UDRP Decathlons.org: UDRP appears to ignore generic use of the term

[News]

Since 2014, Decathlon has filed 42 UDRP cases with dozens of domain names involved. It is safe to assume that they are seeking the protection of their brand quite aggressively.

The UDRP filed against the domain Decathlons.org did not receive a response from the registrant. Registered in 2021, the domain Decathlons.org was parked with PPC ads related to sports items...

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[cooljub]

Ask and you shall receive. Wow.

 

[D Haynes]

So if the domain hadn't been parked with infringing ads (maybe just a contact landers or for sale page) would it have been a different outcome?

 

[draco]

I've actually never heard of the company. Though if you type decathlon into Google, I get sponsored results by them, their store locations in Paris (I'm in the USA..so wow), and references to them in the actual search results.

What bothers me about the decision is it seems natural to sell sports equipment on a decathlon website. The decathlon is a sport. Decathlons is the plural of decathlon. It's hardly typo squatting.

Decathlons . com is registered with just a 'registered' page. No ads, no for sale. Anyone know if they tried to get it?

 

[jberryhill]

Decathlons . com is registered with just a 'registered' page. No ads, no for sale. Anyone know if they tried to get it?

I guess you didn’t look at the Whois. They are the registrant of that one.

Domain	Case	Date	Decision
decathlons.org	WIPO D2023-0987	2023-05-12	Transfer
decathlonmall.com	WIPO D2022-4742	2023-01-26	Transfer
suppordecathlon.com	WIPO D2022-4085	2022-12-21	Transfer
decathlon-au.top	WIPO D2022-3774	2022-12-13	Transfer
decathlon-fr.com	WIPO D2022-2079	2022-07-27	Transfer
e-décathlon.com	WIPO D2022-1194	2022-05-13	Transfer
decathlonusa.careers	WIPO D2021-4336	2022-03-21	Transfer
decathlon-france.com	WIPO D2022-0282	2022-03-16	Transfer
decathlon-br.com	WIPO D2021-4341	2022-03-15	Transfer
decathloniran.com	WIPO D2021-4353	2022-02-22	Transfer
decathlon.work	WIPO D2021-4369	2022-02-12	Transfer
decathlon.one	WIPO D2021-3117	2021-11-11	Transfer
decathlon-all-forsport.site	WIPO D2021-2165	2021-09-28	Transfer
decathlonsport.com	WIPO D2021-0391	2021-04-23	Transfer
decathlon-es.club	WIPO D2020-3367	2021-03-02	Transfer
decaloisir-dz.com	WIPO D2019-0413	2019-04-17	Transfer
decathlon-foot.net	WIPO D2019-0503	2019-04-16	Transfer
decathlon-china.com	WIPO D2019-0234	2019-03-23	Transfer
mydecathlon.club	WIPO D2018-2195	2018-12-13	Transfer
decathlon-sa.com	WIPO D2018-1912	2018-10-03	Transfer
topdecathlon.com	WIPO D2018-1719	2018-10-01	Transfer
decathlon-italia.com	WIPO D2018-1649	2018-09-24	Transfer
decathlon1976.com	WIPO D2018-0537	2018-05-15	Transfer
decathlonc.com	WIPO D2018-0591	2018-05-10	Transfer
decathlonmall.net	WIPO D2017-2312	2018-01-22	Transfer
decathlon-foot.com	WIPO D2017-1490	2017-10-02	Transfer
decathlonn.com	WIPO D2015-0198	2015-04-07	Transfer
decathlon-nike.com	WIPO D2014-1996	2015-01-27	Transfer
decathlones.com	WIPO D2014-1941	2014-12-29	Transfer
decathlon-australia.com	WIPO D2022-4967	1969-12-31	Transfer

 

[jberryhill]

What bothers me about the decision is it seems natural to sell sports equipment on a decathlon website. The decathlon is a sport.

I've been to a decathlon. I don't remember anyone selling sporting goods there.

It's also "natural" to call a drink featuring extracts of coca and cola "Coca-Cola".

Or to call an American airline or bank "American Airlines" or "Bank of America".

Or to call an affordable car for ordinary people a "Volkswagen".

Or to call an exercise bike with networking features for group exercise a "Peloton".

Or to call a company that sells things at low cost "Costco".

Going to Patagonia? You might want to buy some outdoor clothing.

Want to listen to some beats? You might want some headphones or earbuds.

Going on a trek? How about using a bicycle for that?

Those last three - Patagonia, Beats, and Trek - are leading brands in their respective categories.

On the scale of trademark distinctiveness, there are marks which:

1. Are descriptive, but have acquired distinctiveness through consumer recognition (e.g. American Airlines).

2. Are "suggestive" in that the words are related to the use or properties of the product, but a mental step is required to make that connection (e.g. Coppertone tanning lotion, Band-Aid bandages).

3. Are "arbitrary" in that an otherwise generic word is applied to a service or product unrelated to the meaning of that word (e.g. Apple computers).

4. Are "fanciful" in that the mark is a made-up word with no other meaning. (e.g. Xerox)

A lot of marks ride the line between descriptive and suggestive. You might store your clothes and running gear in a foot locker, but you can also go buy them at a "Foot Locker".

A decathlon is an athletic event where the athletes do ten things. Not one of those ten things involves selling sporting goods. You do not go to a decathlon to buy sporting goods.

Marks of this type make for difficult domain disputes. A lot of it is going to turn on how well known the mark is. Now, sure, unless you spend time in France, you might not know that there is one of these stores in pretty much every town. But they have moved into the US market with a handful of physical stores and an online presence.

So if the domain hadn't been parked with infringing ads (maybe just a contact landers or for sale page) would it have been a different outcome?

If the name was being used for something more directly related to the sporting event of that kind, certainly.

The registrant's intent is determined by what can be objectively shown or inferred from objective facts. Decathlon is a sporting event. It is also a relatively well known brand of retail sporting goods sales. The domain was being used to advertise the sale of sporting goods and didn't have any content directly relating the to the dictionary meaning of the word.

But it is this category of mark and this type of domain name, which make the "interesting" cases.