The Complainant is JD Sports Fashion (France) S.A.S. of Tourcoing, France, represented by Urquhart-Dykes & Lord, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Li Dong of Nanyang, Henan, China.
The disputed domain names <chausportfr.com>, <chausportsfr.com> and <chausportsoldefr.com> are registered with Xin Net Technology Corp. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2016. On September 30, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 8, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 10, 2016, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on October 11, 2016. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the 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 in English and Chinese, and the proceedings commenced on October 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 6, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 7, 2016.
The Center appointed Jonathan Agmon as the sole panelist in this matter on November 10, 2016. 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.
The Complainant is a joint-stock company incorporated in France. The Complainant is a leading multi-channel retailer of international footwear brands and sports fashion wear. The Complainant was founded in 1980 and ever since traded under the CHAUSPORT brand.
The Complainant operates 71 stores, in premium locations, in town centers and shopping centers across France under the CHAUSPORT brand.
The Complainant is the owner of a trademark registration for the mark CHAUSPORT - European Union Trade Mark Registration No. 008519977, registered on February 22, 2010.
The Complainant operates an e-commerce website at “www.chausport.com”.
The disputed domain names <chausportfr.com>, <chausportsfr.com> and <chausportsoldefr.com> were registered on 13 September, 2016.
Currently, the disputed domain names redirect to an identical website, offering sports goods for sale.
The Complainant argues that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant further argues that the disputed domain name <chausportfr.com> consists of its trademark CHAUSPORT in its entirety and without modification plus the descriptive country code indicator “fr”, which stands for France.
The Complainant further argues that the disputed domain name <chausportsfr.com> consists of its trademark CHAUSPORT in its entirety in a plural form plus the descriptive country code indicator “fr”, which stands for France.
The Complainant further argues that the disputed domain name <chausportsoldefr.com> consists of its trade mark CHAUSPORT in its entirety and without modification plus the descriptive term “solde”, which is commonly used to refer to a sale or clearance, and the country code indicator “fr”, which stands for France.
The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant further contends that to the best of its knowledge the Respondent is not commonly known by the disputed domain names.
The Complainant further contends that the disputed domain names were registered in bad faith and are being used in bad faith.
The Complainant further argues that it is hard to believe that the disputed domain names were registered, or are being used, in good faith, without the Respondent having been aware of the Complainant and its CHAUSPORT trademark.
The Complainant further argues that by virtue of the longstanding and widespread use of the CHAUSPORT trademark in France, members of the public would believe that any website at the disputed domain names is being operated by the Complainant or in association with the Complainant.
The Complainant further argues that the disputed domain names amount to a misrepresentation to consumers of an association with the Complainant and its goodwill in its CHAUSPORT trademark which will result in an infringement of the trademark of the Complainant.
The Complainant further argues that the disputed domain names have been registered and are being used in such a way as to create an association with the Complainant for the commercial gain of the Respondent.
For all of the above reasons, the Complainant requests the transfer of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
The language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The language of the Registration Agreements for the disputed domain names is Chinese, as confirmed by the Registrar in its verification email to the Center of October 8, 2016.
The Complainant requested that the language of the proceeding be English.
The Respondent did not respond to the Complainant’s language request.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
(i) The disputed domain names consist of Latin letters, rather than Chinese letters;
(ii) The websites under the disputed domain names display English terms and product names;
(iii) The Respondent did not object to the Complainant request the English would be the language of the proceeding.
Upon considering the above, the Panel determines that English be the language of the proceeding.
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner a European Union Trade Mark Registration No. 008519977 for the mark CHAUSPORT, registered on February 22, 2010.
The Panel finds that the disputed domain name <chausportfr.com> incorporates the Complainant’s CHAUSPORT trademark in its entirety, as a dominant element, and includes the term “fr”, together with the generic Top-Level Domain (“gTLD”) suffix “.com”.
The addition of the term “fr”, does not serve to distinguish or differentiate the disputed domain name from the Complainant’s trademarks, especially as “fr” stands for France, where the Complainant conducts its business.
The Panel also finds that the disputed domain name <chausportsfr.com> incorporates the Complainant’s CHAUSPORT trademark in its entirety, as a dominant element, and includes the letter “s” and the term “fr”, together with the gTLD suffix “.com”.
The addition of the letter “s” and the term “fr”, does not serve to distinguish or differentiate the disputed domain name from the Complainant’s trademarks, especially as “s” is added as plural indication and “fr” stands for France, where the Complainant conducts its business.
The Panel also finds that the disputed domain name <chausportsoldefr.com> incorporates the Complainant’s CHAUSPORT trademark in its entirety, as a dominant element, and includes the descriptive term “solde” and “fr”, together with the gTLD suffix “.com”.
The addition of the term “solde” and the term “fr”, does not serve to distinguish or differentiate the disputed domain name from the Complainant’s trademarks, especially as “solde” is descriptive term used to refer to a sale or clearance and the term “fr” stands for France, where the Complainant conducts its business.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not differentiate a domain name from the relevant registered trademark. (See Yahoo! Inc. v. Blue Q Ltd., Romain Barissat, WIPO Case No. D2011-0702).
The addition of the gTLD suffix “.com” does not have the capacity to distinguish the disputed domain names from the Complainant’s CHAUSPORT registered trademark and is disregarded when comparing the disputed domain names with the Complaint’s trademark. See Volkswagen AG v. Todd Garber, WIPO Case No. D2015-2175; see also Dassault (Groupe Industriel Marcel Dassault) v. Ma Xiaojuan, WIPO Case No. D2015-1733; Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080.
Consequently, the Panel finds that the Complainant has shown that the disputed domain names are identical or confusingly similar to the CHAUSPORT trademark in which the Complainant has rights.
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain names. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s trademarks or a variation thereof and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services.
The Respondent has not submitted any substantive Response to the Complaint and did not provide any explanation or evidence to show any rights or legitimate interests in the disputed domain names sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant must show that the Respondent registered and is using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain names long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the CHAUSPORT trademark since at least the year 2010. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).
The disputed domain names are confusingly similar to the Complainant’s trademark. Previous UDRP panels have found that “[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site”. (See Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095.) To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.
Having regard to the evidence, the Panel finds that the disputed domain names were registered and are being used by the Respondent with knowledge of the Complainant and in bad faith with the intent to create an impression of an association with the Complainant and profit therefrom. The Respondent’s actions therefore constitute bad faith. (See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”.)
Based on the evidence that was presented to the Panel, including the Complainant’s registered trademark, the use of the Complainant’s trademark in the disputed domain names, the use of the disputed domain names to offer similar products and the Respondent’s failure to answer the Complaint, the Panel finds that the disputed domain names were registered and are being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under 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 disputed domain names <chausportfr.com>, <chausportsfr.com> and <chausportsoldefr.com> be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Date: November 24, 2016