The Complainant is Decathlon of Villeneuve d’Ascq, France, represented by AARPI Scan Avocats, France.
The Respondent is Nexperian Holding Limited of Hangzhou, Zhejiang, China / Hu Yan Kai of Wuhan, Hubei, China.
The disputed domain name <decathlonmall.net> (the “Domain Name”) is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2017. On November 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 22, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 23, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant filed an amended Complaint and requested that English be the language of the proceeding on December 4, 2017. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in English and Chinese of the Complaint, and the proceedings commenced on December 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2017.
The Center appointed Rachel Tan as the sole panelist in this matter on January 10, 2018. 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 designs, manufactures and retails sporting and leisure goods under the DECATHLON trade mark. The first store under the “Decathlon” name was opened by the Complainant in France, in 1976. Today, the Complainant operates over 1,100 stores around the world. Since the 2003 opening of its first store in Shanghai, the Complainant has expanded its presence in China to over 200 stores.
The Complainant holds registrations of the DECATHLON trade mark in several jurisdictions around the world, including French Registration No. 1366349, filed on April 22, 1986, European Union Trade Mark Registration No. 000262931, registered on April 28, 2004, International Registration No. 613216, registered on December 20, 1993, and International Registration No. 1115888, registered on April 12, 2012.
The Complainant is the registrant of various domain names, including <decathlon.net> registered on June 23, 1998.
The Domain Name was registered by the Respondent on March 10, 2015. The Domain Name currently does not resolve to any website, but previously redirected users to the Complainant’s store on the Tmall e-commerce platform, on which was displayed the Complainant’s trade mark as well as sportswear and sports related items.
The Complainant contends that the Domain Name is identical or confusingly similar to its prior registered DECATHLON trade mark, which is well-known worldwide. The addition of the descriptive term “mall” does not add distinctiveness to the Domain Name.
The Complainant further contends that no authorization or permission has been given to the Respondent to register or use its DECATHLON trade mark. The Respondent is not in any way related to the Complainant’s business. The Respondent’s use of the DECATHLON trade mark to create a fraudulent affiliation is highly detrimental to the Complainant, its subsidiaries, partners and customers who rely on the contents of the website in good faith. The Respondent is using infringing content to pass itself off as the Complainant. The Respondent used the Domain Name to resolve to a website offering counterfeit sports items for sale. Thus, the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant finally contends that the Respondent registered and used the Domain Name in bad faith. The passive holding of the Domain Name indicates that the Respondent intends to profit from the Complainant’s reputation. The Domain Name previously resolved to a website displaying the Complainant’s trade mark. Further, the offering of sports articles for sale indicates that the Respondent intended to derive profit from the Complainant’s reputation. The Respondent used infringing content to pass itself off as the Complainant.
The Respondent did not reply to the Complainant’s contentions.
Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions.
In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding for the reasons summarized below:
(a) The Domain Name comprises the Complainant’s DECATHLON trade mark in Latin characters and the English term “mall”, which indicates that the Respondent understands English;
(b) The Domain Name was registered with the English generic Top-Level Domain (“gTLD”) “.net”;
(c) The Respondent appears to be familiar with the English language as his email address ([…]@gmail.com) is composed of the English words “micro” and “ease”;
(d) The Complainant is based in France where Chinese is not a common language.
(e) The Registration Agreement is not provided on the website of the Registrar. As a result, the Complaint was filed in English.
The Complainant cites a number of UDRP decisions in which a panel has allowed the language of the proceeding to be in English rather than the language of the Registration Agreement.
The Respondent did not comment on the language of the proceeding. The Center proceeded to issue its case-related communications to the Parties in both English and Chinese. The Center decided to accept the Complaint as filed in English, accept a Response in either English or Chinese, and appoint a Panel familiar with both languages.
It is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below:
(a) The Complainant is a company from France. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses;
(b) English is not the native language of either Party;
(c) The Respondent’s choice of Latin characters and English words for the Domain Name, the “.net” gTLD, and email address, indicates some familiarity with the English language;
(d) Even if the Respondent does not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese of the Complainant’s request for English to be the language of the proceeding, but the Respondent did not protest against this request; and
(e) The Respondent has failed to participate in the proceeding and has been notified of its default. The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English.
As one panel put it in the case Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191 (<shopzappos.com>):
“…a clear default by a Respondent who has been informed in their own language of the proceedings, and of the preliminary acceptance of the Complaint in a particular language, would certainly be a strong factor in support of a Panel subsequently determining that there should be consistency between the language of the Complaint as originally accepted and the language of proceedings as ultimately determined by the Panel.”
The Complainant submitted extracts of the DECATHLON trade mark registrations from the official public records of Institut National de la Propriété Industrielle (the “INPI”), the European Union Intellectual Property Office (the “EUIPO”), and the World Intellectual Property Organization (“WIPO”). The registrations cover a broad range of goods and services, including clothing, sports clothing and sporting articles, and retail store services.
The Panel finds that the Complainant has adduced sufficient evidence to demonstrate its established rights in the DECATHLON trade mark.
By comparing the Domain Name and the DECATHLON trade mark, the Panel notes that the Domain Name incorporates the Complainant’s DECATHLON trade mark in full and deviates only by the addition of “mall”, an English word commonly defined as “a large retail complex”. In this context, the word “mall” takes on a descriptive meaning given that the Complainant is a sporting goods retailer, and some of its stores are located in commercial malls.
Therefore, the Panel finds that the Domain Name is confusingly similar to the Complainant’s DECATHLON trade mark. Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
The Complainant contends that it is not aware of the Respondent being “commonly known” by the name “Decathlon”. The Respondent is an individual whose name bears no resemblance to the Domain Name. There is no evidence of the Respondent having filed any trade mark identical with or similar to the Domain Name.
The Complainant further contends that the Respondent is not connected or affiliated to the Complainant nor authorized by it in any way to use or register the Domain Name. The Complainant alleges that the Respondent used the Domain Name to resolve to a website offering counterfeit sports items for sale. The Panel is not prepared to accept this unsupported allegation of illegal activity, even though the Respondent is in default. The Complainant has however submitted archived web pages demonstrating that the Domain Name previously redirected users to the Complainant’s ecommerce store in China on which is diaplayed the Complainant’s trade mark as well as sportswear and sports related items.
Pursuant to the Policy, the Panel has not found any evidence to suggest that the Respondent has any rights or legitimate interests in the Domain Name.
Therefore, the Panel finds that the Complainant has satisfied the second element under paragraph 4(a) of the Policy.
The Complainant’s DECATHLON trade mark is widely and extensively registered and used around the world, including in China.
The Domain Name was registered well after the first registration of the Complainant’s DECATHOLON trade mark and more than a decade after its first store opened in Shanghai. By 2015, the Complainant had a substantial commercial operation in China and would have acquired a high degree of fame in the country.
The Domain Name currently resolves to an inactive website. The “passive holding” of a domain name does not prevent a finding of bad faith. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (<telstra.org>).
The Panel notes that in the past, the website redirected users to the Complainant’s e-commerce store in China, without authorization. The Complainant’s allegation that the Respondent has obtained illegal revenue is not substantiated. The reliability of the websites “www.scamadviser.com” and “www.hidingnet.com” cannot be determined. The act of redirection in this case can establish bad faith insofar as the Respondent retains control over the redirection thus creating a real or implied ongoing threat to the Complainant. In light of the aforementioned, the Panel considers that it is not necessary to address the Complainant’s allegations regarding the sale of counterfeit goods by the Respondent.
The Respondent has failed to respond to the Complainant. Further, the Respondent has taken active steps to hide its identity using a proxy service.
Based on the above facts, it is implausible to contemplate of any good faith use to which the Domain Name may be put by the Respondent.
Taking into account all the circumstances of the case, the Panel finds that the Respondent must have known of the Complainant before registering the Domain Name and, considering the redirections and by continuing to hold the Domain Name, the Respondent has registered and used the Domain Name in bad faith.
Therefore, the Panel concludes that the Complainant has 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 Domain Name <decathlonmall.net> be transferred to the Complainant.
Rachel Tan
Sole Panelist
Date: January 22, 2018