WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Decathlon v. Perfect Privacy. LLC / Kayla Castle
Case No. D2021-0391
1. The Parties
The Complainant is Decathlon, France, represented by AARPI Scan Avocats, France.
The Respondent is Perfect Privacy. LLC, United States of America / Kayla Castle, United States of America.
2. The Domain Name and Registrar
The disputed domain name <decathlonsport.com> is registered with Register.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2021. On February 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 12, 2021, 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 15, 2021 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 17, 2021.
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, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2021.
The Center appointed Haig Oghigian as the sole panelist in this matter on April 9, 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 Decathlon and its related companies are well established and recognized as one of the world leader in the retailing of sporting and leisure goods. The Complainant opened its first store in 1976 and its first store outside France in 1986. It is the registered owner of a large number of trademarks including DECATHLON. For example, European Union Trade Mark registration No. 000262931 for the word mark DECATHLON, registered on April 28, 2004. The Complainant has registered also numerous domain names including <decathon.fr>, <decathon.com> and <decathon.net>.
According to the WhoIs, the disputed domain name was registered on November 19, 2020. Prior to the Complaint, the disputed domain name, redirected Internet users to the Complainant’s “www.decathlon.com” website. At the time of the decision, the disputed domain name resolved to a website with pay-per-click links related to gym and fitness equipment.
5. Parties’ Contentions
The Complainant asserts that it has registered numerous trademarks consisting of DECATHLON, being the DECATHLON trademark confusingly similar to the disputed domain name, it has no relationship with the Respondent, and the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent registered and is unlawfully using a domain name containing the trademark DECATHLON without any agreement or licence to redirect to the Complainant’s domain name <decathlon.com>.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
First, the Complainant asserts it has rights in the DECATHLON trademark. The Panel finds that the disputed domain name reproduces the Complainant’s DECATHLON trademark in its entirety, and that the inclusion of the generic Top-Level Domain extension is not generally relevant for the purposes of the first element. Nor the addition of the word “sport”, which does not prevent a finding of confusing similarity. There are numerous precedents for both these contentions, and therefore it is clear that the disputed domain name is confusingly similar to the Complainant’s DECATHLON trademark.
The Panel finds that the Complainant has therefore satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant states that it has never given any right of use or licence to the Respondent. Nor is the Respondent in any way related to the Complainant. The Respondent is not commonly known under the disputed domain name. Noting the facts and the arguments, the Panel finds that the Complainant has established an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has therefore satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant asserts that the Respondent very likely knew that it was registering and using the disputed domain name under false pretense and by continuing to use it, has attempted to take advantage of the reputation and commercial success of the Complainant. The DECATHLON trademarks and the Complainant’s domain names were registered long before the disputed domain name was registered. Noting the composition and use of the disputed domain name, the Panel finds that the Respondent registered and has used the disputed domain name in bad faith, probably to take advantage of its similarity with the DECATHLON trademarks.
The Panel finds that the Complainant has therefore satisfied the third element under paragraph 4(a) 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 <decathlonsport.com> be transferred to the Complainant.
Date: April 23, 2021