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.