Decathlon v Name Redacted

WIPO Case No. D2025-0100

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Decathlon v. Name Redacted

Case No. D2025-0100

1. The Parties

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

Respondent is Name Redacted, Brazil1.

2. The Domain Names and Registrar

The disputed domain names <decathlonmagasinn.com>, <decathlon-officiel.com>, and

<france-decathlon.com> are registered with Hostinger Operations, UAB (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2025. On January 13, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 14, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (DOMAIN ADMIN, PRIVACY PROTECT, LLC) and contact information in the Complaint.

The Center sent an email communication to Complainant on January 15, 2025 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar, requesting Complainant to either file separate complaints for the disputed domain names associated with different underlying registrants or, alternatively, demonstrate that the underlying registrants are in fact the same entity

1 The Respondent appears to have used the names of famous Brazilian artists when registering the disputed domain names. In light of

the potential identity theft, the Panel has redacted the Respondent’s names from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain names, which includes the names of the supposed Respondents. The Panel has requested the Center to transmit Annex 1 to the Registrar as part of the Order in this

proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See
Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788

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and/or that all domain names are under common control. Complainant filed an amended Complaint on

January 17, 2025.

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 Respondents of the
Complaint, and the proceedings commenced on January 22, 2025. In accordance with the Rules, paragraph
5, the due date for Response was February 11, 2025. Respondents did not submit any response.
Accordingly, the Center notified Respondents’ default on February 17, 2025.

The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on February 19, 2025. 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

Complainant is a major international manufacturer and retailer of sports equipment, apparel and accessories
operating in dozens of countries. Complainant owns many registrations for its well-known DECATHLON
trademark, including for example French trademark registration No. 1366349, filed on April 22, 1986 in
classes 3, 4, 5, 8, 9, 12, 13, 14, 16, 18, 20, 21, 22, 24, 25, 28, 32, 33, 35, 37, 39, 40, 42, 43, 44, and 45;
European Union trademark registration No. 000262931 registered on April 28, 2004 in classes 1, 2, 3, 4, 5,
6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35,
36, 37, 38, 39, 40, 41, and 42; and International trademark registration No. 613216 registered on
December 20, 1993 in classes 1, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 16, 17, 18, 20, 21, 22, 23, 24, 25, 26,
27, 28, 29, 30, 31, 32, 35, 36, 37, 38, 39, and 42.

The disputed domain name <decathlonmagasinn.com> was registered to one of the Respondents on October 8, 2024, while the other Respondent registered the disputed domain names <decathlon-officiel.com> on September 26, 2024 and <france-decathlon.com> on October 16, 2024. The disputed domain names do not presently resolve to an active webpage, however exhibits submitted with the Complaint show that all three of the disputed domain names in September and October 2024 resolved to nearly identical webpages using the same photographs impersonating Complainant’s retail business by offering in the French language the same discount on sports equipment and apparel and prominently displaying Complainant’s DECATHLON trademarks.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

Complainant avers that in 2023, its company Decathlon employed 101,000 employees and, among other allegations, that Respondents have impersonated Complainant’s business and used Complainant’s trademarks without authorization. Complainant further notes that Respondents have seemingly used in their registrations with the Registrar the false names of famous Brazilian artists.

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B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Consolidation: Multiple Respondents

The amended Complaint was filed in relation to two nominally different domain name registrants. Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. Complainant requests the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules.

The disputed domain name registrants did not comment on Complainant’s request.

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.

In addressing Complainant’s request, the Panel will consider whether (i) the disputed domain names or
corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable
to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”), section 4.11.2.

With respect to common control, the Panel notes that the disputed domain names all use Complainant’s DECATHLON marks and were registered on almost the same dates. Other factors supporting the Panel’s conclusion that the disputed domain names are under common control include the unopposed evidence submitted by Complainant that all of the disputed domain names resolved in September and October 2024 to webpages that were nearly identical in style, appearance, language and text displayed, along with identical display of Complainant’s well-known DECATHLON marks. As highlighted by Complainant, the respective registrants also each identified themselves in their registrations with the same names as now-deceased Brazilian celebrities.

As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.

Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “Respondent”) in a single proceeding.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The Panel finds that the mark is recognizable within each of the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The Panel finds the first element of paragraph 4(a) of the Policy has been established.

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B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise.

Panels have held that the use of a domain name for illegitimate activity, here impersonation and passing off, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel finds that the second element of Policy paragraph 4(a) has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the evidence shows that Respondent in September and October 2024 intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark, which supports a finding of bad faith under Policy paragraph 4(b)(iv).

Panels have held that the use of a domain name for illegitimate activity such as impersonation or passing off
constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds that
Respondent’s registration and use of the disputed domain names constitutes bad faith under the Policy.

At the time the complaint was filed, all the disputed domain names were resolving to inactive pages. Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes

the distinctiveness and reputation of Complainant’s trademark and the composition of the disputed domain names, and finds that in the circumstances of this case the passive holding of the disputed domain names does not prevent a finding of bad faith under the Policy.

The Center’s written notice of these proceedings was not deliverable to the addresses listed by either registrant because of the inaccurate addresses. Respondent’s failure to maintain accurate contact details and use of potentially false registrant names are further evidence of bad faith.

The Panel finds that Complainant has established the third element of paragraph 4(a) of the Policy.

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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 names <decathlonmagasinn.com>, <decathlon-officiel.com>, and

<france-decathlon.com> be transferred to Complainant.

/Jeffrey D. Steinhardt/
Jeffrey D. Steinhardt
Sole Panelist
Date: February 26, 2025