Westmore · UDRP DecisionDecathlon-nike.com
The Panel ordered transfer of <decathlon-nike.com> after finding that the domain name, which combined the Complainant's DECATHLON mark with the NIKE mark, was confusingly similar to DECATHLON; that the Respondent lacked rights or legitimate interests; and that the domain name had been registered and used intentionally to misdirect customers for commercial gain. The transfer was expressly made without prejudice to any rights that Nike International Ltd. might assert.
The timeline behind decathlon-nike.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
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The case illustrates that confusing similarity may be established when a domain combines the complainant's mark with a separate third-party trademark. It also demonstrates that a panel may order transfer to the complainant without the third-party mark owner's consent, while expressly preserving any rights that the third party might later assert. The outcome was additionally driven by the domain's commercial use for a website imitating the Complainant's official online presentation.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Decathlon SAS v. Nadia Michalski Case No. D2014-1996 1. The Parties The Complainant is Decathlon SAS of Villeneuve d'Ascq, France, represented by Fidal, France. The Respondent is Nadia Michalski of Frepillon, France. 2. The Domain Name and Registrar The disputed domain name <decathlon-nike.com> is registered with 1API GmbH (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2014. On November 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 18, 2014, 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. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 24, 2014. The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on January 7, 2015. 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 requests the transfer of the disputed domain name <decathlon-nike.com>. 4. Factual Background The Complainant is one of the world’s leading brands in terms of sales and innovation on the sporting goods market since its creation in 1976. It sells its sporting and leisure goods in shops and online on its website “www.decathlon.com”. The Complainant is the owner of the worldwide protected trademark DECATHLON: - French trademark DECATHLON No. 1366349 registered on April 22, 1986; - International trademark DECATHLON No. 436235 registered on March 28, 1978; - International trademark DECATHLON No. 613216 registered on December 20, 1993; - Community Trademark No. 262931 DECATHLON registered on May 6, 1996. French courts have recognized that the trademark DECATHLON is a well-known trademark. The Complainant also relies on DECATHLON v. Decat , WIPO Case No. D2008-1523 (<decat.com>) which explained that “it is a widely known brand not only for consumers in France but throughout the world…”. The Complainant registered numerous domain names between 1995 and 1998, such as <decathlon.fr>, <decathlon.com>, <decathlon.co.uk>, <decathlon.es>; <decathlon.eu> in 2006; and <decathlon.cn> in 2010. The disputed domain name <decathlon-nike.com> is registered in the name of a registrant who is domiciled in France and is used to resolve to a website which is a reproduction of the look and feel of the official French website “www.decathlon.fr”. 5. Parties’ Contentions A. Complainant The Complainant objects to the registration and the use of the disputed domain name <decathlon-nike.com> by the Respondent and bases its Complaint on the following grounds: 1. Firstly, the Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Complainant sells Nike products and the combination of both trademarks DECATHLON and NIKE may confuse Internet users who may believe that the disputed domain name <decathlon-nike.com> is used by the Complainant or by Nike International Ltd. or with their authorization. The disputed domain name <decathlon-nike.com> is consequently confusingly similar to the Complainant’s trademark DECATHLON. 2. The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name <decathlon-nike.com>. The Respondent has not been authorized to use the trademark DECATHLON. It has never been known under the trademarks DECATHLON or NIKE. A search on the French Intellectual Property Office data base showed that the Respondent did not own any identical or similar trademark. The Respondent uses the disputed domain name <decathlon-nike.com> to sell supposed counterfeit Nike products and to phish for personal data and for financial information, which is fraudulent behavior. This situation is highly detrimental to the Complainant and to its partner, Nike International Ltd. 3. Finally, the Respondent registered and is using the disputed domain name <decathlon-nike.com> in bad faith. It is unlikely that the Respondent registered the disputed domain name <decathlon-nike.com> without any knowledge of the Complainant’s rights. The disputed domain name was first registered on October 11, 2014, many years after the Complainant registered its DECATHLON trademark. A warning letter has been sent by email and registered letter to the Respondent but the Complainant never received any response and the Respondent pursued its infringing use of the website, reproducing on its website the DECATHLON trademark selling allegedly counterfeit Nike products, and phishing for personal data. The Respondent is using infringing content to pass itself off as the Complainant. The unauthorized use of the trademark DECATHLON and the copy of the look and feel of the Complainant’s website “www.decathlon.fr” are highly detrimental to the Complainant and to its partners and clients. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (2) the respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant’s trademark DECATHLON is incorporated in the disputed domain name <decathlon-nike.com>, which contains an additional well-known and distinctive trademark ( i.e. Nike) The Complaint is solely based upon one of two concerned trademarks and the Complainant has not submitted any evidence indicating that it is acting on behalf of the other concerned trademark owner or equivalent. Nevertheless, according to previous UDRP panel decisions, a domain name consisting of more than one famous trademark may satisfy the requirement in paragraph 4(a)(i) of the Policy and thus be held to be confusingly similar. B. Rights or Legitimate Interests As set forth in paragraph 4(c) of the Policy, 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 a respondent’s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to the respondent of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate non-commercial 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. The Respondent did not submit a Response to the Complaint and has not provided any evidence or circumstances required to establish that it has rights or legitimate interests in the disputed domain name, as required by paragraph 4(c) of the Policy. The Respondent makes a commercial use of the disputed domain name. Furthermore, the Respondent has no connection of affiliation with the Complainant. The evidence submitted by the Complainant adequately support its assertions. Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by the Panel to be evidence of the bad faith registration and use of a domain name.: For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant, who is the owner of the trademark or service mark, or to a competitor of that complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. In the Panel’s view, the Respondent, who is domiciled in France, could not ignore the rights on the prior trademark DECATHLON when registering the disputed domain name. The Panel finds that the disputed domain name was registered intentionally to misdirect customers looking for the Complainant’s website to the Respondent’s website. This constitutes bad faith registration. The Complainant’s evidence shows that the Respondent is intentionally using the disputed domain name to misleadingly divert customers. Thus, it creates a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website within the meaning of paragraph 4(b)(iv) of the Policy. This constitutes bad faith use within the meaning of paragraph 4(b)(iv) of the Policy. For the foregoing reasons, the Panel finds that the Complainant has also established bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy. It is the consensus view among UDRP panelists that neither the Policy nor the Rules expressly require the consent of a third party and previous panels have accepted complaints request that a domain name may be transferred to the complainant, noting that such decision would be expressly without prejudice to any rights, which may be asserted by third party trademark holder. See for example, ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002, WIPO Case No. D2000-0034 ; Yahoo! Inc. v. CPIC NET and Syed Hussain, WIPO Case No. D2001-0195 ; LEGO Juris A/S v. Suka LLC , WIPO Case No. D2011-1057 ; and Guccio Gucci S.p.A. v. Brenda Hawkins, WIPO Case No. D2013-0603 . Having the previous panel decisions in mind and the consensus view that neither the Policy nor the Rules expressly require the consent of a third party, this transfer is without prejudice to any rights that might be asserted by Nike International Ltd with regard to the disputed domain name <decathlon-nike.com>. 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 <decathlon-nike.com> be transferred to the Complainant. This transfer is without prejudice to any rights that might be asserted by Nike International Ltd, with regard to the domain name <decathlon-nike.com>. Marie-Emmanuelle Haas Sole Panelist Date: January 27, 2015
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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