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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Decathlon v. Christopher Kyengo

Case No. D2005-0825

1. The Parties

Complainant is Decathlon, Villeneuve D’Asq Cedex, France, represented by Bird & Bird, France.

Respondent is Christopher Kyengo, Nairobi, Kenya.

2. The Domain Names and Registrar

The disputed Domain Name is <kalenji.com> (Domain Name) registered with Go.Daddy.com, Scottsdale, United States of America (Registrar).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2005. On August 3, 2005, the Center transmitted to Registrar a request for registrar verification in connection with the Domain Name. On the same day Registrar transmitted to the Center its verification response confirming that Respondent is listed as the registrant of the Domain Name and providing the contact details for the administrative, billing, and technical contact.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 24, 2005. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 25, 2005.

On September 7, 2005, the Center appointed Anna Carabelli as the Sole Panelist in this matter, indicating that, absent exceptional circumstances, the decision would be due by September 21, 2005. 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 well known and reputable global sports manufacturer and retailer. Through a number of subsidiaries and stores, Complainant is present in more than 22 countries throughout the world (see Annex 3 - printout of some pages from Complainant’s website) and in 2004 reached a turnover of 3,431 billion euros.

Complainant offers a large variety of sports apparel and equipment; in addition to third parties’ products, Complainant designs and manufactures several lines of its own which are marketed under different trademarks (such as Quechua, Tribord, etc. - see Annex 4), amongst which is a line of sporting equipment for runners under the trademark KALENJI (see Annex 6).

Complainant has provided evidence of the following applications for the registration of the trademark KALENJI (Annex 8):

- French Reg. No. 04/3.284.911 filed on April 8, 2004, in connection with international classes of goods and services 9, 14, 18, 21, 25;

- International Reg. No. 00680034 filed on October 22, 2004, in connection with international classes of goods and services 9, 14, 16, 18, 21, 25 for a number of countries including Kenya, with priority date April 8, 2004;

Complainant has further provided evidence (Annex 9) of registration of the following Domain Names: <kalenji.it> on April 6, 2004, <kalenji.us> on June 1, 2004, and <kalenji.co.uk> on June 11, 2004.

Respondent registered the Domain Name on June 21, 2004, (Annex 1). The Domain Name resolves to a website which says “welcome to this person’s new website. Powered by: Host Department web hosting” (Annex 10).

Complainant has also provided copies of the correspondence sent by its counsel to Respondent regarding the sale of the Domain Name (solicited by Complainant). Apparently, an oral agreement was then reached and on May 12, 2005, Complainant’s counsel sent a letter confirming the price offered (3,000 United States dollars) and requesting the transfer to take place before May 25, 2005, (Annex 11).

5. Parties’ Contentions

A. Complainant

Complainant contends that:

- in the first quarter of 2004, Complainant decided to launch a new line of sports equipment for runners under the name KALENJI;

- in order to find inspiration for the design and identity of the KALENJI trademark, in April 2004 the advertising agency Avomark went to Kenya where Respondent is located, to gather knowledge of the running environment and discussed with many runners (Annex 5);

- the Domain Name is identical to Complainant’s trademarks KALENJI;

- Respondent has no right or legitimate interest in the Domain Name since: (i) Complainant has prior rights in the trademark KALENJI and is known throughout the world; (ii) Respondent is not authorized to use Complainant’s trademark KALENJI; (iii) Respondent has never used the Domain Name to promote any KALENJI products or services and has failed to demonstrate use of, or demonstrable preparation to use, the Domain Name; and (iv) the Domain Name resolves to an inactive website;

- the Domain Name has been registered in bad faith since when registering it, Respondent had knowledge of Complainant’s trademark KALENJI; registration of the Domain Name cannot be fortuitous since it was made just after Complainant initiated its marketing plans for the launch of its new running line kalenji and started to register its kalenji Domain Names;

- the Domain Name is being used in bath faith for the purpose of selling it to Complainant for valuable consideration in excess of Respondent’s document out-of-pocket costs directly related to the Domain Name; Respondent prevents Complainant from reflecting its trademark in the Domain Name since there has been no active use of the Domain Name in the more than one year since the registration occurred; moreover, the lack of any operational site constitutes passive holding which has been regarded by many panelists as bad faith use under appropriate circumstances;

- Respondent’s bad faith is evidenced also by the fact that Respondent provided a false address to the Registrar, consisting only of his name (Christopher Kyengo) and the name of the town repeated three times (Nairobi Nairobi, Nairobi NA).

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under paragraph 4(a) of the policy, the Complaint must prove each of the following:

(i) the Domain Name in issue is identical or confusingly similar to Complainant’s trademark or service mark; and

(ii) 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.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purposes of paragraph 4(a)(iii), shall be evidence of the registration and use of a Domain Name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by Respondent, shall be evidence of Respondent’s right to or legitimate interests in the Domain Name for the purpose of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

Complainant has proven that it has acquired trademark rights in the name kalenji by virtue of the national and international registrations indicated under section 4, above. Although in the Panel’s view timing of registration is not relevant under paragraph 4(a)(i) of the Policy (see Digital Vision, Ltd. v. Advanced Chemil Systems, WIPO Case No. D2001-0821; AB Svenska Spel v. Anderj Zackarov,WIPO Case No. D2003-0527), the Panel notes that while the application for the French registration was filed in April 2004, the application for international registration was filed in October 2004 only, with a priority date of April 8, 2004. No evidence of other registrations for the trademark KALENJI has been provided by Complainant.

The Domain Name entirely incorporates Complainant’s trademark KALENJI, with the addition of the TLD “.com”.

In the light of the above and of the fact that the addition of the suffix “com” has no legal significance when comparing the Domain Name and Complainant’s trademark (The Vanguard Group Inc. v. Lorna Kang, WIPO Case No. D2002-1064; Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859), the Panel finds that this element has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out in particular but without limitation three circumstances which, if proved by Respondent, shall be evidence of Respondent’s rights to or legitimate interests in the Domain Name for the purpose of paragraph 4(a)(ii), namely:

(i) before any notice of the dispute to Respondent, Respondent’s use of, or demonstrable preparation to use, the Domain Name in issue or a name corresponding to the Domain Name in connection with a bona fide offering of goods and services; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if Respondent has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate non-commercial 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.

Complainant contends that Respondent has no rights or legitimate interests in the Domain Name. Once, as the Panel deems is the case here, the Complainant has put forward prima facie evidence that none of the above three circumstances establishing legitimate interests or rights applies, the burden of proof shifts to Respondent to rebut the evidence (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).

Respondent has not filed any submission or evidence whatsoever in order to rebut Complainant’s prima facie evidence.

There is no evidence before the Panel that Respondent has any rights or legitimate interests in the Domain Name for the purpose of paragraph 4(a)(ii) of the Policy under the above criteria or otherwise.

The Panel therefore finds that Respondent has no rights and/or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, Complainant is also required to prove that the Domain Name has been registered and is being used in bad faith.

The statements and documents submitted by Complainant do not convince the Panel that the Domain Name was registered in bad faith, for the following reasons:

- the trademark KALENJI was first filed by Complainant in France on April 8, 2004, and subsequently with WIPO on October 22, 2004, (with priority date of April 8, 2004) for a number of countries including Kenya (Annex 8);

- the Domain Name was registered on June 21, 2004 (Annex 1);

- based on the Complaint and attached documents, the Panel infers that the commercial use of the trademark KALENJI by Complainant may be traced back to the second half of 2004;

- the Panel visited Complainant’s website “www.decathlon.com” (of which Complainant produced several printouts as Annexes 3 and 4) and noticed that, in presenting the kalenji line, Complainant explains that the name kalenji comes from the name of a tribe (the kalenjins) living in Kenya (in the Eldoret region), members of which are accustomed to running from early childhood. In particular, running plays a fundamental role in the culture of this people. The Panel felt it necessary to have greater light on this point and made a quick search on the Internet, from which it appears that the name KALENJI is used in the English language to indicate the tribe (“http://zoltantakacs.com/zt/pwna/album.php?idx=16”) or ethnic group amounting to no less than 12% of the Kenyan population (“http://www.mtholyoke.edu/~crjohnsio/”) as well as the language spoken by that ethnic group, a language in which the Kenya Broadcasting Corporation transmits (“http://www.kbc.co.ke/about.asp”);

- the letter by Mr. Pierre Vanier of Avomark dated July 28, 2005, (Annex 5), stating that he had visited the region of Eldoret and talked to various runners about their approach to running, is not in the Panel’s view sufficient to give rise to the likelihood that Respondent could have learnt of Complainant’s trademark or of Complainant’s intention to register KALENJI as a trademark on that occasion or as a consequence of Mr. Vanier’s trip to Kenya, also considering that: (i) Mr. Vanier does not state in his letter to have mentioned the kalenji project to anyone in Kenya nor does he mention that he met Respondent; and (ii) there is no evidence that Respondent was in the same region at the same time.

In light of the above, there is no evidence that Respondent knew or should have known of Complainant’s trademark when he registered the Domain Name. The Panel finds therefore that the Domain Name was not registered in bad faith. According to previous Panel decisions, if Respondent lacked bad faith at the time of registration the Panel must rule for Respondent even if Respondent has subsequently used the Domain Name in bad faith (e-Duction, Inc. v. John Zuccarini, d/b/a The Cupcake Party & Cupcake Movies,WIPO Case No. D2000-1369; Telaxis Communications Corp. v. William E. Minkle, WIPO Case No. D2000-0005). In any case, the Panel deems here that the evidence submitted by Complainant to claim bad faith use of the Domain Name is not conclusive with regard to Respondent’s alleged intention to resell the Domain Name for valuable consideration in excess of documented out-of-pocket costs as there is no evidence that Respondent, after being solicited by Complainant itself, has ever agreed to sell the Domain Name but rather, in his e-mail of February 2, 2005, (Annex 11), he appears to have plans to use it for his own business and to need time to consider Complainant’s offer. Similarly, the evidence submitted by Complainant is not conclusive with regard to Respondent’s alleged intention to prevent Complainant from reflecting its trademark in a Domain Name. In addition, in the Panel’s view, the circumstances of the present case do not support a finding in favor of Complainant based on the fact that the Domain Name is not being actively used (passive holding).

Based on the above, the Panel finds that Complainant failed to establish bad faith registration and use of the Domain Name.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Anna Carabelli
Sole Panelist

Dated: September 21, 2005