributes to the lack of legitimate interests.
Furthermore, the use of the Domain Names cannot be considered a bona fide offering of goods or services. In particular, there is no evidence of any use or demonstrable preparation to use the Domain Names in connection with a bona fide offering of goods or services. There is also no evidence of any legitimate noncommercial or fair use of the Domain Names. The Domain Names used to resolve to the Website that gave the false impression that it was an official website of the Complainant by the unauthorized use of the Trademarks. The Domain Names currently do not resolve to any page.
Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met.
C. Registered and Used in Bad Faith
In light of the evidence filed by the Complainant, the Panel finds that the Complainant's Trademarks and activities are well known throughout the world.
Based on the facts of the matter, several circumstances indicate that the intention behind the registration of the Domain Names was in fact to profit in some fashion from or otherwise exploit the Trademarks. One of these circumstances is the fact that the Website was used to attract the Internet public and to present it as the official website of the Complainant, whilst using the Trademarks.
Furthermore, in the Panel’s view there is no other plausible explanation as to why the Domain Names were registered, other than in awareness of the Complainant and the Trademarks and intending to trade off the goodwill and reputation associated with the Complainant.
Accordingly, the cumulative circumstances as outlined in the decision are sufficient for the Panel to find bad faith registration and use. The fact that the Domain Names currently do not resolve to any page, does not change the Panel’s findings.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Names were registered and are being used 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 disputed Domain Names, <decaloisir-dz.com> and <decathlon-dz.com>, be transferred to the Complainant.
Willem J. H. Leppink
Date: April 17, 2019