Decathlon v Thomas Bouret, Francis DELANGUE, Nicolas Lefebre, Adam
WIPO Case No. D2025-0521
•24-04-2025
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Decathlon v. Thomas Bouret, Francis DELANGUE, Nicolas Lefebre, Adam
Porter
Case No. D2025-0521
1. The Parties
The Complainant is Decathlon, France, represented by AARPI Scan Avocats, France.
The Respondents are Thomas Bouret, France, Francis DELANGUE, France, Nicolas Lefebre, France, Adam
Porter, France.
2. The Domain Names and Registrars
The disputed domain names <decathlon-groups.com> and <decathlon-sav.com> are registered with Combell
NV.
The disputed domain name <decathlon-france.store> and <decathlon-sav.store> (the additional disputed domain name) are registered with Key-Systems GmbH, and (together the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2025. On February 10, 2025, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On February 13 and 18, 2025, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (REDACTED FOR PRIVACY) and contact information in the Complaint.
The Center sent an email communication to the Complainant on February 21, 2025, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the 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 and/or that all disputed domain names are under common control.
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The Complainant filed an amended Complaint on February 28, 2025, requesting to add the additional disputed domain name <decathlon-sav.store> to the proceedings. On March 3, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the additional disputed domain name. On March 4, 2025, the Registrars transmitted by email to the Center its verification response disclosing registrant and contact information for the additional disputed domain name which differed from the named Respondent (REDACTED FOR PRIVACY) and contact information in the Complaint.
The Center sent an email communication to the Complainant on March 4, 2025, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the 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 and/or that all disputed domain names are under common control. The Complainant filed a second amended Complaint on March 7, 2025.
The Center verified that the Complaint together with the amended Complaints 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 Respondents of the
Complaint, and the proceedings commenced on March 13, 2025. In accordance with the Rules, paragraph
5, the due date for Response was April 2, 2025. The Respondents did not submit any response.
Accordingly, the Center notified the Respondents’ default on April 3, 2025.
The Center appointed Vincent Denoyelle as the sole panelist in this matter on April 10, 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
The Complainant is a major international manufacturer and retailer of sports equipment, apparel and accessories with headquarters in France and operations in several countries.
The Complainant is the owner of several DECATHLON trade marks including the following:
| • | French Trade Mark DECATHLON registration No. 1366349, registered on January 16, 1987; and |
• European Union Trade Mark DECATHLON registration No. 000262931 registered on April 28, 2004. The DECATHLON trade mark of the Complainant was recognized as being well-known by previous panels under the Policy and by a French court decision from July 8, 2003.
The Complainant owns several domain names reflecting its DECATHLON trade mark including
<decathlon.fr> and <decathlon.com>.
| The disputed domain name <decathlon-france.store> was registered on December 19, 2024. | The disputed domain name <decathlon-groups.com> was registered on December 12, 2024. initial Complaint was filed). |
| Three of the disputed domain names (<decathlon-groups.com>, <decathlon-france.store>, and <decathlon-sav.com>) were used to create email addresses and facilitate fraudulent activities in the form of phishing emails impersonating the Complainant. |
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All disputed domain names currently point to the same registrar landing page.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.
Notably, the Complainant contends that the disputed domain names are confusingly similar to the Complainant’s DECATHLON trade mark as (i) the term “decathlon” is entirely reproduced in all disputed domain names, (ii) the mere addition of one of the following terms “france”, “sav”, or “groups” does not reduce confusing similarity and (iii) the generic Top Level Domains (“gTLDs”) “.com” and “.store” should be disregarded due to their purely technical function.
The Complainant asserts that it has never given any authorization or permission to the Respondents to register or to use its DECATHLON trade mark and that the Respondents are not in any way related to the Complainant’s business and does not carry out any activity for or has any business with the Complainant. The Complainant contends that the Respondents are not commonly known by any of the disputed domain names. Finally, the Complainant argues that the disputed domain names are not used in connection with a bona fide offering of goods or services, or to support a noncommercial legitimate use.
Turning to the issue of bad faith, the Complainant’s highlights the fact that the DECATHLON trade marks are well-known and were registered and used in France and abroad many years before the disputed domain names were registered. The Complainant also argues that the Respondents are passively holding the disputed domain names and has been using three of the disputed domain names for a fraudulent email scheme impersonating the Complainant and/or other members of its group of companies to fraudulently seek to collect personal data.
B. Respondents
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
Consolidation: Multiple Respondents
The second amended Complaint was filed in relation to nominally different disputed domain name registrants. The Complainant alleges that the disputed domain name registrants are the same entity or mere alter egos of each other, or under common control. The 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 the 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 the 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.
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As regards common control, the Panel notes that:
| • | The disputed domain names are structured in a similar fashion, with the exact DECATHLON trade |
mark reproduced at the start of the respective disputed domain names;
| • | The disputed domain names are hosted by the same hosting provider and use the same IP address; |
| • | Three of the disputed domain names were used to set up e-mail addresses used to send the same |
type of phishing e-mail; and
| • | All disputed domain names point to the same Registrar landing page. |
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 “the 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 trade mark and the disputed domain names. WIPO Overview 3.0, section 1.7.
The Complainant has shown rights in respect of a trade mark for the purposes of the Policy. WIPO Overview
3.0, section 1.2.1.
The Panel finds the DECATHLON trade mark is recognizable within the disputed domain names.
Accordingly, the disputed domain names are confusingly similar to the DECATHLON trade mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
Although the addition of other terms, here, “france” or “sav” or “groups”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the DECATHLON trade mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.
The Panel finds the first element of the Policy has been established.
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.
While 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 often impossible 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 disputed domain name. 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 record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence
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demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the
Policy or otherwise.
Here, the Complainant has stated that it has not licensed or otherwise authorized the Respondent to make any use of its trade mark DECATHLON. In addition, there is no indication that the Respondent is commonly known by any of the disputed domain names.
Further, the use of three of the disputed domain names to fraudulently impersonate the Complainant cannot qualify as either use of the disputed domain names (or demonstrable plans for such use) with a bona fide offering or a legitimate noncommercial fair use.
Panels have held that the use of a domain name for illegal activity, here phishing and impersonation, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.
Based on the available record, the Panel finds the second element of the Policy 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.
The disputed domain names reproduce the exact DECATHLON trade mark of the Complainant and this cannot be a coincidence given the overall circumstances of the present case including: (i) the renown of the Complainant’s DECATHLON trade mark as found in previous decisions under the Policy and by a French court decision, especially in France where the Respondent appears to be located, (ii) the fact that the disputed domain names were registered relatively recently and many years after the registration of the trade mark DECATHLON, and (iii) the choice of the terms added to the DECATHLON trade mark and the choice, for two of the disputed domain names, to register the DECATHLON trade mark under the “.store” gTLD which is highly relevant to the Complainant’s business.
As for use of the disputed domain names, the past use of three disputed domain names to send phishing emails impersonating the Complainant is very persuasive and clear evidence of the Respondent’s bad faith use of the disputed domain names (since they are under common control) and typically the type of use the Policy is designed to tackle.
Panels have held that the use of a domain name for illegal purposes, here phishing and impersonation, constitutes bad faith. WIPO Overview 3.0, section 3.4.
The disputed domain name <decathlon-sav.store> (which was registered after the filing of the Complaint) does not resolve to any active website and is being passively held. 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 reputation of the Complainant’s trade mark, the chosen gTLD, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.
Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain names constitutes bad faith under the Policy.
Based on the available record, the Panel finds the third element of the Policy has been established.
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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 <decathlon-france.store>, <decathlon-groups.com>,
<decathlon-sav.com>, and <decathlon-sav.store> be transferred to the Complainant.
/Vincent Denoyelle/
Vincent Denoyelle
Sole Panelist
Date: April 24, 2025
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