Westmore · UDRP DecisionDecathlon-italia.com
The Panel ordered transfer of <decathlon-italia.com>. It found the domain confusingly similar to the DECATHLON mark because it incorporated the mark in full with the geographic term “italia”; found no rights or legitimate interests because Respondent was unauthorized, unaffiliated, not known by the mark, and presented no bona fide or fair-use case; and found bad-faith registration and use based on Respondent’s inferred awareness of the well-known, pre-existing mark and use of the domain for a DECATHLON-branded EUR 1,000 gift-card questionnaire that redirected users to an error page. The Panel inferred that the use might involve fraudulent activity and found intentional attraction through confusion for commercial gain.
The timeline behind decathlon-italia.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind decathlon-italia.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The decision illustrates a straightforward trademark-plus-geography case in which the surrounding website use was especially important to bad faith. The addition of “italia” did not reduce similarity, while the DECATHLON-branded gift-card questionnaire demonstrated direct targeting of the trademark and supported an inference of knowledge, confusion, and commercial motivation.
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 v. WhoisGuard Protected, WhoisGuard, Inc. / Christopher Bost, Drone Squad Case No. D2018-1649 1. The Parties Complainant is Decathlon of Villeneuve D'Ascq, France, represented by AARPI Scan Avocats, France. Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Christopher Bost, Drone Squad of Mumbai, India. 2. The Domain Name and Registrar The disputed domain name <decathlon-italia.com> is registered with eNom, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2018. On July 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 24, 2018, 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 Complainant on July 30, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On the same date, the Center also notified the Parties that the Complaint was administratively deficient. Complainant filed an amended Complaint on July 30, 2018. 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 Respondent of the Complaint, and the proceedings commenced on July 31, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 20, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 21, 2018. The Center appointed Sandra A. Sellers as the sole panelist in this matter on September 12, 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. 4. Factual Background Since 1976, Complainant has been a major French manufacturer and retailer specializing in sports and leisure goods. The company opened its first store outside of France in 1986, in Germany. Complainant opened its first production office in Asia in 1988, and first Chinese store in 2003. Thirty five percent of its stores are in France, and sixty five percent in other markets. In 2016, it employed 78,000 employees worldwide, operated 1,171 stores, and had annual sales of nearly EUR 10 billion. Complainant owns numerous trademarks for its DECATHLON products worldwide, including the European Union trademark registration no. 000262931, registered on April 22, 1986. WIPO UDRP panels have found that the DECATHLON trademark is well-known. See, e.g. , Decathlon v . Name Redacted , WIPO Case No. D2017-1490 ; Decathlon SAS v . Wang Yongwei / Domain Admin, Information Privacy Protection Services Limited , WIPO Case No. D2015-0198 ; Decathlon v. Decat , WIPO Case No. D2008-1523 . Complainant offers its sporting and leisure goods for sale on the Internet via its official websites at: “www.decathlon.fr”, “www.decathlon.co.uk” and “www.decathlon.com.cn”. Complainant also registered numerous domain names, including <decathlon.fr>, <decathlon.com>, <decathlon.net>, <decathlon.eu>, and <decathlon.it>. Respondent registered the disputed domain name, <decathlon-italia.com>, on May 10, 2018. It resolves to a website containing Complainant’s DECATHLON trademark. It offers a Decathlon gift card of EUR 1,000 if the user completes an online questionnaire, but after answering the questionnaire, it redirects to an error page under “www.clickfactors.com/click”. 5. Parties’ Contentions A. Complainant Complainant asserts that it has rights in the DECATHLON trademark. It contends that the disputed domain name is confusingly similar to Complainant’s mark because it consists of Complainant’s DECATHLON mark in its entirety, and that the only difference between Complainant’s mark and the disputed domain name is the addition of the geographic indicator “italia.” Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following: (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 As set forth above, Complainant owns various trademark registrations for the DECATHLON mark. The disputed domain name is confusingly similar to Complainant’s DECATHLON mark. It contains Complainant’s DECATHLON mark in its entirety. The only difference between Complainant’s mark and the disputed domain name is the addition of the geographic indicator “italia”. Numerous previous WIPO UDRP decisions have held that the addition of a geographical indication does not avoid confusing similarity between the disputed domain name and a complainant’s trademark. Playboy Enterprises International, Inc. v. Zeynel Demirtas , WIPO Case No.D2007-0768, and cases cited therein. Accordingly, the Panel finds that Complainant has rights in the DECATHLON mark and that the disputed domain name is confusingly similar to Complainant’s mark. Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response. Complainant has exclusive rights in the DECATHLON mark and has not authorized Respondent to register and use the disputed domain name <decathlon-italia.com>. Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the DECATHLON mark. Respondent is not known under the mark. Respondent has made no showing that it has any legitimate interests in using the disputed domain name or that it is making a bona fide offering of goods or services under the disputed domain name. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name. The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name. Respondent is in default, and has not provided any evidence in its own favor. The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith It is difficult to conceive that Respondent did not know of Complainant’s marks and products when Respondent registered the disputed domain name. Many UDRP decisions have found that the DECATHLON mark is well-known As set forth above, the DECATHLON products are protected by various international trademark registrations. Complainant used the DECATHLON mark for its DECATHLON products. All of this occurred before Respondent registered the disputed domain name <decathlonitalia.com> on May 10, 2018. Further, the disputed domain name resolves to web pages containing the DECATHLON mark. Based on these facts, this Panel infers that Respondent was aware or must have been aware of Complainant’s mark when Respondent registered the disputed domain name, and registered it without authorization from the trademark owner in bad faith. See, e.g., Jupiters Limited v. Aaron Hall , WIPO Case No. D2000-0574 , in which the panel found it “inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant’s rights and interests”. Respondent is using the disputed domain name in bad faith, creating a likelihood of confusion as to the source, affiliation or endorsement of the website. As set forth above, it resolves to a website containing Complainant’s DECATHLON trademark. It offers a Decathlon gift card of EUR 1,000 if the user completes an online questionnaire, but after answering the questionnaire, it redirects to an error page under “www.clickfactors.com/click”. The Panel infers that this may be fraudulent activity. As set forth in Decathlon v . Nin Ma , WIPO Case No. D2014-1941 , Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion (paragraph 4(b)(iv) of the Policy). Complainant has satisfied the third criterion of paragraph 4(a) 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 disputed domain name <decathlon-italia.com> be transferred to Complainant. Sandra A. Sellers Sole Panelist Date: September 24, 2018
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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