WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Decathlon v. Registration Private, Domains By Proxy, LLC / Ivan Costin
Case No. D2021-2228
1. The Parties
The Complainant is Decathlon, France, represented by AARPI Scan Avocats, France.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Ivan Costin, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <decatlon-store.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2021. On July 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 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 July 13, 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 July 16, 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 July 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 22, 2021.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on September 1, 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, based in France, designs, manufactures, and sells sporting and leisure goods. The Complainant was registered in 1980 for trading in wholesale domestic goods and has been associated with sporting and leisure goods since 1986, eventually operating internationally. The Complainant has about 65 percent of its 1647 stores outside France and has recently been employing about 87,000 people.
The Complainant holds many trademarks of which the following are representative:
DECATHLON, word mark, French trademark, filed on April 22, 1986, registration number 1366349, in classes 3, 4, 5, 8, 9, 12, 13, 14, 16, 18, 20, 21, 22, 24, 25, 28, 32, 33, 35, 37, 39, 40, 42, 43, 44 and 45;
DECATHLON, word mark, European Union trademark, filed on May 6, 1996, registered on April 28, 2004, registration number 000262931, in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41 and 42;
DECATHLON, word mark (figurative), filed on December 20, 1993, registered on December 20, 1993, registration number 613216, in classes 1, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 16, 17, 18, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 35, 36, 37, 38, 39 and 42.
The Complainant also uses the domain names <decathlon.fr>, <decathlon.com>, and <decathlon.net>.
Little information is available about the Respondent, except for the contact details provided to the Registrar. The disputed domain name was registered on March 9, 2021. The disputed domain has resolved to an online store selling a wide variety of sporting and leisure goods under the heading “DECATHLON”.
5. Parties’ Contentions
The Complainant states that it is the owner of the trademarks listed in section 4 above and has submitted copies of the relevant registration documents.
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. The generic Top-Leven Domain (“gTLD”) “.com” may be disregarded. The remainder of the disputed domain name mainly reproduces the Complainant’s trademark DECATHLON except that the letter “h” is omitted. The additional word “store” is descriptive or generic and should not prevent a finding of confusing similarity.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant did not know of the Respondent and they have had no business connection. The Complainant says the Respondent has never been known by the disputed domain name, which is not in use for a bona fide offering of goods or services or in any legitimate noncommercial use. The Complainant has never given the Respondent any permission to register the disputed domain name.
The Complainant says the disputed domain name was registered and is being used in bad faith.
The Complainant says its trademark is so well known and of such long standing that it is highly unlikely the Respondent was unaware of it at the time of registration of the disputed domain name. Despite it being a misspelling of the Complainant’s trademark, the word “decatlon” entered into a search engine brings up the Complainant.
The Complainant says the disputed domain name resolves to a website in use for the commercial sale of products that are copies of the Complainant’s products, being sold under the Complainant’s trademark, and also under the names “Easybreath” and “Subea”. Visitors to the Respondent’s website will have been confused into associating it with the Complainant, if only initially. The Complainant’s trade is harmed and customers are subject to safety and security risks.
The Complainant submits that it is established that where a domain name is obviously connected with a well-known trademark, its very use by someone with no connection to that trademark suggests opportunistic bad faith.
The Complainant says that MX servers have been activated in relation to the disputed domain name, meaning that it could be used for email addresses, with the potential for fraudulent use.
The Complainant says that in this case the Respondent’s use of a privacy service to hide its identity is a further indication of bad faith.
The Complainant has referenced a number of previous decisions under the Policy that it considers may be helpful to the Panel.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Panel is satisfied by the evidence produced by the Complainant that it has registered and has the requisite rights under the Policy in the trademark DECATHLON.
The disputed domain name is <decatlon-store.com>, of which the gTLD “.com” may be disregarded. The Complainant’s trademark is clearly recognisable in a misspelled form in the disputed domain name, the letter “h” having been omitted. To that extent, the disputed domain name is found to be confusingly similar to the Complainant’s trademark within the conventions of paragraph 4(a)(i) of the Policy. The additional word and hyphen “-store” in the disputed domain name are found not to prevent a finding of confusing similarity. Accordingly, the Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has stated that it has no knowledge of or prior connection with the Respondent and has not granted any permission to use its trademark to the Respondent. The Complainant has stated a prima facie case to the effect that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The Complainant has stated, and the Respondent has not contested in the terms of paragraph 4(c) of the Policy or otherwise, that the Respondent has never been known by the disputed domain name. There is no evidence of use of the disputed domain name in connection with a bona fide offering of goods or services, since the disputed domain name was used to resolve to a website impersonating the Complainant, allegedly offering the Complainant’s goods for sale, and providing no information as to the nature of the website’s relationship, or lack thereof, to the Complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.8.
The Panel finds on the evidence that the Respondent does not have rights or legitimate interests in the disputed domain name and finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant is required to prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel.
The Panel has inspected the screen captures produced in evidence by the Complainant showing websites to which the disputed domain name has resolved. One screen capture shows a selection of sporting and leisure goods, including clothing modelled by young people, under a heading consisting of the DECATHLON mark in a style and colour scheme similar to the appearance of the trademark shown on the Complainant’s own website, except that the latter features a stylised letter “A” that the Respondent’s does not. The other screen capture shows a swimming mask also under the same depiction of the Complainant’s trademark, together with a price. Both screen captures show a shopping cart at the top of the screen, and a search facility.
On the evidence, it may reasonably be concluded that the Respondent intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name. The probability is found to be high that at least some visitors would be likely to confuse the Respondent’s website and the goods illustrated and offered for sale thereon with those of the Complainant, at least initially. Additionally, panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can itself create a presumption of bad faith. The Panel finds the disputed domain name to have been used by the Respondent in bad faith under paragraph 4(b)(iv) of the Policy. See section 3.1.4 of WIPO Overview 3.0.
The similarities between the colour and styling of the Complainant’s trademark on its own website, and the almost identical representation shown on the Respondent’s website, lead the Panel to find it highly improbable that the Respondent was unaware of the Complainant’s trademark and field of business at the time of registration of the disputed domain name. The Panel further finds, on the balance of probabilities, that the disputed domain name was registered for the bad faith purpose for which it has been used.
The Complainant has produced a screen capture from “www.mxtoolbox.com” showing that the initial step of setting up Mail Exchange (MX) servers has been taken in order to activate the disputed domain name for use as an email address. On the basis of all of the foregoing findings it is not possible to conceive of any use of the disputed domain name as an email address that would be legitimate and would not be likely to confuse an Internet user, whether sending or receiving an email, into believing erroneously that they were in communication with the Complainant, when in fact they would be in communication with the Respondent. The setting up of MX servers in this instance is found to be further evidence of use of the disputed domain name in bad faith.
On the totality of the evidence and on the balance of probabilities, registration and use of the disputed domain name in bad faith are found in the terms of paragraph 4(a)(iii) of the Policy.
The Panel considers it more probable than not that in this particular case the Respondent’s use of a privacy service to withhold its contact details has been at least partly in order to avoid or delay the receipt of communications from the Complainant and the service of this Complaint, additionally supporting the finding of registration and use of the disputed domain name 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 name <decatlon-store.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: September 15, 2021