WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Decathlon v. Domain Administrator, See PrivacyGuardian.org / Xiao Jian

Case No. D2019-0503

1. The Parties

The Complainant is Decathlon of Villeneuve d’Ascq, France, represented by AARPI Scan Avocats, France.

The Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America (“United States”) / Xiao Jian of Fuzhou, China.

2. The Domain Name and Registrar

The disputed domain name <decathlon-foot.net> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2019. On March 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2019, 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 March 7, 2019 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 March 7, 2019.

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 March 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 1, 2019.

The Center appointed Cherise Valles as the sole panelist in this matter on April 9, 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 Complainant is a major French manufacturer specializing in the development and retailing of sporting and leisure goods, founded in 1976. It is one of the world’s leading brands in the sporting market in terms of sales and innovation.

Since 1986, it has expanded its presence beyond France, including into countries such as Germany and China. It has had a production office in Asia since 1988 and its first shop in Asia was opened in 2003. At the end of 2017 the Complainant had 87,000 employees worldwide, operating 1,510 stores. It has annual sales of EUR 11 billion. 35% of the Complainant’s stores are in France and 65% are in international markets.

The Complainant is the registered owner of a large number of trademarks consisting of or including the wording DECATHLON in France and abroad, including the following:

- French word trademark No. 1366349 for DECATHLON, registered on April 22, 1986 (duly renewed) for goods and services 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;

- European Union word trademark No. 262931 for DECATHLON, registered on April 28, 2004 and registered for goods and services 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;

- International word trademark No. 613216 for DECATHLON, registered on December 20, 1993 (duly renewed) and registered for goods and services 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; and

- International word trademark No. 1115888 for DECATHLON, registered on April 12, 2012 and registered for goods and services in classes 25, 28 and 35.

The Complainant’s trademark DECATHLON benefits from a solid reputation with both French and foreign consumers. Its well-known character has been recognized repeatedly by the French judicial courts and by previous UDRP panels (see, e.g., Decathlon v. WhoisGuard, Inc. / Win Millett, WIPO Case No. D2018-2195 and Decathlon v. Wang Yongwei / Domain Admin, Information Privacy Protection Services Limited, WIPO Case No. D2015-0198).

The Complainant offers its sporting and leisure goods for sale online, through its official websites including those located at <decathlon.fr> (registered on June 30, 1995), <decathlon.com> (registered on May 31, 1995) and <decathlon.net> (registered on June 23, 1998), and uses its DECATHLON trademark in its domain names to promote its activities online.

The disputed domain name <decathlon-foot.net> was registered on November 26, 2017. The disputed domain name resolves to an online shop selling sport articles.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

-The disputed domain name is confusingly similar to the Complainant’s registered trademark, DECATHLON,in light of the fact that it wholly incorporates the Complainant’s mark followed by the descriptive word “foot”.

-The Respondent lacks rights or legitimate interests in the disputed domain name.

-The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.

-The disputed domain name has been registered and is being used in bad faith.

-The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The disputed domain name was used to impersonate the Complainant with the intention of attempting to defraud the Complainant’s customers and providers. The disputed domain name resolves to an online shop selling sport goods which are likely to be counterfeits of products sold by the Complainant.

The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:

(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name was registered and is being used in bad faith.

The Complainant has the burden of proof in establishing each of these elements.

The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant.

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.

The Complainant is the owner of multiple registrations in jurisdictions throughout the world for the trademark DECATHLON, as indicated in Section 4 above.

The disputed domain name is confusingly similar to the Complainant’s well-known DECATHLON trademark as the term “decathlon” is entirely reproduced in the disputed domain name, followed by the descriptive term “foot”, which may be seen as a reference to the Complainant’s activities. Previous UDRP panels have recognized that a domain name composed of the Complainant’s trademark and a generic or descriptive term is confusingly similar to the Complainant’s mark. See Decathlon v. Name Redacted, WIPO Case No. D2017-1490, regarding the domain name <decathlon-foot.com>, in which the panel found that the addition of the descriptive term “foot” to the DECATHLON trademark did not exclude confusing similarity.

Previous panels have held that the generic Top-Level Domain (“gTLD”) “.net” is generally irrelevant when assessing whether a domain name is identical or confusingly similar to a trademark as it is a functional element. See, e.g., Novartis AG v. James H Park, WIPO Case No. D2017-2355.

In the light of the foregoing, the Panel finds that the disputed domain name <decathlon-foot.net> is confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent):

“[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(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 Respondent did not submit a response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

There is no evidence that the Respondent is currently, or has ever been, known under the name DECATHLON. The Respondent has never filed any trademark identical, or similar, to the Complainant’s trademarks. Furthermore, the Complainant does not know the Respondent and the Respondent is not in any way related to its business, is not one of the Complainant’s distributors and does not carry out any activity for or have any business with the Complainant. The Complainant has never given any authorization or permission whatsoever to the Respondent to register or to use the disputed domain name.

The absence of any link between the Complainant and the Respondent, or of any authorization by the Complainant for the Respondent to use the term “decathlon”, is all the more objectionable as the disputed domain name resolves to an online shop selling sports goods related to soccer (namely jerseys, trousers and jackets) which are likely to be counterfeits of products sold by the Complainant on its website or in its stores. The Respondent is therefore intentionally creating confusion in order to divert consumers from the Complainant’s websites for commercial gain.

Previous UDRP panels have found that a respondent lacked rights or legitimate interests in a disputed domain name where such respondent was not currently and had never been known under the name Decathlon, was not affiliated with the Complainant or with its distributors and was not permitted, licensed or otherwise authorized by the Complainant to use its DECATHLON trademarks. See, e.g., Decathlon v. Name Redacted, supra and Decathlon v. Wang Yongwei / Domain Admin, Information Privacy Protection Services Limited, supra.

Moreover, in registering the disputed domain name, the Respondent is depriving the Complainant of a possible strategic domain name.

In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct;

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.

It is likely that the Respondent knew of the Complainant and its well-known trademarks in the field of sporting and leisure goods when registering the disputed domain name. The DECATHLON trademarks and domain names were registered long before the disputed domain name was registered.

As stated above, the disputed domain name resolves to an online shop selling sports goods likely to be counterfeits of products sold by the Complainant on its website or in its stores. This indicates that the Respondent must have been fully aware of the Complainant’s prior rights and must have registered the disputed domain name for the sole purpose of attracting the Complainant’s customers for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source or affiliation by the Respondent’s website.

Previous UDRP panels have found that where a respondent knew, or should have known, that a domain name would be identical or confusingly similar to the Complainant’s DECATHLON trademarks, where such disputed domain name redirects Internet users to a website offering sports goods related to football which are supposed to be counterfeits of the Complainant’s products, and where the respondent has improperly masked its identity to avoid being contactable, such respondent has registered and is using the disputed domain name in bad faith. See Decathlon v. Name Redacted, supra.

Furthermore, the Respondent has maintained such use of the disputed domain name, despite formal notices sent by the Complainant. This constitutes evidence of registration and use in bad faith.

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.

7. Decision

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 <decathlon-foot.net> be transferred to the Complainant.

Cherise Valles
Sole Panelist
Date: April 22, 2019