WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Decathlon v. Nin Ma

Case No. D2014-1941

1. The Parties

The Complainant is Decathlon S.A. of Villeneuve d’Ascq, France, represented by Fidal, France.

The Respondent is Nin Ma of Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <decathlones.com> (“the Disputed Domain Name”) is registered with Xin Net Technology Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2014. On November 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 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.

On November 5, 2014, the Center transmitted an email to the parties in English and Chinese regarding the language of the proceedings. On November 6, 2014, the Complainant submitted its request that English be the language of the proceedings by email to the Center. The Respondent did not submit its comments on the language of the proceeding within the specified due date.

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 November 13, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2014.

The Center appointed Peter J. Dernbach as the sole panelist in this matter on December 17, 2014. 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 a French company specialized in the conception and retailing of sporting and leisure goods. The Complainant has produced registration information of several trademarks, inter alia: DECATHLON, International trademark, Registration No. 436235, registered on March 28, 1978; DECATHLON, Community trademark, Registration No. 000262931, registered on April 28, 2004.

According to the WhoIs data and the Registrar’s verification response, the Respondent is Nin Ma. The Disputed Domain Name was registered on September 4, 2014 and it is valid until September 4, 2015.

The Registrar confirmed, in its email of November 4, 2014, that the Registration Agreement for the Disputed Domain Name is in Chinese.

5. Parties’ Contentions

A. Complainant

The Complainant requests the Disputed Domain Name be transferred to the Complainant based on the following grounds:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant is the registered owner of numerous DECATHLON trademarks which are well-known worldwide. The Disputed Domain Name <decathlones.com> is confusingly similar to the Complainant’s DECATHLON trademark since it reproduces the DECATHLON trademark in its entirety, with the addition of two letters that do not grant distinctiveness to the Disputed Domain Name. Furthermore, the Disputed Domain Name is a misspelling of the DECATHLON trademarks, which increases the likelihood of confusion.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant has never given authorization or permission to the Respondent to register or to use its DECATHLON trademarks. The Respondent is not in any way related to the Complainant’s business, is not one of its distributors and the Respondent does not carry out any activity for the Complainant or has any business with it. The absence of legitimate interest is evidenced by the fact that the Respondent used the Disputed Domain Name to resolve to a website which constitutes a slavish reproduction of the Spanish official website belonging to the Complainant. It is believed that the Respondent used the Disputed Domain Name to “phish” for personal data, likely in order to obtain financial information in an attempt to defraud the Complainant’s clients. The Respondent is using the infringing content to pass itself off as the Complainant or its affiliate.

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

The Complainant’s DECATHLON trademarks are well-known worldwide and the DECATHLON trademarks were registered many years before the Disputed Domain Name was registered. The Disputed Domain Name <decathlones.com> is confusingly similar to the Complainant’s domain name <decathlon.es>, registered and widely used by the Complainant since 1998, many years before the Disputed Domain Name was registered, reproducing letter-by-letter the DECATHLON trademarks, with the mere addition of the letters “e” and “s”. It is therefore highly unlikely that the Respondent was unaware of the existence of the Complaint and its well-known trademark in the field of sporting and leisure goods when it filed application for registering the Disputed Domain Name. The Disputed Domain Name resolved to a website which was a slavish reproduction of the Complainant’s website and online store, which suggests the Respondent used the Disputed Domain Name to “phish” for personal data and highly likely for financial information in an attempt to defraud the Complainant’s clients. The Disputed Domain Name was registered and used in bad faith.

B. Respondent

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

6. Language of the Proceeding

Paragraph 11(a) of the Rules provides that “[u]nless 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 Rules allow the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical applicance co. ltd., WIPO Case No. D2008-0293). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states: “in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (See paragraph 4.3 of WIPO Overview 2.0).

The Registration Agreement is in Chinese. Therefore, the language of the administrative proceeding should generally be Chinese according to paragraph 11(a) of the Rules. However, the Complainant requests the language of the proceeding should be English. For the following reasons, the Panel decides that the language of the proceeding shall be English.

1. The website at the Disputed Domain Name previously resolved to contained content primarily in Spanish, which suggests that the website was designed to attract Internet users from around the world rather than only Chinese users (Dolce & Gabbana S.r.l. v. Shuangzhi Lee, WIPO Case No. D2013-1103);

2. The Panel finds that the Complainant is not in a position to conduct these proceedings in Chinese without additional expense and delay due to the need for translation of the Complaint into Chinese.

3. The Center has notified the Parties of the potential language issue in both Chinese and English on November 5, 2014. The Respondent did not make any comments on or object to the language requested by the Complainant before the specified deadline of November 10, 2014 indicated in the Center’s notification.

7. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”

The Complainant has established that it is the owner of the DECATHLON trademark.

The Disputed Domain Name, <decathlones.com>, incorporates the DECATHLON trademark in its entirety with the combination of two letters “es”, and the generic Top-Level Domain (gTLD) “.com”. The addition of two letters “es” and the gTLD “.com” do not distinguish the Disputed Domain Name from the Complainant’s DECATHLON trademark. The only distinctive part of the Disputed Domain Name is the “Decathlon” element, which contains the Complainant’s trademark in its entirety. Furthermore, the addition of two letters “es” strengthens the likelihood of confusion among Internet users, as the Complainant also owns the domain name <decathlon.es>.

The Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s DECATHLON trademark. The condition of paragraph 4(a)(i) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name[.]”

Paragraph 4(c) of the Policy sets out the following circumstances “[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent’s] rights or legitimate interests to the [disputed] domain name for the purposes of paragraph 4(a)(ii) [of the Policy]:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] 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; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The consensus view of UDRP panels on the rights or legitimate interests of a reseller or distributor under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.3 of the WIPO Overview 2.0, whereby: “[n]ormally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. […].” (See also, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; National Association of Realtors v. John Fothergill, WIPO Case No. D2010-1284).

The Complainant has established it is the owner of the DECATHLON trademark and confirmed that it has no connection or affiliation with the Respondent. The Complainant also states that no authorization was granted to the Respondent to use the trademark.

The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production thus shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.

The Respondent did not submit any evidence or allegation to show that it has rights or legitimate interests as demonstrated in paragraph 4(c) of the Policy in respect of the Disputed Domain Name. The Respondent did not allege nor provide evidence to establish that it is a legally authorized reseller of the Complainant. Even if the Respondent were to allege that it was a legitimate reseller of the Complainant’s products, the website to which the Disputed Domain Name resolves does not accurately and prominently disclose the Respondent’s relationship with the Complainant. Therefore, the Respondent cannot claim that this provides the Respondent with rights or legitimate interests in the Disputed Domain Name.

According to the record in the WhoIs database, there is no evidence showing that the Disputed Domain Name has any connection with the Respondent’s name or the Respondent is commonly known by the Disputed Domain Name. The Disputed Domain Name appears to be used to direct Internet users to a website for commercial gain, which is a commercial use.

Based on the above, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith”.

Paragraph 4(b) of the Policy explicitly states, in relevant part, that “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:

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”

The Complainant’s DECATHLON trademark has been registered in many countries in the world and the Respondent chose to use the DECATHLON trademark as the only distinctive part of the Disputed Domain Name. No allegation or evidence suggests that the Respondent selected the DECATHLON trademark as used in the Disputed Domain Name for any reason other than the reputation of the Complainant’s trademark. Furthermore, the screenshot of the website to which the Disputed Domain Name previously resolved shows that the Respondent was obviously aware of the Complainant’s trademark and such intentional registration shows the bad faith of the Respondent. Therefore, the Panel confirms that the Disputed Domain Name was registered in bad faith.

The Respondent used the DECATHLON trademarks on the website to which the Disputed Domain Name previously resolved. The screenshots of the website indicate that the website appeared to sell sportswear, sports equipment as well as sports gear, which are also sold on the Complainant’s website under the domain name <decathlon.es>. According to the evidence submitted by the Complainant, the website to which the Disputed Domain Name previously resolved is obviously a reproduction of the Complainant’s website under the domain name <decathlon.es>. On the top left-hand side of the home page of the website at the Disputed Domain Name, the Respondent used the Complainant’s DECATHLON trademark. At the very bottom of the website at the Disputed Domain Name, the Respondent used the Complainant’s DECATHLON trademark in the function column. These features make the website to which the Disputed Domain Name resolved appear to be an official website of the Complainant or one of the Complainant’s affiliates. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion. The Panel therefore concludes that the Disputed Domain Name was used in bad faith.

As the Disputed Domain Name has been registered and is being used in bad faith, the condition of paragraph 4(a)(iii) of the Policy has been fulfilled.

8. 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 <decathlones.com> be transferred to the Complainant.

Peter J. Dernbach
Sole Panelist
Date: December 29, 2014