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

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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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The views expressed on this page by users and staff are their own, not those of NamePros.
Ask and you shall receive. Wow.
 
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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?
 
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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?
 
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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.

DomainCaseDateDecision
decathlons.orgWIPO D2023-09872023-05-12Transfer
decathlonmall.comWIPO D2022-47422023-01-26Transfer
suppordecathlon.comWIPO D2022-40852022-12-21Transfer
decathlon-au.topWIPO D2022-37742022-12-13Transfer
decathlon-fr.comWIPO D2022-20792022-07-27Transfer
e-dΓ©cathlon.comWIPO D2022-11942022-05-13Transfer
decathlonusa.careersWIPO D2021-43362022-03-21Transfer
decathlon-france.comWIPO D2022-02822022-03-16Transfer
decathlon-br.comWIPO D2021-43412022-03-15Transfer
decathloniran.comWIPO D2021-43532022-02-22Transfer
decathlon.workWIPO D2021-43692022-02-12Transfer
decathlon.oneWIPO D2021-31172021-11-11Transfer
decathlon-all-forsport.siteWIPO D2021-21652021-09-28Transfer
decathlonsport.comWIPO D2021-03912021-04-23Transfer
decathlon-es.clubWIPO D2020-33672021-03-02Transfer
decaloisir-dz.comWIPO D2019-04132019-04-17Transfer
decathlon-foot.netWIPO D2019-05032019-04-16Transfer
decathlon-china.comWIPO D2019-02342019-03-23Transfer
mydecathlon.clubWIPO D2018-21952018-12-13Transfer
decathlon-sa.comWIPO D2018-19122018-10-03Transfer
topdecathlon.comWIPO D2018-17192018-10-01Transfer
decathlon-italia.comWIPO D2018-16492018-09-24Transfer
decathlon1976.comWIPO D2018-05372018-05-15Transfer
decathlonc.comWIPO D2018-05912018-05-10Transfer
decathlonmall.netWIPO D2017-23122018-01-22Transfer
decathlon-foot.comWIPO D2017-14902017-10-02Transfer
decathlonn.comWIPO D2015-01982015-04-07Transfer
decathlon-nike.comWIPO D2014-19962015-01-27Transfer
decathlones.comWIPO D2014-19412014-12-29Transfer
decathlon-australia.comWIPO D2022-49671969-12-31Transfer
 
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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.
 
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