Decision for dispute CAC-UDRP-107604

1. The disputed domain name is confusingly similar to Complainant's Trademarks because it wholly incorporates the "LEROY MERLIN" word element of such trademarks. The addition of the term "DEXTER" does not eliminate confusion but actually reinforces it, since DEXTER refers to a product range developed and sold by the Complainant in LEROY MERLIN stores. The .com suffix is disregarded under UDRP analysis as a standard registration requirement, and previous UDRP panels have consistently recognized the Complainant's rights in the Complainant's Trademarks;
2. The Respondent lacks rights or legitimate interests in the domain name. The Respondent is not identified by the disputed domain name, has no relationship with the Complainant, and was never authorized to use the Complainant's Trademarks. Most significantly, the domain resolves to a blank page, demonstrating no bona fide offering of goods or services or legitimate noncommercial use; and
3. The disputed domain name was registered years after the Complainant's Trademark registration, and given their established reputation and distinctiveness, it is reasonable to infer the Respondent domiciled in France had full knowledge of the Complainant's rights. The inclusion of "DEXTER" cannot be coincidental since it specifically references the Complainant's product line. The passive holding of the domain with no demonstrable legitimate use, combined with the incorporation of a famous mark, constitutes bad faith registration and use under established UDRP case law.

For these reasons the Complainant believes that it satisfies all requirements under the Uniform Domain Name Dispute Resolution Policy ("UDRP" or "Policy") for transfer of the disputed domain name to the Complainant.

THE RESPONDENT:

The Respondent did not provide any response to the complaint.

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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.

The Panel will now analyse whether the three elements of paragraph 4(a) of the Policy are satisfied in these proceedings.

IDENTITY / CONFUSING SIMILARITY

The disputed domain name is confusingly similar to Complainant’s Trademarks as it contains the word element “LEROY MERLIN” which is identical to Complainant’s Trademarks and the addition of the element "DEXTER” is not sufficient to distinguish the disputed domain name from Complainant’s Trademarks. 

In line with the long-established UDRP practice the Panel also concludes that the top-level suffix in the domain name (i.e. the ".com") must be disregarded under the identity / confusing similarity test as it is a necessary technical requirement of registration.

Therefore, the Panel concludes that the Complainant satisfied the requirement under paragraph 4(a)(i) of the Policy.

NO RIGHTS OR LEGITIMATE INTERESTS

The Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (please see, for example, WIPO case No. D2003-0455, Croatia Airlines d.d. v. Modern Empire Internet Ltd. <croatiaairlines.com>).

As asserted by the Complainant (and unchallenged by the Respondent), the Respondent is not commonly known by the disputed domain name. Neither is the Respondent in any way related to the Complainant. No website is operated under the disputed domain name. The Respondent failed to provide any information and evidence that it has relevant rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a) (ii) of the Policy). 

Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

BAD FAITH

The Panel noted that the Complainant is a well-known company in several countries and particularly in France where the Respondent allegedly resides. Thus, given the distinctiveness of the Complainant's Trademarks and their reputation, the Panel agrees with the Complainant that the Respondent has registered the disputed domain name with full knowledge of the Complainant's Trademarks, and therefore must have acted deliberately. In this respect, the Panel also deems appropriate to refer to paragraph 2 of the Policy under which it is the responsibility of the Respondent as the registrant of disputed domain name to determine whether its registration infringes or violates someone else's rights. Also, the Respondent added a term "DEXTER" to the disputed domain name referring to the brand of products sold in LEROY MERLIN stores. By doing so the Respondent deliberately increased the confusing similarity between the disputed domain name and the business of the Complainant even further.

In the light of the above circumstances the Panel failed to find any plausible good faith reasons for registration and use of the disputed domain name by the Respondent. The Respondent has not submitted any response to the Complaint and therefore has not presented any facts or arguments that could counter the above conclusions of the Panel. As a result, the Panel holds that the disputed domain name has been registered and is being used by the Respondent in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).