WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Decathlon v. Pavel Ostapenko

Case No. D2018-1991

1. The Parties

The Complainant is Decathlon of Villeneuve d’Ascq, France, represented by AARPI Scan Avocats, France.

The Respondent is Pavel Ostapenko of Vinnitsa, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <arpenaz-quechua.com> (the “Domain Name”) is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2018. On August 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 3, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint, and noting that the language of the Registration Agreement for the Domain Name was Russian. The Center sent email communications to the Complainant on September 4, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint, as well as in regard to the language of the proceedings. The Complainant filed an amended Complaint on September 5, 2018 and requested English to be the language of the proceedings. The Respondent did not comment on the language of the proceedings.

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 in English and Russian of the Complaint, and the proceedings commenced on September 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2018.

The Center appointed Olga Zalomiy as the sole panelist in this matter on October 16, 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

The Complainant in this administrative proceeding is a major French manufacturer specializing in the conception and retailing of sporting and leisure goods. The Complainant owns an International registration of the ARPENAZ trademark no. 800687, registered on February 28, 2003, covering goods in classes 18, 20, 22, 25 and 28, and a French registration of the ARPENAZ trademark no. 98744543 registered on August 3, 1998 in classes 18, 25, and 28. The Complainant also owns an International registration of the QUECHUA trademark no. 700271, registered on April 14, 1998 covering goods in classes 11, 16, 18, 20, 21, 22, 25, 28, 29, 32, 38, 39 and 41, and a French registration of the QUECHUA trademark no. 97702142 registered on October 30, 1997 in classes 9, 11, 18, 20, 21, 22, 24, 25 and 28.

The Respondent registered the Domain Name on November 15, 2017. The Domain Name used to resolve to a website offering for sale purported Quechua backpacks. Currently, the Domain Name resolves to a website featuring a message in Russian, which states that the website is blocked.

5. Parties’ Contentions

A. Complainant

The Complainant claims that it is a major French manufacturer specializing in the conception and retailing of sporting and leisure goods. The Complainant contends that the Domain Name is confusingly similar to its ARPENAZ and QUECHUA trademarks because it incorporates the ARPENAZ and QUECHUA trademarks in their entirety. The Complainant alleges that the generic Top-Level Domain (“gTLD”) “.com” has no distinguishing effect and must be removed from analysis.

The Complainant claims that the Respondent has not been commonly known under the Domain Name. The Complainant contends that the Respondent does not own any trademark rights in the ARPENAZ, QUECHUA or ARPENAZ QUECHUA marks. The Complainant asserts that the Respondent has no relation to the Complainant’s business and that the Complainant did not license or authorize the Respondent to use the Complainant’s trademarks or to register the Domain Name. The Complainant claims that the Respondent is using the Domain Name to direct to an online store that offers for sale Quechua and Apenaz backpacks to divert consumers from the Complainant’s website. The Complainant argues that the Respondent creates an impression of his website being related to or authorized by the Complainant and that the impression is reinforced by following wording: “TM ‘Quechua’ from Ukraine.” The Complainant contends that the Respondent’s website does not accurately disclose its relationship with the Complainant. The Complainant asserts that by registering the Domain Name, the Respondent deprived the Complainant of a strategic domain name.

The Complainant contends that the Respondent registered the Domain Name in bad faith. The Complainant claims that it is likely that the Respondent knew about the Complainant and its trademarks at the time of the Domain Name registration because of the following: (1) the ARPENAZ and QUECHUA trademarks and the Complainant’s corresponding domain names were registered long before the Domain Name; (2) the Domain Name is confusingly similar to the Complainant’s trademarks and domain names and the combination of both trademarks, which are used to sell backpacks cannot be coincidental; (3) any Google search for “arpenaz quechua” would first display links to the websites relating to the Complainant or its products; (4) the Respondent’s use of the Domain Name to resolve to an online shop purporting to sell Quechua and Arpenaz products shows that the Respondent is intentionally creating confusion to divert consumers from the Complainant’s websites for commercial gain without accurately disclosing its relationship with the Complainant.

The Complainant claims that the Respondent is using the Domain Name in bad faith because the Respondent is using the Domain Name to resolve to an online store selling backpacks under the names Quechua and Arpenaz that are copies of the Complainant’s backpacks, thus, intentionally creating confusion to divert consumers from the Complainant’s website.

B. Respondent

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

6. Substantive Issues

6.1. Language of the proceeding

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.”

Because the language of the Registration Agreement for the Domain Name is Russian, the default language of the administrative proceeding would be Russian. The Complainant requested that English be the language of the administrative proceeding because of the following: (1) the Domain Name is registered in Latin characters rather than Cyrillic script; (2) the words “arpenaz” and “quechua” refer directly to the Complainant’s trademarks; (3) the website “www.arpenaz-quechia.com” reproduces the Complainant’s trademarks ARPENAZ and QUECHUA, which are written in Latin characters, which is followed by a text in English: “TM ‘Quechua’ from Ukraine.” This indicates that the Respondent understands English; (4) use of Russian as the language of the proceedings would be unfair to the Complainant and will cause an unwarranted delay because it would force the Complainant to translate the documents into Russian.

Previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. “Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names. ”¹

Some of such scenarios are present in this case. First, the Respondent registered the Domain Name that incorporated the Complainant’s ARPENAZ and QUECHUA marks, which used to direct to a website in Russian displaying the following text in English: “TM “Quechua” from Ukraine”, offering for sale the Complainant’s backpacks. Therefore, the Panel finds that it is likely that the Respondent has some knowledge of English and would not be unfairly prejudiced by use of English as the language for this proceeding. Second, the Respondent did not object to the Complainant’s request for English to be the language of the proceeding and chose not to participate in the proceeding. Third, translation of the Complaint and supporting documents into Russian will impose undue financial burden on the Complainant and delay resolution of the dispute. Therefore, based on the circumstances of the case, the Panel grants the Complainant’s request that English be the language of this proceeding.

6.2. Discussion and Findings

Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:

(i) the 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 Domain Name; and

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

A. Identical or Confusingly Similar

Under the first UDRP element, the Complainant is required to prove that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

Pursuant to section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.” Here the Complainant owns trademark registrations for the QUECHUA and ARPENAZ trademarks.

“Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”² Here, the Domain Name incorporates the entirety of the Complainant’s QUECHUA and ARPENAZ trademarks. The addition of a hyphen does not diminish the confusing similarity. The addition of the gTLD “.com” is disregarded under the confusing similarity test.³ The Panel finds, therefore, that the Domain Name is confusingly similar to the Complainant’s QUECHUA and ARPENAZ trademarks.

Thus, the first element of the UDRP has been satisfied.

B. Rights or Legitimate Interests

Under the second UDRP element, a complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the respondent.⁴ Once the Complainant has made out the prima facie case, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name.⁵ Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.⁶

Pursuant to UDRP paragraph 4(c), the following may demonstrate rights or legitimate interests in a domain name:

(i) before any notice 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 noncommercial 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.

First, there is no evidence of the Respondent’s use of the Domain Name in connection with a bona fide offering of goods or services. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name because the Complainant has not authorized the Respondent to use the Complainant’s QUECHUA or ARPENAZ trademarks in any manner. Without a license or permission from the Complainant, the Respondent is, therefore, an unauthorized user of the mark, who used to use the Domain Name in connection with a website selling purported Quechua and Arpenaz backpacks.

Generally, unauthorized resellers might have legitimate interests in a domain name containing complainant’s trademark if their activities comply with the following cumulative requirements (the “Oki Data Test”):

“(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.”⁷

Although the evidence on file shows that the website connected to the Domain Name was used for sales of purported QUECHUA and ARPENAZ backpacks, they did not disclose the Respondent’s relationship with the Complainant. Instead, the website “www.arpenaz-quechua.com” displayed the following statement: “TM ‘Quechua’ from Ukraine”, which created a misleading impression of an affiliation between the Complainant and the Respondent. Because the Respondent’s use of the Domain Name did not comply with the requirements of the Oki Data Test, his use of the Domain Name did not create rights or legitimate interests in the Domain Name.

Second, the Respondent is not commonly known by the Domain Name. The Respondent’s name, “Pavel Ostapenko”, does not resemble the Domain Name in any manner.

Third, the Respondent’s actions do not comply with fair use requirement of the paragraph 4(c) of the UDRP. It is well-established that “respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner”.⁸ “UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation.”⁹ Here, the Domain Name is identical to the Complainant’s QUECHUA and ARPENAZ trademarks and, as such, creates an impression of affiliation with the Complainant.

The Panel therefore finds that the Complainant has made out a prima facie case in respect to the Respondent’s lack of rights or legitimate interests in the Domain Name. Since the Respondent failed to rebut the Complainant’s case, the Panel holds that the second element of the UDRP has been satisfied.

C. Registered and Used in Bad Faith

Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.

The Panel finds that the Respondent registered the Domain Name in bad faith because it is likely that he knew of the Complainant’s trademark at the time of the Domain Name registration. The Respondent used the Domain Name, which is confusingly similar to the Complainant’s QUECHUA and ARPENAZ trademarks, to direct to a website purportedly selling the Complainant’s backpacks. The Respondent’s website used to display the following text:

“Оригинальные рюкзаки
Quechua’ Arpenaz
Рюкзаки одного из лучших европейских брендов
Франция.”

This translates into English as follows: “Original backpacks ‘Quechua’ Arpenaz. Backpacks of one of the best European brands [from] France.” This shows that the Respondent knew about the Complainant and its products at the time of the Domain Name registration and registered the Domain Name without authorization with the intent to profit from the reputation of the Complainant’s mark.

The Panel also finds that the Respondent is using the Domain Name in bad faith. First, the Respondent tried to capitalize on the goodwill of the Complainant’s trademark by using the Domain Name to attract, for commercial gain, Internet users to the Respondent’s website by creating likelihood of confusion with the Complainant’s mark as to the affiliation or endorsement of either the Respondent or its website. The Respondent’s website, which displayed the following statements at the top of the page: “TM ‘Quechua’ from Ukraine”, offered for sale Quechua and Arpenaz backpacks in Ukraine. The website also displayed the text in Russian, which translates to English as: “[o]riginal backpacks ‘Quechua’ Arpenaz. Backpacks of one of the best European brands [from] France.” Second, although the Domain Name currently does not resolve to any active website, it is well-established that passive holding of a domain name does not prevent finding of bad faith use¹⁰ where “any good faith use to which the [D]omain [N]ame may be put”¹¹ is implausible. Taken the Respondent’s previous use of the Domain Name and the fact that the Domain Name is identical to the Complainant’s mark, the Panel finds implausible any good faith use of the Domain Name.

Evidence on file also shows that the Respondent provided false contact information for registration of the Domain Name, which is another indication of bad faith.¹²

Therefore, the Panel finds that the Domain Name was registered and is being used in bad faith. The third element of the UDRP has been satisfied.

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 Domain Name, <arpenaz-quechua.com> be transferred to the Complainant.

Olga Zalomiy
Sole Panelist
Date: October 19, 2018

¹ Section 4.5.1, Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

²Section 1.7, WIPO Overview 3.0.

³Section 1.11.1, WIPO Overview 3.0.

⁴Section 2.1, WIPO Overview 3.0.

⁵Id.

⁶Id.

⁷Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903

⁸ See, Section 2.5.1., WIPO Overview 3.0.

⁹ Id.

¹⁰ See, Section 3.3, WIPO Overview 3.0.

¹¹ Id.

¹² See, Section 3.6, WIPO Overview 3.0.