Complainant is Decathlon of Villeneuve-d'Ascq, France, represented by AARPI Scan Avocats, France.
Respondent is Bill Wang of Shenzen, China.
The disputed domain name <decathlon-sa.com> (“Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2018. On August 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 24, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on August 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 17, 2018.
The Center appointed James H. Grossman as the sole panelist in this matter on September 24, 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.
Complainant is Decathlon, a French manufacturer specializing in the design and sale of sporting and leisure goods. As Complainant states, the Company was registered before the Trade and Companies Register of Lille, France in 1980, and has gradually spread its stores and now online activities throughout the world. Thirty-five percent of its stores are in France and the balance of 65% are outside of France. According to Complainant, it employs 78,000 employees worldwide, operating 1,171 stores and a strong Internet presence with annual sales of nearly 10 Billion euros.
The trademark DECATHLON (“Trademark”) was first registered in France in 1976 and subsequently was registered not only in France, but also in the European Union, the United States, and in China. According to Complainant, these trademark rights have been continuously used in commerce since their registration. The well-known Trademark DECATHLON has been referred to in a number of prior UDRP decisions; Decathlon v. Name Redacted, WIPO Case No. D2017-1490 (<decathlon-foot.com>); Decathlon v. Wang Yougwei/Domain Admin, Information Privacy Protection Services Limited, WIPO Case No. D2015-0198 (<decathlonn.com>) and Decathlon v. Decat, WIPO Case No. D2008-1523 (<decat.com>), all of which prior decisions referred in some wording to the well or widely known brand and mark.
Complainant offers its goods online, through its official websites such as those located at “www.decathlon.fr” (registered in 1995), “www.decathlon.com” (registered in 1995), “www.decathlon.com.cn” (registered in 1998), “www.decathlon.net” (registered in 1998), and “www.decathlon.cn” (registered in 2010) and uses its Trademark as its domain name to promote its activities online.
Respondent, Bill Wang, according to the “WhoIs” database, is the registrant of the Disputed Domain Name and is based in China. According to Complainant, Respondent has no relationship to Complainant. Respondent’s registration of the Disputed Domain Name was on April 28, 2018 and thus its registration will expire one year from that date. The Disputed Domain Name resolves to a parking page with pay-per-click links.
Complainant’s contentions as to its entitlement to its Trademark and use of its domain names on the Internet are set forth above in the Factual Background section of this Decision. Further, Complainant contends that the Disputed Domain Name identically reproduces Complainant’s Trademark together with the letters “sa”, the latter referring to the fact that the Complainant is a “Société Anonyme” under French law. The use of the legal entity name adds nothing to the distinctive nature of the Disputed Domain Name (see Panel discussion hereafter re: Confusingly Similar or Identical on this issue).
There are a number of URDP decisions acknowledging that the inclusion of generic Top-Level Domains (“gTLDs”) such as “.com” does not give any special meaning to a domain name. Decisions are quite consistent that the mere addition of a Top-Level Domain to a well known trademark does not create any kind of distinctive character to those words, nor avoid the confusing similarity contention. See Playboy Enterprises International, Inc v. Zeynel Dimertas, WIPO Case No. D2007-0768. In this case, the Disputed Domain Name resolves to a page which displays pay-per-click links written in French and Spanish referring to Complainant’s products and, with serious implications, redirects the viewer to Complainant’s competitors’ websites.
In summary Complainant alleges:
1. Complainant has demonstrated its prior rights to the Disputed Domain Name in terms of its Trademarks and domain name filings both of which were filed well before the registration of the Disputed Domain Name;
2. The Disputed Domain Name is confusingly similar or basically identical to Complainant’s Trademarks and Complainant’s domain names and can only confuse someone looking at the Internet site into believing it is that of Complainant.
3. Respondent has no rights or legitimate interests in the Disputed Domain Name and Complainant has not given Respondent any right to use the Disputed Domain Name. Respondent is not currently and has never been known by the word “Decathlon” nor is there any filing of a trademark application by Respondent. Complainant knows of no noncommercial or fair use of the Disputed Domain Name.
4. Respondent registered the Disputed Domain Name in order to take advantage in some way of Complainant’s well recognized and highly regarded Trademarks and domain names, which, in view of Respondent’s failure to respond to this case, raises the issue of Respondent’s bad faith. In similar cases where a prior trademark is well recognized, it has been held that such notoriety of a complainant’s trademark “creates a prima facie presumption the respondent registered the disputed domain name for the purpose of selling it to Complainant or to one of its competitors, or, that it was intended to be used in some way to attract for commercial gain users to the website by creating a likelihood of confusion with Complainant’s mark”, Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020. As a result of the reputation and well known character of Complainant’s Trademarks, Complainant contends Respondent apparently knew and was aware of Complainant’s right tothe Trademark DECATHLON etc., at the time he registered the Disputed Domain Name.
Accordingly, Complainant argues that the Disputed Domain Name is (1) confusingly similar to its Trademark and its own domain names; (2) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (3) that the Disputed Domain Name is registered and used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
In order to succeed on its Complaint, Complainant must demonstrate that each (and thus all) of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests with respect to the Disputed Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to decide a complaint “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Respondent has defaulted by failing to timely file a response to the allegations of Complainant. Paragraph 14(a) of the Rules states: “In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the panel, the panel shall proceed to a decision on the complaint. Further, pursuant to paragraph 15(a), certain factual conclusions may be drawn on the basis of complainant’s undisputed representations.”
Also, paragraph 14(b) of the Rules states: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the panel, the panel shall draw such inferences as it considers appropriate.” When applying this provision, UDRP panels have generally concluded that the respondent’s default does not automatically result in a decision in favor of the complainant. However, a number of cases hold for a non-responsive respondent where a complainant fails to prove all the elements of paragraph 4(a). Nevertheless, a panel may draw negative inferences from the respondent’s default as per paragraph 14 of the Rules, particularly with respect to those issues uniquely in the knowledge and possession of the respondent. See Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413.
There has been ample evidence above from Complainant with regard to its Trademarks and domain names as to their notoriety. All of the Trademarks were issued and domain names registered prior to Respondent’s registration of the Disputed Domain Name on April 28, 2018.
As Complainant points out, prior UDRP panels have held that the gTLD “.com” is not relevant as to distinctiveness of a domain name.
Prior UDRP panels have also held that a domain name composed of the complainant’s trademark to which is merely added the company’s legal form is confusingly similar to the complainant’s mark. That is the case in this matter since the clear import of letters “sa” is to in fact refer to Complainant’s legal form, i.e. “Société Anonyme”. Carrefour v. Suayp Ozbey regarding <carrefoursa.ship>, WIPO Case No. D2017-1653; Marlette Funding, LLC v. Micheal Ard regarding <marlettefundingllc.com, WIPO Case No. D2018-0064 (the latter case cites other similar holdings by previous panels).
As Complainant argues, the issue of confusing similarity was well considered by the panel in Playboy Enterprises International Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768. The panel in that case, which involved a well known trademark, “concurs with the opinion of several prior UDRP panels, which have held that, when a domain name wholly incorporates a complainant’s registered mark, that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Hitachi, Ltd. v. Arthur Wrangle, supra; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615.
In view of the above cases, Complainant has met its obligations with regard to the requirements of paragraph 4(a)(i) of the Policy in that the Disputed Domain Name is identical or confusingly similar to Complainant’s trademarks and other intellectual property.
The second element that Complainant needs to prove is that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any 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.” Policy, paragraph 4(c).
The onus of proving this requirement falls, like each element, on the complainant. UDRP panels have recognized the difficulty of proving a negative especially in circumstances where most of the evidence is in the possession of a respondent.
Respondent, by failing to respond to this Complaint, has failed to rebut Complainant’s prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name.
Complainant makes clear that it does not know nor has it authorized Respondent in any way or form to use the Disputed Domain Name nor is Respondent a distributor nor in any other relationship with Complainant. In this regard, Complainant advises it would not allow anyone to use its Trademark online and certainly not send the Internet viewer to a competitor.
Respondent has intentionally created confusion so as to divert Internet viewers from Complainant to a competitor for commercial gain. There is no reference in the Complaint that there has been any noncommercial use of the Disputed Domain Name by Respondent.
In view of the above, the Disputed Domain Name violates the rights and legitimate interests of Complainant and Complainant has met its obligations under the requirements of the Policy, paragraph 4(a)(ii).
Paragraph 4(a)(iii) of the Policy requires the complainant to demonstrate that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a list of circumstances, inter alia, that may indicate bad faith. Complainant has set out arguments to meet these considerations and the Panel has made its own analysis.
It has long been recognized that consumers expect domain names incorporating a company’s name or trademark to lead to a website maintained by or affiliated with the trademark owner. See Panavision Int’l L.P. v. Toeppen, 141 F.3d. 1316, 1326 (9th Cir. 1998). Obviously, this is not what has occurred in this case.
The fact that Respondent uses the Disputed Domain Name on the Internet as a parking page, which, among other things, redirects the viewer to Complainant’s competitors raises the issue of bad faith. It seems clear to the Panel that because Respondent redirects Internet viewers to competitors of Complainant, as Complainant argues, Respondent had to be aware of the strong market position and reputation of Complainant when he sought to register and use the Disputed Domain Name. The Panel finds that Respondent has intentionally registered and used the Disputed Domain Name in bad faith. This is not the case of the innocent party who simply failed to review existing domain names. Respondent is using the Disputed Domain Name to fool Internet users by creating a likelihood of confusion as to the source of the website.
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-sa.com> be transferred to Complainant.
James H. Grossman
Sole Panelist
Date: October 3, 2018