| Case number | CAC-UDRP-108242 |
|---|---|
| Time of filing | 2025-12-12 09:34:19 |
| Domain names | leroymerlin.live |
Case administrator
| Name | Olga Dvořáková (Case admin) |
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Complainant
| Organization | GROUPE ADEO |
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Complainant representative
| Organization | NAMESHIELD S.A.S. |
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Respondent
| Organization | Traffic Jet |
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The Panel is aware of a previous decision related to the disputed domain name (CAC no. 108043).
The Complainant is the owner of several trademark registrations for "LEROY MERLIN". In particular GROUPE ADEO owns:
a) International trademark registration LEROY-MERLIN no. 591251, registered on July 15, 1992 and duly renewed for classes 01, 02, 03, 04, 05, 06, 07, 08, 09, 11, 16, 17, 19, 20, 21, 22, 25, 27, 28, 31 and 37;
b) International trademark registration LEROY MERLIN (dev.) no. 701781, registered on August 8, 1998 and duly renewed for classes 01, 02, 03, 04, 05, 06, 07, 08, 09, 11, 12, 14, 16, 17, 18, 19, 20, 21, 22, 24, 25, 26, 27, 28, 31, 35, 36, 37, 38, 39, 40, 41 and 42;
c) EUTM registration LEROY MERLIN no. 10843597, filed on April 27, 2012, registered on December 7, 2012 and duly renewed for classes 01, 02, 03, 04, 05, 06, 07, 08, 09, 11, 12, 14, 16, 17, 18, 19, 20, 21, 22, 24, 25, 26, 27, 28, 31, 35, 36, 37, 40, 41, 42 and 44;
d) EUTM registration LEROY MERLIN (dev.) no. 11008281, filed on July 2, 2012, registered on October 2, 2013 and duly renewed for classes 01, 02, 03, 04, 05, 06, 07, 08, 09, 11, 12, 14, 16, 17, 18, 19, 20, 21, 22, 24, 25, 26, 27, 28, 31, 35, 36, 37, 40, 41, 42 and 44.
The Complainant is a French company operating in the home improvement and DIY (do it yourself) retail sector. Its flagship brand, LEROY MERLIN, founded in 1923, is described as the leading DIY retailer in France, employing 28,000 people.
The Complainant owns several LEROY MERLIN trademarks (international and EU) and operates domain names incorporating the mark, including <leroymerlin.fr> and <leroymerlin.com>.
The disputed domain name, <leroymerlin.live>, was registered on 3 October 2025.
According to the Complainant, the disputed domain name <leroymerlin.live> is identical to the trademark LEROY MERLIN since the domain name includes it in its entirety without addition or deletion.
Furthermore, the Complainant asserts that the Respondent is not identified in the Whois database as the disputed domain name, but as “Traffic Jet”. The Complainant also contends that the Respondent has no rights or legitimate interests in respect of the domain name <leroymerlin.live> and that the Respondent is not related in any way to the Complainant. In particular, according to the Complainant neither license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademark LEROY MERLIN. The Complainant also notes that the domain name redirects to a website selling construction tools under the brand DEWALT, which competes with the products provided by the Complainant and that said use of the disputed domain name is not indicative of rights or legitimate interests.
Finally, in the Complainant's view, given the distinctiveness of the Complainant's trademarks and its reputation, it is reasonable to infer that the Respondent has registered and used the domain name with full knowledge of the Complainant's trademark. Moreover, since the disputed domain name redirects to a website selling construction tools, which compete with the products provided by the Complainant, the use of the disputed domain name to disrupt the business of the owner of the relevant mark is clearly in bad faith.
The Complainant´s contentions are summarised above.
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 domain name in dispute was the object of a previous decision (CAC no. 108043) between the same parties here involved, in which the complaint was rejected. The Panel of those proceedings basically rejected the complaint since he found that passive holding lasting only a few days could not amount to sufficient evidence of bad faith.
Therefore, it is important to consider the possibility of refiling in UDRP proceedings. Now, according to WIPO Jurisprudential Overview 3.0 (point 4.18) a refiled case is one in which a newly-filed UDRP case concerns identical domain name(s) and parties to a previously-decided UDRP case in which the prior panel denied the complaint on the merits. (The previous case may or may not be from another UDRP provider.) As the UDRP itself contains no appeal mechanism, there is no express right to refile a complaint; refiled complaints are exceptional.
Panels have accepted refiled complaints only in highly limited circumstances, such as when the complainant establishes that legally relevant developments have occurred since the original UDRP decision.
According to this Panel, relevant developments have effectively occurred since the original UDRP decision because in case 108043 the argument of bad faith use was passive holding, while in the case at hand is disrupting the business of the owner of the relevant mark through the use of the disputed domain name to promote a competitor's products. In practice, following the unfavorable decision (case CAC no. 108043) referred to above, the domain name was used in a different way, no longer in connection with a simple blank page, but in connection with a structured site designed to promote a different brand and in clear and direct competition with "LEROY MERLIN".
Therefore, this Panel sees no obstacle to agreeing to issue a decision in the present proceedings.
Paragraph 4(a) of the Policy provides that to obtain the transfer of the disputed domain name, the Complainant must prove that each of the following elements is present:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
1) The Panel finds that the disputed domain name <leroymerlin.live> is confusingly similar to the Complainant’s trademark "LEROY MERLIN". Many panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (see, among others, Chubb Security Australia PTY Limited v. Mr. Shahim Tahmasebi, WIPO Case No. D2007-0769; Société Air France v. Virtual Dates, Inc., WIPO Case No. D2005-0168 and Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). This is the case in the present situation where the Complainant’s registered trademark "LEROY MERLIN" is fully included in the disputed domain name. The additional element, namely the gTLD ".live", is a mere technical requirement, which does not affect the identity between the signs and should be disregarded. The Complainant therefore succeeds on the first element of the Policy.
2) The Complainant demonstrated that the disputed domain name redirects to a website selling construction tools, which compete with the products provided by the Complainant. The Panel finds that said activity, per se, does not provide a legitimate interest in the disputed domain name under the Policy. Furthermore, the Complainant provided prima facie evidence that the Respondent does not have rights or legitimate interests in respect of the disputed domain name as it is not commonly known under the disputed domain name and was never authorized to use the "LEROY MERLIN" trademark by the Complainant. The Respondent, in the absence of any response, has not shown any facts or elements to justify prior rights or legitimate interests in the disputed domain name. The Complainant therefore succeeds on the second element of the Policy.
3) Given the circumstances of the case, including the provided information on the use and reputation of the Complainant’s trademark "LEROY MERLIN" and the distinctive nature of this mark, it is inconceivable to the Panel that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark. The Panel, therefore, finds that the disputed domain name was registered in bad faith. Furthermore, the disputed domain name does currently resolve to an active website selling construction tools under the trademark DEWALT, which competes with the products provided by the Complainant. The Panel finds it evident that the Respondent registered and is using the disputed domain name to disrupt Complainant’s business, as the Respondent is using the disputed domain name to operate a competing website (see, among others, Joseph NAKAM v. xue yu, CAC Case No. 104977). The Panel therefore finds that the Respondent has registered and uses the disputed domain names in bad faith. The Complainant therefore succeeds also on the third element of the Policy.
- leroymerlin.live: Transferred
PANELLISTS
| Name | Guido Maffei |
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