Decision for dispute CAC-UDRP-108175

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

In these proceedings, the Complainant mainly relies on the following trademarks, registered and duly renewed in its name:

• UKIPO TM No. UK0002207488B – bandq – Classes 2, 6, 7, 8, 11, 19, 20 and 27; registered on October 27, 2000;
• UKIPO TM No. UK00001327953 – “B&Q” – Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 11, 12, 16, 17, 18, 19, 20, 21, 22, 24, 26, 27, 28, 31 and 32; registered on May 24, 1991;
• UKIPO TM No. UK00002322887 – “B&Q” – Classes 35 and 37; registered on July 11, 2003;
• UKIPO TM No. UK00911007119 – “B&Q” device mark – Classes 16, 35 and 37; registered on November 1, 2012;
• UKIPO TM No. 011993573 – “B&Q” device mark – Classes 35, 41 and 42; registered on December, 11, 2013;
• EUIPO TM No. 011007119 – “B&Q” device mark – Classes 16, 35 and 37; registered on November 1, 2012;
• EUIPO TM No. 001037324 – “B&Q” – Classes 9, 35, 36, 37, 38, 39, 40, 41 and 42; registered on November 11, 2001;
• P.R. China TM No. 1355368 – “b&q” – Class 20, registered on January, 21, 2000;
• P.R. China TM No. 1366973 – “b&q” – Class 7, registered on February, 21, 2000;
• P.R. China TM No. 1079778 – “b&q” – Class 37, registered on August, 14, 1997; and,
• P.R. China TM No. 1354368 – “b&q” – Class 11, registered on January, 14, 2000.

It is worth noting that the Complainant also owns some other similar trademarks in various countries, including in China, where the Respondent is apparently located, which have not been explicitly cited in these proceedings.

The Complainant is a large home improvement and garden living retailer that privileges Do-It-Yourself (DIY), initially founded back in 1969. Ever since, the Complainant has substantially grown, has acquired several other businesses in the same field and has become one of the most well-known DIY retailers in the UK and Ireland, but also in China, Taiwan and Hong Kong, having acquired commercial presence there and elsewhere, through more than 300 sites and more than 27000 employees, as well as through its online presence.

The Complainant owns a fair-sized portfolio of trademarks including the wording "B&Q" / “bandq”, among which a UK registration dating back to 1991. It also owns a multitude of related domain names, like <bandq.com>, <bandq.co.uk> and <bandq.shop> since July 15, 1997, September 18, 2006 and September 1, 2016, respectively.

The disputed domain name <bandqstore.com> was registered on August 21, 2025 by the Respondent, as confirmed by the Registrar.

COMPLAINANT

The Complainant contends that the disputed domain name is confusingly similar to its "B&Q" / “bandq” trademark, as it wholly incorporates this trademark. This last element is sufficient to support the finding that the disputed domain name is confusingly similar to the Complainant's trademark. Indeed, the mere addition of the descriptive word “store” to the Complainant’s trademark does not change the overall impression of a most likely connection with the trademark "B&Q" / “bandq” of the Complainant. As to the gTLD “.com”, the Complainant suggests that it should be disregarded, as per the usual practice. 

The Complainant maintains that the Respondent lacks rights or legitimate interests in the disputed domain name because the Respondent is not known by the disputed domain name, the Complainant is not affiliated with nor has it ever authorised the Respondent to register its trademark as a domain name and the Complainant has no business with the Respondent.

According to the Complainant, given the distinctiveness and reputation of the "B&Q" / “bandq” trademark, the Respondent registered the disputed domain name with full knowledge of the Complainant's trademark in an intentionally designed way with the aim to create a likelihood of confusion with the Complainant’s trademarks and domain names for commercial gain, and this is evidence of the fact that the disputed domain name was registered in bad faith.

With respect to use in bad faith, the Complainant points out to a series of facts that clearly indicate the bad faith of the Respondent, such as the Respondent’s look-alike version of the relevant website to its own and the Respondent’s non-response to the Complainant’s cease and desist letter. It is, indeed, impossible from the file to conceive any actual or contemplated use that would not be illegitimate.

For all these reasons, the Complainant concludes that the Respondent registered and used the disputed domain name 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 disputed domain name consists of the Complainant's whole trademark (“bandq”). The mere addition of a generic word that relates to the Complainant’s field of business (“store”) in the disputed domain name is not sufficient to escape the finding that the disputed domain name is confusingly similar to the trademark of the Complainant.

As far as the gTLD ".com" is concerned, it is generally recognized that top level domains do not have any bearing in the assessment of identity or confusing similarity, according to paragraph 4(a)(i) of the Policy.

Hence, the Panel is satisfied that the first requirement under the Policy is met.

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).

Since proving a negative fact is almost impossible, Panelists in UDRP proceedings have generally agreed that it is sufficient for the Complainant to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name to shift the burden of proof to the Respondent.

In the case at issue, the Complainant argued that it had never authorised the Respondent to register the "B&Q" / “bandq” trademark in a domain name, and that it had never licensed its trademark to the Respondent.

Furthermore, the Respondent has not demonstrated any use of the disputed domain name in connection with a bona fide offering of goods and services or a legitimate non-commercial or fair use of the disputed domain name.

Finally, there is no other evidence in the case file that could demonstrate that the Respondent has been commonly known by the disputed domain name.

In view of the foregoing, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. In order to rebut the Complainant's arguments, the Respondent had the possibility to make its own defense. However, the Respondent has chosen not to file a Response.

Therefore, the Panel is satisfied that also the second requirement under the Policy is met.

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).

As far as registration in bad faith is concerned, given the reputation of the Complainant's trademark in the DIY business and the fact that the disputed domain name fully incorporates this trademark (even with the addition of a descriptive word), it is evident that, at the time of the registration of the disputed domain name, the Respondent was well aware of the Complainant's trademark. The registration as domain name of a third party's well-known trademark with full knowledge of the fact that the rights over this trademark belong to a third-party amounts to registration in bad faith.

With respect to use in bad faith, the disputed domain name resolves to a mirror website of the Complainant’s official website that the Respondent has created and through which it has been conducting business in the same DIY field as the Complainant, without the Complainant’s approval. Such misleading and fraudulent use of a domain name shows bad faith under some circumstances, such as when the complainant’s trademark has such a strong reputation that it is widely known, and when it is impossible to conceive any plausible actual or contemplated active use of the domain name by the respondent that would not be illegitimate. This fact is to be combined with the full incorporation of the complainant’s reputable trademark in the disputed domain name. These are the circumstances that apply in the case at issue, to a fair extent. The trademark "B&Q" / “bandq” enjoys wide and extensive reputation in the DIY industry and for relevant services. Therefore, it is impossible to conceive any plausible active use of the disputed domain name that would be legitimate. This conclusion is further reinforced by the clearly intentional use of the descriptive term “store” by the Respondent, as this term suggests to online consumers that Respondent is Complainant’s online store. Last but not least, Respondent has not replied to Complainant’s cease and desist letter.

Therefore, the Panel finds it clear that the disputed domain name was used in bad faith.

For all circumstances mentioned above, the Panel is satisfied that also the third requirement under the Policy is satisfied.

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.

The disputed domain name wholly incorporates the Complainant's trademark, accompanied by a descriptive term that relates to Complainant’s business. The disputed domain name is therefore confusingly similar to the Complainant's trademark.

The Respondent was not authorised to include the Complainant's trademark in the disputed domain name, and the Complainant never licensed its trademarks to the Respondent. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate non-commercial or fair use.

The Respondent registered the disputed domain name with full knowledge of the Complainants’ well-known trademark. Its fraudulent use of the disputed domain name for a mirror website is in bad faith, as there is no conceivable use of the disputed domain name that could amount to a legitimate use.