WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Decathlon v. Kayhan Art and Construction (هنر و سازه کیهان)

Case No. D2021-4295

1. The Parties

The Complainant is Decathlon, France, represented by AARPI Scan Avocats, France.

The Respondent is Kayhan Art and Construction (هنر و سازه کیهان<), United Arab Emirates.

2. The Domain Name and Registrar

The disputed domain name <quechuairan.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 December 20, 2021. On December 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 2021, 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 the Complainant on December 22, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 22, 2021.

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 of the Complaint, and the proceedings commenced on December 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 17, 2022.

The Center appointed Nayiri Boghossian as the sole panelist in this matter on January 26, 2022. 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 specialized in sporting and leisure goods and was established in 1980 in France. Over the years, it expanded its operations internationally. The trademark QUECHUA has been held by prior UDRP panels as being a well-known trademark.

The Complainant owns many trademark registrations for QUECHUA such as:

- French trademark registration No. 97702142, registered on October 30, 1997;
- International trademark registration No. 700271 registered on April 14, 1998;
- International trademark registration No. 917639, registered on September 14, 2006; and
- International trademark registration No. 1036641, registered on December 21, 2009.

The disputed domain name was registered on July 28, 2021. According to the Complainant, the disputed domain name redirected to <quechuairan.ir>, which resolves to a website offering products related to camping and hiking. These products may be genuine products of the Complainant, or counterfeits thereof. They may also be products of competitors.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is similar or identical to a trademark or service mark in which the Complainant has rights. The generic Top-Level-Domain (“gTLD”) “.com” is irrelevant in the determination of identical of confusing similarity. The disputed domain name incorporates the Complainant’s trademark in its entirety followed by the word “iran”, which gives the impression that the domain name directs to the Complainant’s official website for the country of Iran (Islamic Republic of). The addition of a geographical term is insufficient to prevent a finding of similarity.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name. The use of the disputed domain name cannot be considered a bona fide offering of goods or services. The Respondent is not authorized by the Complainant to use its trademark nor is it affiliated with the Complainant.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent knew of the Complainant’s trademark as it is well known. Attracting Internet users for commercial gain by creating a likelihood of confusion constitutes bad faith. The registration of the disputed domain name must have taken place with the Complainant’s trademark in mind. The domain name is being used in bad faith as it resolves to a website selling products under the brand QUECHUA, which are copies of Complainant’s products. The Respondent is using the disputed domain name in order to attract Internet users by creating confusion. Furthermore, an MX server has been activated in connection with the disputed domain name, which creates the risk of fraudulent use.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant owns trademark registrations for the trademark QUECHUA. The Panel is satisfied that the Complainant has established its ownership of the trademark QUECHUA. The disputed domain name incorporates the Complainant’s trademark QUECHUA in its entirety. It is established by prior UDRP panels that when a domain name incorporates a complainant’s registered trademark, such incorporation is sufficient to establish identity or confusing similarity for the purposes of the Policy even if other terms are added as part of the disputed domain name. E.g., Oki Data Americas, Inc v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”).

The addition of the term “iran” does not alter the fact that the disputed domain name is confusingly similar to the Complainant’s trademark. The gTLD “.com” should generally be ignored when assessing confusing similarity as established by prior UDRP decisions.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once such showing is made, the burden of production shifts to the respondent.

In the instant case, the Complainant asserts that the Respondent is not affiliated with nor authorized by the Complainant to use its trademark. The Complainant further asserts that the use of the disputed domain name cannot be considered a bona fide offering of goods or services. Therefore, the Complainant has established a prima facie case and the burden of production shifts to the Respondent to show that it has rights or legitimate interests. The Respondent has not provided any evidence to show that it has any rights or legitimate interests in the disputed domain name. However, according to the Policy, the use of the disputed domain name would be legitimate if it is used in connection with a bona fide offering of goods or services. The Panel notes that the disputed domain name redirects to a website at the domain name <quechuairan.ir>, which offers products related to camping and hiking. These products may be genuine products of the Complainant, or counterfeits or products of competitors.

If these products are genuine products of the Complainant, there may be an argument that the disputed domain name is being used (even if indirectly, through the redirection) in connection with a bona fide offering of products. In the circumstances of this case, the Panel will address the content of the final website and its products reached through the redirection of the disputed domain name (the Panel notes that it is more likely than not that the Respondent has control or is connected to the domain name <quechuairan.ir>).

In line with the Oki Data test, a number of requirements have to be met (see Oki Data,supra):

1. “Respondent must actually be offering the goods or services at issue”;
2. “Respondent must use the site to sell only the trademarked goods”;
3. “The site must accurately disclose the registrant’s relationship with the trademark owner”; and
4. “The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name”.

The Panel analyzes each of these requirements below:

a. Requirement no. 1: This requirement may have been met in the instant case as the disputed domain name resolves through the domain name <quechuairan.ir> to a website which may be offering the Complainant’s products. However, there is no way for the Panel to ascertain whether this is indeed the case.

b. Requirement no. 2: The Respondent may be offering the Complainant’s products but competing products may be offered as well. Here again, there is no way for the Panel to ascertain such fact. If competing products are also on offer, such use has been found by prior UDRP panels as not being bona fide (see Experian Information Solutions, Inc v. Credit Research, Inc., WIPO Case No. D2002-0095).

c. Requirement no. 3: This requirement is not met as the website does not include a statement demonstrating that it does not belong or is not affiliated with the Complainant.

d. Requirement no. 4: This requirement is not met as there are no numerous registrations by the Respondent of domain names containing the trademark of the Complainant.

There is doubt on whether requirements 1 and 2 are met. Even if they were, Requirement no. 3 has not been met. Therefore, it is the Panel’s view that the requirements of the Oki Data test have not been met.

Moreover, the Panel finds that the nature of the disputed domain name carries a risk of implied affiliation with the Complainant (especially noting the use of the redirection to resolve to a website offering products related to camping and hiking camping, which is one of the Complainant’s area of business). See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel finds that the use of a disputed domain name reproducing the Complainant’s trademark with the term “iran” to redirect to another domain name for commercial gain does not support a finding of rights or legitimate interests in the disputed domain name.

If the disputed domain name is offering competing products or counterfeit products, then this does not constitute a bona fide offering of goods or services.

Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered or Used in Bad Faith

The Respondent clearly knew of the Complainant’s business and trademark as the disputed domain name includes the Complainant’s trademark in its entirety, and redirects to a domain name resolving to a website offering products related to the field of the Complainant. The nature of the disputed domain name suggests affiliation with the Complainant as it incorporates the Complainant’s trademark in full. The use of the geographical term “iran” reinforces the impression that the disputed domain name is the Complainant’s website for the Iranian market.

The disputed domain name redirects to a domain name resolving to a website, which offers products related to camping and hiking. These products may be genuine products of the Complainant, or counterfeits or products of competitors. Offering competing products or counterfeit products is an indication of bad faith use. As such, the disputed domain name suggests affiliation with the Complainants in order to attract consumers and offer competing services. This is an act of bad faith (see Intex Recreation Corp. v. RBT, Inc., Ira Weinstein, WIPO Case No. D2010-0119; MasterCard International Incorporated v. Global Access, WIPO Case No. D2008-1940). If genuine products are being offered, the Complainant still wins its claim as the requirements of the Oki Data test have not been met, and the disputed domain name has been registered and used to take commercial advantage due to its similarity with the Complainant’s trademark.

Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) 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 <quechuairan.com> be transferred to the Complainant.

Nayiri Boghossian
Sole Panelist
Date: February 4, 2022