The Complainant is Decathlon of Villeneuve d’Ascq, France, represented by AARPI Scan Avocats, France.
The Respondent is Xuyue of Guangdong, China.
The disputed domain name <topdecathlon.com> is registered with Xiamen 35.Com Technology Co., Ltd. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 22, 2018, 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 August 22, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On August 23, 2018, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 19, 2018.
The Center appointed Matthew Kennedy as the sole panelist in this matter on September 26, 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.
The Complainant is a manufacturer and retailer of sporting and leisure goods. It operates stores in many countries, including China, where it opened its first store in 2003. The Complainant holds trademark registrations for DECATHLON in multiple jurisdictions including international trademark registration number 613216 registered on December 20, 1993, designating multiple jurisdictions, including China, and specifying goods in multiple classes, including sports shoes in class 25. That trademark registration remains current. The Complainant has also registered various domain names that it uses in connection with its official websites, including <decathlon.com.cn> that it registered on May 25, 1998.
The Respondent is an individual resident in Guangdong, China.
The disputed domain name was registered on May 14, 2018. It resolves to a website in Italian with some words in English, that offers for sale shoes, including sports shoes. Prices are quoted in euros.
The disputed domain name is confusingly similar to the Complainant’s DECATHLON trademark. The trademark is entirely reproduced in the disputed domain name and preceded by the generic term “top”.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not currently and has never been known under the name Decathlon. The Complainant does not know the Respondent and 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. The Complainant has never given any authorization or permission whatsoever to the Respondent to register or to use the disputed domain name.
The disputed domain name was registered and is being used in bad faith. The Complainant’s DECATHLON trademark has a strong reputation and leading position throughout the world in the field of sporting and leisure goods. The Respondent is using the disputed domain name to resolve to a website reproducing the Complainant’s well-known trademarks and selling sports shoes that are discounted, such products being also sold on the Complainant’s websites. Internet users are given the possibility to create an account on the said website.
The Respondent did not reply to the Complainant’s contentions.
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 Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain name is registered in Latin characters; that the DECATHLON trademark refers directly to the Complainant and its trademarks; and that the website to which the disputed domain name resolves is in English and Italian, indicating that the Respondent is able to understand English, while the Complainant does not understand Chinese, and that the time and costs involved in translating the Complaint would be unfair to the Complainant.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.
The Panel observes that in the present proceeding the Complaint was filed in English. Despite having received notice of the Complaint and commencement of the administrative proceeding in Chinese and English, the Respondent has not expressed any interest in responding to the Complaint or otherwise participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay, whereas selecting English as the language of the proceeding will not unfairly prejudice either Party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(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.
Based on the evidence submitted, the Panel finds that the Complainant has rights in the DECATHLON trademark.
The disputed domain name wholly incorporates the DECATHLON trademark. The disputed domain name also includes, as its initial element, the dictionary word “top”. However, the Panel does not consider that the addition of a mere dictionary word dispels confusing similarity to the DECATHLON trademark, as the trademark remains clearly recognizable within the disputed domain name. See, for example, Ecco Sko A/S v. PrivacyProtect.org / Li Jing, Wang Jianguo, and Yang Yan, WIPO Case No. D2013-0016, regarding <topeccoshoes.com> and Andrey Ternovskiy dba Chatroulette v. 1&1 Internet Limited, WIPO Case No. D2017-0266 regarding <topchatroulette.com>.
The disputed domain name also includes the generic Top-Level Domain (“TLD”) suffix “.com”. A TLD suffix is a technical requirement of registration and disregarded for the purposes of the comparison under this element of the Policy.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a 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.
As regards the first circumstance, the disputed domain name wholly incorporates the Complainant’s DECATHLON trademark. The Complainant states 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. Yet the disputed domain name resolves to a website that offers for sale shoes, including sports shoes of the same type as those sold by the Complainant. The Respondent’s website is not being used in connection with the dictionary meaning of “decathlon”. Accordingly, the Panel finds that this is not a use of the disputed domain name in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy.
As regards the second circumstance, the Respondent’s name is listed in the Registrar’s WhoIs database as “Xuyue”. There is no evidence that the Respondent has been commonly known by the disputed domain name.
As regards the third circumstance, the Respondent is using the disputed domain name in connection with a website that offers goods for sale. That is not a legitimate noncommercial or fair use.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that case because it did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
“(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] 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 [the Respondent’s] website or location.”
The Respondent registered the disputed domain name in May 2018, many years after the Complainant obtained its earliest trademark registration, including in China. The disputed domain name wholly incorporates the Complainant’s DECATHLON trademark. The website to which the disputed domain name resolves offers for sale sport shoes of the same type as sold by the Complainant. The Respondent’s website is not being used in connection with the dictionary meaning of “decathlon”. This all gives the Panel reason to find that the Respondent was aware of the Complainant and its trademark at the time that it registered the disputed domain name and that it deliberately registered the disputed domain name in bad faith.
The Respondent uses the disputed domain name, which wholly incorporates the Complainant’s DECATHLON trademark, with a website that offers for sale sport shoes of the same type as those sold by the Complainant. Given these findings and those at section 6.2B, the Panel considers that the Respondent’s use of the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products on that website.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
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 <topdecathlon.com> be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: October 1, 2018
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