WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Decathlon v. Privacy Service Provided by Withheld for Privacy ehf / Ben Kessler

Case No. D2021-4336

1. The Parties

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

The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Ben Kessler, United States of America (the “United Sates”).

2. The Domain Name and Registrar

The disputed domain name <decathlonusa.careers> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2021. On December 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 22, 2021, 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 January 4, 2022, 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 January 7, 2022.

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 January 10, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2022.

The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on March 7, 2022. 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 Decathlon, a major French manufacturer specialized in the conception and retailing of sporting and leisure goods. In June 2021, the Complainant was operating 1,714 stores with 99,165 employees worldwide and annual sales of EUR 11,4 billion.

The Complainant owns several registrations around the world for the trademark DECATHLON, which has already been recognized as well-known in previous decisions rendered under the UDRP, including the following:

- French registration No. 1366349 for the word mark DECATHLON, filed on April 22, 1986;

- European Union registration No. 000262931 for the word mark DECATHLON, registered on April 28, 2004; and

- International registration No. 613216 for the word mark DECATHLON, registered on December 20, 1993.

The Complainant is also the owner of numerous domain names comprising the trademark DECATHLON, such as <decathlon.fr>, registered on June 29, 1995; <decathlon.com>, registered on May 30, 1995; and <decathlon.net>, registered on June 22, 1998.

The disputed domain name was registered on December 9, 2020, and the website resolves to a parking page displaying links related to the Complainant’s field of activity.

5. Parties’ Contentions

A. Complainant

The Complainant states that it owns trademark registrations in several jurisdictions for the trademark DECATHLON, as well as different domain names including its mark DECATHLON and that all these registrations predate the registration of the disputed domain name.

According to the Complainant, panels have constantly rule that the inclusion of the generic Top-Level Domain (“gTLD”) does not give any distinctiveness to the domain name, which means that the gTLD “careers” is irrelevant to the determination of whether the disputed domain name is identical or confusingly similar to its trademark DECATHLON.

The Complainant mentions that the disputed domain name identically reproduces the trademark DECATHLON with the addition of the term “usa”, which is insufficient to avoid likelihood of confusion between the disputed domain name and Complainant’s trademark, since it may indicate to users that the disputed domain name resolves to a website for the United States.

The Complainant argues that has never given any authorization or permission to the Respondent to register or to use the disputed domain name and that the Respondent does not use it in connection with a bona fide offering of goods or services. The Respondent is not commonly known by the disputed domain name and it has not acquired any trademark rights related to the disputed domain name.

In addition, the Complainant says that its reputation is such that it is highly unlikely that the Respondent was unaware of the existence of the Complainant’s prior intellectual property rights when registered the disputed domain name and adds that the disputed domain name was intentionally registered and is using in bad-faith to attract users to the Respondent’s website for commercial gain, since it resolves to a parking page which displays links related to the Complainant’s field of activity.

Finally, the Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

As per paragraph 4(a) of the Policy, the Complainant must prove that:

(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 respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

The evidence presented demonstrates that the Complainant is the owner of many trademark registrations for DECATHLON worldwide. Therefore, the Panel finds that the Complainant has trademark rights for purposes of the Policy.

The disputed domain name comprises the Complainant’s trademark DECATHLON in its entirety. The addition of the term “usa”, which refers to the initials of the United States of America, does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks.

In this regard, it is the general view among prior UDRP panels that the addition of other terms to a trademark in a domain name would not prevent a finding of confusing similarity under the first element of the UDRP. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

Also, prior UDRP panels have recognized that the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that the domain name is confusingly similar to the complainant’s registered mark. See section 1.7, WIPO Overview 3.0.

The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

The Respondent has not submitted a response to the Complaint.

There is no evidence:

- That the Respondent has any authorization to use the Complainant’s trademarks or to register domain names containing the trademark DECATHLON;

- That the Respondent is commonly known by the disputed domain name; and

- That the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.

Instead, the Complaint shows and presented evidence that the disputed domain name was registered and used with the intention of attracting Internet users, for any kind of commercial gain, creating a likelihood of confusion with the Complainant’s trademark and activities.

Moreover, the composition of the disputed domain name itself is such to carry a risk of implied affiliation that cannot constitute fair use. See section 2.5.1, WIPO Overview 3.0.

The Panel finds that the use of the disputed domain name, which incorporates the Complainant’s trademarks, does not correspond to a bona fide use of domain names under the Policy.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e. the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The trademark DECATHLON is registered by the Complainant in several countries and has been used since a long time.

The disputed domain name comprises the Complainant’s entire trademark with the addition of the term “usa”, which indicates the United States of America and Internet users may believe the disputed domain name refers to the Complainant’s website for the United States or to a Complainant’s store in such country. The Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant’s DECATHLON mark is distinctive and very well-known in its field of activities. Thus, the disputed domain name that comprises such a mark adding the geographical term “usa” is already suggestive of the registrant’s bad faith. Prior panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4, WIPO Overview 3.0.

The website corresponding to the disputed domain name reproducing links related to the Complainant’s business segment, as per Annex H to the Complaint, clearly demonstrates that the Respondent’s intention was to deceive Internet users to believe they were dealing with the Complainant or at least to believe that the Respondent’s website was affiliated or endorsed by the Complainant.

Therefore, this Panel finds that the Respondent has intentionally attempted to attract Internet users to its website for its own commercial gain by creating a likelihood of confusion with the Complainant’s trademarks and misleading Internet users to believe that its website belongs to or is associated with the Complainant.

Moreover, the Respondent has chosen not to respond to the Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610: “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”.

This Panel finds that the Respondent’s intention of taking undue advantage of the trademark DECATHLON as described in paragraph 4(b)(iv) of the Policy has been demonstrated.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith.

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 <decathlonusa.careers> be transferred to the Complainant.

Mario Soerensen Garcia
Sole Panelist
Date: March 21, 2022.