WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Decathlon v. Johny Roky
Case No. D2020-3367
1. The Parties
The Complainant is Decathlon, France, represented by AARPI Scan Avocats, France.
The Respondent is Johny Roky, India.
2. The Domain Name and Registrar
The disputed domain name <decathlon-es.club> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2020. On December 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 11, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 17, 2020, 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 December 21, 2020.
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 January 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2021.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on February 23, 2021. 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 manufacturer specialized in the conception and retailing of sporting and leisure goods. The Complainant opened its first store in 1976 and its first store outside France in 1986. At the end of 2017, the company employed 87,000 employees worldwide with annual sales of EUR 11 billion. In January 2020, it was operating 1,647 stores throughout the world.
The Complainant has an extensive trademark portfolio and the DECATHLON trademark is registered in numerous countries in the world. For example, European Union Trade Mark registration no. 000262931 for the word mark DECATHLON, registered on April 28, 2004. The well-known character of the trademark has been recognized in decisions under the UDRP.
The Complainant also owns many domain names consisting of or including the Complainant’s trademark, for example <decathlon.fr>, <decathlon.es>, and <decathlon.com>.
According to the Registrar, the Domain Name was registered on December 26, 2019. At the time of the Complaint, the Domain Name resolved to a webpage that reproduced the DECATHLON logo, and pretended to offer Internet users coupons in return of leaving personal data. At the time of drafting the decision, the Domain Name resolved to a webpage informing that the Domain Name registration has expired.
5. Parties’ Contentions
The Complainant provides evidence of trademark registrations, and argues that the Complainant’s trademark is well known. The Domain Name is similar to the Complainant’s trademark as it reproduces DECATHLON with the addition of “-es”, which is insufficient to dispel the likelihood of confusion.
The Complainant asserts that the Respondent is not authorized to use the Complainant’s trademark. The Respondent is not commonly known by the Domain Name. The Respondent has not made any use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. The Respondent, without permission, pretends to grant Internet users coupons, but real intent is to attract visitors to the Respondent’s website and lure them into leaving personal data.
The Complainant believes the Respondent knew of the Complainant’s activity and prior trademark rights when the Respondent registered the Domain Name. The Complainant further argues that the fact that the Domain Name resolves to a website which real intent is to lure visitors into leaving personal data, is evidence of bad faith use. The fact that the website reproduces the DECATHLON logo and had a picture of a DECATHLON store, is further evidence of bad faith. Similar, the Domain Name was registered anonymously.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark DECATHLON. The test for confusing similarity involves the comparison between the trademark and the Domain Name. The Domain Name incorporates the Complainant’s trademark, with the addition of “-es”. The addition does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark.
For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domain (“gTLD”) “.club”; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register the Domain Name containing the Complainant’s trademark or otherwise make use of the Complainant’s mark. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered trademark rights. The Respondent cannot establish rights in the Domain Name as it has not made use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering. The Respondent’s unauthorized use of a reproduction of the Complainant’s logo and a picture of a DECATHLON store is not bona fide. On the contrary, the web page seems to be part of a bad faith scheme to attract Internet user and lure personal data from them.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel agrees with the Complainant that the Respondent most likely was aware of the Complainant when the Respondent registered the Domain Name. It is evident from the Complainant’s fame and the fact that the Respondent’s website used the Complainant’s logo and store picture.
Based on the case file, in particular the fact that the Respondent has made unauthorized use of the Complainant’s logo and not replied to the Complainant’s contentions, the Panel finds it likely that the Respondent has registered and used the Domain Name to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning 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 Domain Name <decathlon-es.club> be transferred to the Complainant.
Date: March 2, 2021