WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DECATHLON v. Artem Pedchenko

Case No. DUA2020-0026

1. The Parties

The Complainant is DECATHLON of France, represented by Scan Avocats AARPI, France.

The Respondent is Artem Pedchenko of Poland.

2. The Domain Name and Registrar

The disputed domain name <subea.com.ua> is registered with HostPro Lab Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2020. On September 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 28, 2020, 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 October 6, 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 October 7, 2020.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of .UA Domain Name Dispute Resolution Policy (the “.UA Policy”), the Rules for .UA Domain Name Dispute Resolution Policy (the “.UA Rules”), and the WIPO Supplemental Rules for .UA Domain Name Dispute Resolution Policy (the “WIPO Supplemental Rules”).

In accordance with the .UA Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 14, 2020. In accordance with the .UA Rules, paragraph 5(a), the due date for Response was November 3, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2020.

The Center appointed Taras Kyslyy as the sole panelist in this matter on November 16, 2020. 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 .UA Rules, paragraph 7.

4. Factual Background

Established in 1976, the Complainant is among the major retailers of sport equipment and sport accessories in the world, operating more than 1,520 stores in 54 countries. The Complainant employs more than 85,000 staff from 80 different nationalities. In 2018, it had annual sales of nearly EUR 11.3 billion.

The Complainant is the registered owner of a number of trademarks consisting in the wording SUBEA in France and abroad, including international trademark registration No. 1027503, designating also Ukraine, registered on September 10, 2009.

To promote its reputation on the Internet the Complainant registered and is using the domain names <subea.fr> registered since March 12, 2009 and <subea.com> registered since March 11, 2009.

The disputed domain name was registered on March 13, 2017 and redirects to the domain name <snorkeling.com.ua> resolving to a website selling sport products under the Complainant's trademarks SUBEA and EASYBREATH, and also containing a link to the disputed domain name.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical to the Complainant’s trademark. The country code Top-Level Domain ("ccTLD ") ".com.ua" has no distinguishing effect and must be removed from the analysis. The trademark SUBEA is entirely reproduced in the disputed domain name without any other element added

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not currently and has never been known under the disputed domain name. The Complainant did not know the Respondent and ascertains that the Respondent is not in any way related to its business, is not one of its distributors and does not carry out any activity for or has any business with it. The Complainant has never licensed, authorized, or otherwise permitted the Respondent to register a domain name incorporating its trademarks, nor to make any use of its trademarks in order to distinguish its own business. The disputed domain name identical to the Complainant’s trademark carries a high risk of implied affiliation. The Respondent intentionally is using the disputed domain name to target Ukrainian customers, who will immediately link the name of the producer/trademark. The Respondent's failure to indicate precisely its relationship with the Complainant and to include a disclaimer on the website at the disputed domain name in conjunction with the Respondent’s adoption of the Complainant’s mark on the top of the website, demonstrates the Respondent’s intent to mislead consumers into believing that the Respondent’s website is operated by, affiliated with, sponsored or endorsed by the Complainant. Moreover, the Respondent falsely states on the website that the goods are original. Such use of the disputed domain name to attract and divert consumers for commercial gain to Respondent’s websites does not satisfy the Oki Data principles and does not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use.

The disputed domain name was registered or is being used in bad faith. The Respondent was fully aware of Complainant’s prior rights, considering the popularity of the trademarks SUBEA in the diving industry, and registered the disputed domain name for the sole purpose of attracting the Complainant’s customers. By using the disputed domain name to sell confusingly similar, if not counterfeit, masks, water slippers, flippers and swim tops, the Respondent is not only causing harm to the Complainant to an economic point of view but may also create high risks for the consumers in terms of safety and security. The Respondent has used the disputed domain name in an attempt intentionally to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement. The Complainant believes that lack of transparency as to the owner of the disputed domain name for a long time and as to the person operating behind the website are clear evidences of doing business in bad faith. Since the Complainant has not authorized the Respondent to use its trademarks and domain names, this use could only be fraudulent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of the Proceedings

The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the .UA Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement (which shall be in English, Russian, or Ukrainian), subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.

However, as noted by previous .UA panels, paragraph 11 of the .UA Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the .UA Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., Chewy Inc v. Rostislav Karyi / Ростислав Карый, WIPO Case No. DUA2020-0003).

In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties.

The Complainant has submitted a request that the language of the proceedings be English. The Complainant contends that the Respondent must be familiar with the English language since (i) the disputed domain name is registered in Latin characters rather than Russian script; (ii) the wording SUBEA refers directly to the Complainant’s company and trademark; (iii) The website "http://subea.com.ua/" reproduces the Complainant’s trademark SUBEA which is written in Latin characters; (iv) the Respondent copies photos of the Complainant's products and translates its descriptions and product information from English to Russian; (v) the Registrar’s official website is in English language.

The Panel further notes that no objection was made by the Respondent to the proceeding being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement. This was despite the Center notifying the Respondent in Russian and English that the Respondent is invited to present its objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known its preference but did not do so.

The Panel also notes that the website associated with the disputed domain name contains English wording, as well as a description of the SUBEA products in Russian, In addition, the Complainant is located in Poland, where the Russian language is not normally used. The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint and its annexes had to be translated into Russian.

Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.

B. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in its registered trademark.

The Panel finds that the ccTLD “.com.ua” in the disputed domain name is viewed as a standard registration requirement and may be disregarded for the purposes of the confusing similarity test. The same approach was also applied by previous .UA panels (see, e.g., AB Elecrolux v. Name Servis, Александр Шевчук, WIPO Case No. DUA2020-0011).

The Panel finds that in the present case the disputed domain name incorporates the Complainant's trademark in its entirety with no additional terms, which is sufficient to find that the disputed domain name is identical to the Complainant’s trademark.

Considering the above the Panel finds the disputed domain name is identical to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the .UA Policy.

C. Rights or Legitimate Interests

While the overall burden of proof in .UA proceedings is on the complainant, the Panel recognizes that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. (see, e.g. LEGO Juris A/S v. Anton Obrezkov, WIPO Case No. DUA2020-0001).

Noting the facts and allegations listed above, the Panel finds that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.

Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name.

The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., AB Electrolux vs. Name Servis, Александр Шевчук, WIPO Case No. DUA2020-0011)

Distributors using a domain name containing complainant’s trademark to undertake sales related to the complainant’s goods may be making a bona fide offering of goods and thus have a legitimate interest in such domain name. However previous .UA panels (see, e.g. Harman International Industries, Inc. vs Александр Колегаев, WIPO Case No. DUA2020-0005) outlined that for this purpose the following cumulative requirements will be applied in the specific conditions of a .UA case:

(i) the respondent must actually be offering the goods at issue;

(ii) the respondent must use the site to sell only the trademarked goods;

(iii) the site must accurately and prominently disclose the registrant’s relationship with trademark holder; and

(iv) the respondent must not try to “corner the market” in domain names reflecting trademark.

The Panel finds that the Respondent failed to satisfy at least the third above requirement and did not in any way disclose its actual relationship with the Complainant, and thus failed to pass the above test. The Respondent’s use of the disputed domain name misleads consumers into thinking that the website is operated by or affiliated with the Complainant. As such, the Respondent’s use of the disputed domain name cannot be considered bona fide. Moreover, the Panel finds that the disputed domain name, which is identical to the Complainant’s trademark, carries a high risk of implied affiliation.

The disputed domain name incorporates the SUBEA trademark of the Complainant in its entirety and it is its distinctive element. Since SUBEA is a known trademark, and the disputed domain name is associated with the website offering SUBEA products, the Panel finds that the Respondent must have been aware of the SUBEA trademark when it registered the disputed domain name, and that it chose to target the SUBEA trademark because of the likelihood that it will attract traffic to the Respondent’s related website. In the Panel’s view, such conduct cannot be regarded as giving rise to rights or legitimate interests on the part of the Respondent to register and use the disputed domain name (see, e.g., Google LLC vs. Aлександр Дмитрович Бутенко, WIPO Case No. DUA2020-0009).

The Panel also finds that the Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interest according to paragraph 4(c)(ii) of the .UA Policy.

Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

D. Registered or Used in Bad Faith

The Respondent’s use of the disputed domain name to purport to sell the Complainant’s products shows that at the time of the registration of the disputed domain name the Respondent clearly knew and targeted Complainant’s prior registered and well-known trademark, which confirms the bad faith (see, e.g., MichaelKors (Switzerland) InternationalGmbH. vs. MinakovaMaria, WIPO Case No. DUA2020-0002).

The Panel finds that in the present case by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product on its website or location. Such use of the disputed domain name is considered as bad faith according to paragraph 4(b)(iv) of the .UA Policy.

The Respondent ignored its possibility to comment on the contrary and provide any good explanations to prove its good faith while registering and using the disputed domain name.

Considering the above, the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the .UA Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the .UA Policy and 15 of the .UA Rules, the Panel orders that the disputed domain name <subea.com.ua> be transferred to the Complainant.

Taras Kyslyy
Sole Panelist
Date: November 27, 2020