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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Decathlon v. Vitaliy Vlasiuk

Case No. D2021-2165

1. The Parties

The Complainant is Decathlon, France, represented by AARPI Scan Avocats, France.

The Respondent is Vitaliy Vlasiuk, Ukraine.

2. The Domain Names and Registrar

The disputed domain names <decathlon-all-forsport.site>, <decathlon-de.fun>, <decathlon-de.site>, <decathlon-de.space>, <decathlon-de-sport.site>, <decathlonde-sport.site>, <decathlon-de-sport.space>, <decathlondesport.website>, <decathlon-de.website>, <decathlon-ebike-akt.space>, <decathlon-ebike.site>, <decathlon-ebike.space>, <decathlon-es.site>, <decathlon-es.space>, <decathlon-eu-ebike.site>, <decathlon-france.site>, <decathlon-fr.site>, <decathlon-fr.space>, <decathlon-fr.website>, <decathlon-germany.site>, <decathlon-italy.site>, <decathlon-italy.space>, <decathlon-it.site>, <decathlon-promo.site>, <decathlon-promo.space>, <decathlon-saldi.site>, <decathlon-saldi.space>, <decathlon-spain.site>, <decathlon-spain.space>, <decathlon-sportfor-all.site>, <decathlon-sport.site>, <decathlon-sport.space>, <decathlon-sport.website>, <decathlon-store.fun>, <decathlon-store.site>, <decathlon-store.space>, <decathlon-vendre.site>, <decathlon-vendre.space>, <decathlon-venta.site>, <decathlon-venta.space>, <decathlon-winner.site>, <decathlon-win.site>, <ebike-decathlon.site>, and <ebike-decathlon.space> (the “Domain Names”) are registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2021. On July 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 7, 2021 the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 12, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center received an email communication from the Respondent on July 14, 2021. The Complainant filed an amended Complaint on July 22, 2021.

On July 12, 2021, the Center sent an email to the Parties in English and Russian regarding the language of the proceedings. On July 22, 2021, the Complainant reconfirmed its request that English be the language of the proceedings referring to provided respective arguments in support of its request. The Respondent did not provide any comments regarding the language of the proceedings.

The Center verified that the Complaint together with the amendment to 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, and the proceedings commenced on July 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Parties that it would proceed with the panel appointment process on August 26, 2021.

The Center appointed Piotr Nowaczyk as the sole panelist in this matter on September 21, 2021. 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

Decathlon, the Complainant in the present proceedings, is a major French manufacturer specialized in the conception and retailing of sporting and leisure goods. The Complainant opened its first store in 1976 and its first store outside France in 1986. As of the end of 2017, Decathlon employed 87,000 employees worldwide with annual sales of EUR 11 billion. In January 2020, it operated 1647 stores globally.

The Complainant is the owner of numerous DECATHLON trademark registrations, including:

- the International Trademark DECATHLON (word) No. 613216 registered on December 20, 1993;

- the European Union Trademark DECATHLON (word) No. 000262931 registered on April 28, 2004.

The Complainant is also the owner of numerous domain names including the DECTAHLON trademark, such as <decathlon.com>, <decathlon.net>, and <decathlon.fr>.

The Respondent registered the Domain Names between June 2, 2021 and July 7, 2021.

According to the evidence presented by the Complainant, as of the date of the Complaint, the Domain Names resolved to the websites featuring the Complainant’s trademarks and offering Internet users a possibility to participate in a contest to win an electric bike, or to the registrar’s landing page. As of the date of this Decision, the Domain Names are inactive.

5. Parties’ Contentions

A. Complainant

The Complainant requests that the Domain Names be transferred to the Complainant. According to the Complainant, each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case.

First, the Complainant submits that the Domain Names are identical or confusingly similar to the DECTAHLON trademark registrations of the Complainant.

Second, the Complainant argues that the Respondent has neither rights nor legitimate interests in the Domain Names.

Third, the Complainant submits that the Domain Names were registered and are being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. In the Respondent’s email of July 14, 2021, the Respondent offered to delete the Domain Names.

6. Discussion and Findings

Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements, which can be summarized as follows:

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

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

(iii) the disputed domain name has been registered and is being used in bad faith.

The requested remedy may only be granted if the above criteria are met.

At the outset, the Panel notes that the applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”. See section 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

A. Language of Proceedings

The language of the Registration Agreement for the Domain Names is Russian. Paragraph 11(a) of the 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, 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.

As noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the 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., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334).

The Complainant has submitted a request that the language of the proceedings be English. The Complainant contends that the Registration Agreement is available in several languages, including English, and the registrant sent the Complainant e-mails written in English. The Complainant also notes that the Domain Names use English terms such as “winner”, “sport, and “ebike”. The Complainant believes that all these circumstances indicate that the Respondent at least understands English.

The Panel finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian. Also, it has been proven to the Panel’s satisfaction that the Respondent is likely to be familiar with the English language, further noting that the Respondent’s email of July 14, 2021, was in English. In this regard, the Panel notes that although given the opportunity, the Respondent did not provide any comments regarding the language of the proceedings.

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 first element that the Complainant must establish is that the Domain Names are identical or confusingly similar to the Complainant’s trademark rights.

The Complainant holds several valid DECATHLON trademark registrations, which precede the registration of the Domain Names.

The Domain Names incorporate the Complainant’s DECATHLON trademark in its entirety. As numerous UDRP panels have held, incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696).

This Panel accepts that the addition of the terms such as “sport”, “ebike”, “win”, “winner”, “store”, “germany”, “for all”, etc. does not serve to prevent confusing similarity between the Domain Names and the Complainant’s trademark. Prior UDRP panels have consistently held that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, would not prevent a finding of confusing similarity under the first element. See WIPO Overview 3.0, section 1.8.

The Top-Level Domains (the “TLDs”) in the Domain Names, such as “.site”, “.website”, “space”, “.fun”, are viewed as a standard registration requirement and as such are disregarded under the first element confusing similarity test. See WIPO Overview 3.0, section 1.11.1.

Given the above, the Panel finds that the Domain Names are confusingly similar to the Complainant’s trademark. Thus, the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Domain Names.

The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(a) that it has made 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 prior to the dispute; or

(b) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or

(c) that it intends to make a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

Although given the opportunity, the Respondent has not submitted any evidence indicating that any of the circumstances foreseen in paragraph 4(c) of the Policy are present in this case.

On the contrary, it results from the evidence in the record that there are the Complainant’s DECATHLON trademark registrations, which predate the Respondent’s registration of the Domain Names. There is no evidence in the case that the Complainant has licensed or otherwise permitted the Respondent to use the DECATHLON trademark or to register the Domain Names incorporating this trademark. The Complainant 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 have any business with it. There is also no evidence to suggest that the Respondent has been commonly known by the Domain Names.

Moreover, it results from the evidence in the record that the Respondent does not make use of the Domain Names in connection with a bona fide offering of goods or services, as well as it does not make a legitimate, noncommercial or fair use of the Domain Names without intent for commercial gain.

The Panel notes that, according to the evidence provided by the Complainant, most of the Domain Names are being used by the Respondent to redirect Internet users to the websites offering a contest to win an electric bike. Such use of the Domain Names does not qualify as a legitimate noncommercial or fair use.

Furthermore, the Panel finds that the Domain Names suggest an affiliation with the Complainant and its DECATHLON trademark, as the Domain Names wholly reproduce the Complainant’s trademark in entirety. Fundamentally, the Respondent’s use of the Domain Names will not be considered “fair” if it falsely suggests affiliation with the Complainant as a trademark owner. See WIPO Overview 3.0, section 2.5.

Given the above, the Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the Domain Names. Thus, there is no evidence in the case file that refutes the Complainant’s submissions. The Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The third requirement the Complainant must prove is that the Domain Names have been registered and are being used in bad faith.

Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. See WIPO Overview 3.0, section 3.1.

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:

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

(ii) circumstances indicating that the domain name were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.

As indicated above, the Complainant’s rights in the DECATHLON trademark predate the registration of the Domain Names. This Panel finds that the Respondent was or should have been aware of the Complainant’s trademark at the time of registration of the Domain Names, as the Complainant’s DECATHLON trademark is well-known globally and unique to the Complainant. Thus, the Respondent could not reasonably ignore the reputation of the products and services this trademark identifies. The Respondent in all likelihood registered the Domain Names with the expectation of taking advantage of the reputation of the Complainant’s trademark.

Moreover, according to the evidence provided by the Complainant, most of the Domain Names are being used in bad faith by the Respondent to redirect Internet users to the website displaying the Complainant’s logo and trademarks and offering a contest to win an electric bike. This indicates that the Respondent has intentionally used the Domain Names in an attempt to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the DECATHLON trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites.

In the case of the Domain Names which resolve to the registrar’s landing page, the Panel also finds that such use could not be perceived as a good faith use. In the overall circumstances of this case, the Respondent’s passive holding of the Domain Names supports the finding of bad faith. As numerous UDRP panels have held, passive holding, under the totality of circumstances of the case, can constitute a bad faith use under the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Novo Nordisk A/S v. CDMS Invest, WIPO Case No. D2012-0676. As such, the fact that all Domain Names are currently inactive and thus, being passively held, similarly does not prevent a finding of bad faith; rather, the change in use further supports an inference of bad faith.

Finally, the Panel acknowledges that the Domain Names have active mail exchange (MX) records. This entails the possibility that the Respondent can use the Domain Names to send fraudulent emails for phishing attempts or fraudulent activities. In consequence, this further creates an inference that the Respondent registered and uses the Domain Names in bad faith. See also Conféderation Nationale du Crédit Mutuel, Crédit Industriel et Commercial v. Khodor Dimassi, WIPO Case No. D2016-1980.

For the reasons discussed above, the Panel finds that the Complainant has proved the requirements 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 Domain Names <decathlon-all-forsport.site>, <decathlon-de.fun>, <decathlon-de.site>, <decathlon-de.space>, <decathlon-de-sport.site>, <decathlonde-sport.site>, <decathlon-de-sport.space>, <decathlondesport.website>, <decathlon-de.website>, <decathlon-ebike-akt.space>, <decathlon-ebike.site>, <decathlon-ebike.space>, <decathlon-es.site>, <decathlon-es.space>, <decathlon-eu-ebike.site>, <decathlon-france.site>, <decathlon-fr.site>, <decathlon-fr.space>, <decathlon-fr.website>, <decathlon-germany.site>, <decathlon-italy.site>, <decathlon-italy.space>, <decathlon-it.site>, <decathlon-promo.site>, <decathlon-promo.space>, <decathlon-saldi.site>, <decathlon-saldi.space>, <decathlon-spain.site>, <decathlon-spain.space>, <decathlon-sportfor-all.site>, <decathlon-sport.site>, <decathlon-sport.space>, <decathlon-sport.website>, <decathlon-store.fun>, <decathlon-store.site>, <decathlon-store.space>, <decathlon-vendre.site>, <decathlon-vendre.space>, <decathlon-venta.site>, <decathlon-venta.space>, <decathlon-winner.site>, <decathlon-win.site>, <ebike-decathlon.site>, and <ebike-decathlon.space> be transferred to the Complainant.

Piotr Nowaczyk
Sole Panelist
Date: September 28, 2021

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