Decision for dispute CAC-UDRP-107290

The Panel is unaware of any other pending or concluded legal proceedings concerning the domain name <extleroymerlin.com> ('the disputed domain name').

The Complainant, Groupe Adeo, asserts rights to the following registered trade marks, among others:

•  International trade mark registration no. 591251, filed on 15 July 1992, for the figurative mark LEROY-MERLIN, in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 11, 16, 17, 19, 20, 21, 22, 25, 27, 28, 31 and 37 of the Nice Classification; and

•  EU trade mark registration no. 010843597, filed on 27 April 2012, for the word mark LEROY MERLIN, in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 11, 12, 14, 16, 17, 18, 19, 20, 21, 22, 24, 25, 26, 27, 28, 31, 35, 36, 37, 40, 41, 42 and 44 of the Nice Classification.

The aforementioned trade marks shall be referred to as 'the Complainant's trade mark' or 'the trade mark LEROY MERLIN'. Furthermore, the Complainant owns several domain names incorporating the name 'Leroy Merlin', notably <leroymerlin.com> and <leroymerlin.fr>, both registered in 1996.

The disputed domain name was registered on 30 January 2025 and does not currently resolve to an active website (for present purposes, 'the Respondent's website').

A. Complainant's Factual Allegations

The Complainant is a French enterprise specialising in the sale of home improvement products and services, with its flagship entity being Leroy Merlin, established in 1923.  

Leroy Merlin is recognised as a leading retailer in the DYI sector, employing approximately 28,000 individuals in France.

B. Respondent's Factual Allegations

The Respondent has failed to submit a Response in this UDRP administrative proceeding, resulting in the Complainant's allegations remaining unchallenged.

A. Complainant's Submissions

The Complainant’s contentions can be summarised as follows.

A.1 The disputed domain name is confusingly similar to a trade mark in which the Complainant has rights

The Complainant asserts that the disputed domain name <extleroymerlin.com> is confusingly similar to the trade mark LEROY MERLIN as it is wholly incorporated. The addition of the term 'ext', purportedly denoting the words 'extérieur' (in French) or 'exterior' (in English), does not sufficiently differentiate the disputed domain name from the Complainant's trade mark.  Nor does the inclusion of the generic Top-Level Domain (the 'TLD') <.com> mitigate the likelihood of confusion.

A.2 The Respondent has no rights or legitimate interests in respect of the disputed domain name

The Complainant contends that the Respondent, identified in the Whois database as 'hiney limited', lacks rights or legitimate interests regarding the disputed domain name. The Respondent is not commonly known by the disputed domain name, and there exists no affiliation, licence, or authorisation from the Complainant allowing such use. The current inactive status of the disputed domain name further underscores the absence of any legitimate interest.

A.3 The Respondent registered and is using the disputed domain name in bad faith

The Complainant maintains that the Respondent registered the disputed domain name in bad faith, possessing knowledge of the Complainant's prior trade mark rights, particularly given the trade mark's well-established reputation in France, where the Respondent appears to reside. The lack of active use – coupled with the incorporation of a renowned trade mark, false Whois information and the activation of MX records – strongly support the assertion of bad faith registration and use.

A.4 Relief sought

The Complainant requests the transfer of the disputed domain name to itself.

B. Respondent's Submissions

The Respondent has defaulted in this UDRP administrative proceeding, failing to provide any substantive defence.

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

The Panel is satisfied that all procedural requirements under the UDRP have been duly met, with no grounds preventing a decision from being issued. 

A. Applicable Legal Framework and Burden of Proof

Pursuant to Rule 15 of the UDRP Rules, the Panel will determine the case based on the statements and documents submitted, alongside the UDRP Policy, UDRP Rules, and any pertinent rules and principles of law.

Under paragraph 4(a) of the UDRP Policy, the onus is on the Complainant to establish three essential elements for a successful claim:

i. The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

ii. The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

iii. The disputed domain name has been registered and is being used in bad faith.

These three elements will be collectively referred to as 'the requirements of the UDRP Policy'. The standard of evidence in UDRP administrative proceedings is the balance of probabilities. The Panel will assess each requirement in turn.

B. Identical or Confusingly Similar

The Panel finds that the Complainant possesses UDRP-relevant rights in the registered trade mark LEROY MERLIN as of 1992.

The disputed domain name <extleroymerlin.com> wholly incorporates the Complainant’s trade mark, along with the letters 'ext'. This combination does not materially affect the recognisability of the Complainant's trade mark. The TLD (in this case <.com>), albeit not usually considered in the test for identity or confusion, is likewise insufficient to differentiate the disputed domain name and does not diminish the established association with the Complainant's trade mark. The Complainant has therefore satisfied the first requirement of the UDRP Policy.

C. Rights or Legitimate Interests

The evidence indicates that the Respondent is not commonly known by the disputed domain name and has not obtained the necessary authorisation from the Complainant for its registration or use. Furthermore, it appears that the Respondent has made any legitimate use of the disputed domain name for a bona fide offering of goods or services, nor has any legitimate non-commercial or fair use been demonstrated.

The Panel finds that the Complainant has met the second requirement of the UDRP Policy.

D. Registered and Used in Bad Faith

The circumstances surrounding the registration and use of the disputed domain name indicate bad faith on the part of the Respondent. The timing of the registration vis-à-vis the Complainant’s established trade mark rights, combined with the inactive status of the website associate with the disputed domain name and the dubious Whois information, strongly imply an intent to unlawfully leverage the Complainant's goodwill. The Respondent's conduct falls within the remit of paragraph 4(b)(iv) of the UDRP Policy.

The Panel thus concludes that the Complainant has satisfied the third and final UDRP Policy requirement.

E. Decision

For the foregoing reasons, in accordance with paragraph 4(a) of the UDRP Policy and Rule 15 of the UDRP Rules, the Panel orders that the disputed domain name <extleroymerlin.com> be transferred to the Complainant.