Decision for dispute CAC-UDRP-108044

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 submitted evidence, which the Panel accepts, showing that it is the registered owner of the trademarks bearing “LEROY MERLIN”, inter alia, the following:

• International trademark “LEROY-MERLIN” n°591251, registered on July 15, 1992;
  
  
• International trademark “LEROY MERLIN” n°701781, registered on August 14, 1998;

• European Union trademark “LEROY MERLIN” n°10843597, registered on April 27, 2012;
  
  
• European Union trademark “LEROY MERLIN” n°11008281, registered on July 2, 2012.

Moreover, the Complainant is also the owner of the domain names bearing the sign “LEROY MERLIN” such as the domain names <leroymerlin.fr> (registered on September 12, 1996) and <leroymerlin.com> (registered on September 13, 1996).

The Complainant, GROUPE ADEO, is a French company specializing in the sale of articles covering all sectors of the home and the development of the living environment, both for individuals and professionals. The pioneering company of the Complainant is LEROY MERLIN, established in 1923. LEROY MERLIN is a DIY retailer in the home improvement and living environment market, with 28,000 employees in France.

The Complainant holds many trademark registrations including “LEROY MERLIN” phrase going back to 1992 and the Complainant also holds the domain names bearing “LEROY MERLIN”, such as <leroymerlin.fr> and <leroymerlin.com>.

On July 28, 2025; the Respondent registered the disputed domain name <leroymerlin-sale.shop>. The disputed domain name is currently inactive.

COMPLAINANT:

1. THE DISPUTED DOMAIN NAME IS CONFUSINGLY SIMILAR

The disputed domain name is confusingly similar to the Complainant’s formerly registered distinctive trademarks, as they bear the Complainant’s “LEROY MERLIN” trademark as a whole with the addition of the descriptive term “sale”, which would not prevent a finding of confusing similarity.

The Complainant claims that the top-level domain “.shop” is merely technical requirement and will be disregarded, so the domain name remains confusingly similar despite its inclusion.

Consequently, the disputed domain name is claimed to be confusingly similar to Complainant’s trademark.

2. NO RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DISPUTED DOMAIN NAME

The Complainant states that the Respondent is neither affiliated nor authorized by the Complainant in any way and neither license nor authorization has been granted to the Respondent to use the Complainant’s trademarks “LEROY MERLIN”.

The Respondent has no rights on the disputed domain name as the Respondent is not known as the disputed domain name and as the Respondent does not hold any trademark or domain name with “LEROY MERLIN”.

Finally, before the intervention of the Complainant, the disputed domain name is claimed to be used to disrupt Complainant’s business and to attract users by impersonating the Complainant, as the Respondent displayed the Complainant’s trademark and logo. The Complainant provided copy of the website in support of such claim. Impersonation of a complainant, by using its trademark in a disputed domain name and seeking to defraud or confuse users, are claimed to indicate a lack of rights or legitimate interests by a Respondent.

The Complainant argues that the Respondent is not using the disputed domain name in connection with bona fide offering of goods or services or a legitimate non-commercial or fair use.

3. THE DISPUTED DOMAIN NAME WAS REGISTERED AND IS USED IN BAD FAITH 

The Complainant claims that Complainant’s “LEROY MERLIN” trademarks significantly predate the disputed domain name. The Complainant states that “LEROY MERLIN” is a well-known trademark and the Complainant refers to previous panel decisions acknowledging the reputation of the Complainant’s trademark.

The Complainant asserts that it is inconceivable for the Respondent to be unaware of the existence of the Complainant when registering the disputed domain name. The fact that the Respondent registered the disputed domain name while knowing about the trademarks of the Complainant constitutes bad faith in registering the disputed domain name.

Furthermore, the disputed domain name is claimed to be pointing to an online store displaying the Complainant’s trademark and logo and selling competing goods at discounted prices. The Complainant finds that Respondent registered and uses the domain name in bad faith to create confusion with Complainant’s trademarks for commercial gain by using the identical domain name to resolve to a website offering goods in direct competition with the Complainant’s products. Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under the paragraph 4(b)(iv) of the Policy.

Accordingly, the Complainant alleges that the disputed domain name was registered and is being used in bad faith.

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.

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In this context, the Panel also notes that the burden of proof is on the Complainant to make out its case and past UDRP panels have consistently said that a Complainant must show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.

For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:

1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. the disputed domain name has been registered and is being used in bad faith.

The Panel will therefore deal with each of these requirements in turn.

1. IDENTICAL OR CONFUSINGLY SIMILAR

The Policy simply requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of registration of “LEROY MERLIN” trademark.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s “LEROY MERLIN” trademark and the addition of the term “SALE” is not sufficient to vanish the similarity.

Moreover, the addition of the TLD “.shop” is not enough to abolish the similarity.

The Panel is of the opinion that the Internet users will easily fall into false impression that the disputed domain name is official domain name of the Complainant. The Panel recognizes the Complainant's rights and concludes that the disputed domain name is confusingly similar with the Complainant's trademark. Therefore, the Panel concludes that the requirements of paragraph 4(a)(i) of the Policy is provided.

2. NO RIGHTS OR LEGITIMATE INTERESTS

Under paragraph 4(a)(ii) of the Policy, the complainant has the burden of establishing that the respondent has no rights or legitimate interests in respect of the domain name.

It is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to the respondent of the dispute, the use or making demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent of the dispute (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent of the dispute is making a legitimate non-commercial or fair use of the domain name, without an intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Thus, if the respondent proves any of these elements or indeed anything else that shows that it has a right or legitimate interest in the disputed domain name, the complainant will have failed to discharge its burden of proof and the complaint will fail. The burden is on the complainant to demonstrate a prima facie case that the respondent does not have rights or legitimate interests in the disputed domain name. Once the complainant has made out a prima facie case, then the respondent may, inter alia, by showing one of the above circumstances, demonstrate rights or legitimate interests in the disputed domain name.

The Complainant contends that the Respondent has nothing to do with the Complainant and any use of the trademark “LEROY MERLIN” has to be authorized by the Complainant but there is no such authorization. Moreover, the disputed domain name has no relation with the Respondent and the Respondent is not commonly known as the disputed domain name. Also, the Complainant submits that the disputed domain name redirects to a website that offers goods in competition with the Complainant. It can be seen from copy of the website that the trademarks are being used without authorization as though the Respondent was trying to impersonate the Complainant and to gain unfair advantage.

In the absence of a response, the Panel accepts the Complainant’s allegations as true that the Respondent has no authorization to use the Complainant’s trademarks in the disputed domain name.

Hence, as the Complainant has made out its prima facie case, and as the Respondent has not demonstrated any rights or legitimate interests as illustrated under paragraph 4(c) of the Policy, nor has the Panel found any other basis for finding any rights or legitimate interests of the Respondent in the disputed domain name, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

3. BAD FAITH

The Panel concludes that the Complainant's “LEROY MERLIN” trademark is of distinctive character. Therefore, the Panel is of the opinion that due to the earlier rights of the Complainant in the “LEROY MERLIN” trademark, the Respondent was aware of the Complainant and its trademarks at the time of registration of the disputed domain name (see e.g., Ebay Inc. v. Wangming, WIPO Case No. D2006-1107). Referring to Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226, the Panel believes that the awareness of the Complainant’s trademark at the time of the registration of the disputed domain name is to be considered an inference of bad faith registration.

Moreover, the disputed domain name is currently invalid, which does not prevent a finding of bad faith. However, taking into account the copy of the website, where it can be seen that the disputed domain name pointed to an online store displaying the Complainant’s trademark and logo and selling competing goods at discounted prices without authorization, the Panel finds that the Respondent registered and uses the domain name in bad faith to create confusion with Complainant’s trademarks for commercial gain by using the almost identical domain name to resolve to a website offering goods in direct competition with the Complainant’s products.

All the circumstances of the case have been examined to determine whether the Respondent is acting in bad faith. The cumulative circumstances for an indication of bad faith include the Complainant having a well-known trade mark, no response having been filed all happened in this case, in addition to the disputed domain name being invalid now but redirected to unauthorized confusing and competing use before, which is an inference of bad faith itself.

Therefore, in light of the above-mentioned circumstances in the present case, the Panel finds that the disputed domain name has been registered and is being used in bad faith and that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.