Decision for dispute CAC-UDRP-105783

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant has evidenced to be the owner of the following trademark registrations:

• Trademark LEROY MERLIN, International registration n° 591251, registered since July 15, 1992 and duly renewed since;

• Trademark LEROY MERLIN (figurative) International Registration n° 701781 registered since August 14, 1998 and duly renewed since;

• Trademark LEROY MERLIN European registration n° 10843597 registered since April 27, 2012 and duly renewed since;

• Trademark LEROY MERLIN (figurative) European registration n°11008281 registered since July 2, 2012 duly renewed since.

Also, the Complainant has substantiated to own e.g. since 2003 the domain name <leroymerlin.ru> which resolves to the Complainant’s main website for the territory of Russia at “www.leroymerlin.ru”, intended to promote the Complainant’s home living products and related services in that area and the domain name <leroymerlin.fr> registered since 1996 and uses it for the official website of its subsidiary LEROY MERLIN FRANCE amongst numerous domain names comprising the trademark LEROY MERLIN.

Complainant:

The Complainant contends that the requirements of the Policy have been met (see factual backgrounds) and that the disputed domain name should be transferred to it.

Respondent:

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

First, the Panel finds that the disputed domain name <leroymerlin-russia.com> is confusingly similar to the Complainant’s LEROY MERLIN trademark, as it incorporates the latter entirely, simply added by the geogrraphical term “russia”. Numerous UDRP panels have recognized that where a domain name incorporates a trademark in its entirety, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that trademark. Also, it has been held in many UDRP decisions and has meanwhile become a consensus view among UDRP panels that the mere addition of descriptive, or geographical or other terms, such as e.g. the term “russia”, is not capable to dispel the confusing similarity arising from such (almost) entire incorporation of the Complainant’s LEROY MERLIN trademark in the disputed domain name.

Therefore, the Complainant has established the first element under the Policy as set forth by paragraph 4(a)(i).

Second, the Complainant contends, and the Respondent has not objected to these contentions, that the Respondent has neither made use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, nor is the Respondent commonly known under the disputed domain name, nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. The Respondent has not been licensed or otherwise authorized to use the Complainant’s LEROY MERLIN trademark, either as a domain name or in any other way. Also, there is no reason to believe that the Respondent’s name somehow corresponds with the disputed domain name and the Respondent does not appear to have any trademark rights associated with the terms “leroy” and/or “merlin” on its own. Finally, the Complainant has demonstrated that the disputed domain name did not resolve to a website but that MX servers have been activated under the disputed domain name, possibly intending to send unauthorized/illegal e-mails thereunder. Such making use of the disputed domain name, obviously in a fraudulent manner, neither qualifies as a bona fide nor as a legitimate noncommercial or fair use under the UDRP and may not of itself confer rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that, therefore, the Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.

Third, the Panel holds that the disputed domain name was registered and is being used by the Respondent in bad faith. It is obvious from the circumstances to this case that the Respondent was well aware of the Complainant’s rights in the LEROY MERLIN trademark when registering the disputed domain name, and that the latter is directly targeting such trademark. Indeed, it leaves no doubts that the Respondent, by registering and making use of the disputed domain name, had the intention to somehow unjustifiably profit from the undisputed reputation attached to the Complainant’s LEROY MERLIN trademark and related website(s). Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the larger meaning of paragraph 4(b)(iv) of the Policy.

This finding also takes into consideration that MX servers have been activated under the disputed domain name to attempt impersonation and phishing.  Indeed, the Respondent attempted to pass of as one of the LEROY MERLIN employees.

Therefore, the Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).