Decision for dispute CAC-UDRP-108384

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

The Complainant owns numerous trademark registrations for the phrase “MARKS & SPENCER”, including:

• UK trademark registration no. 1252067 for “MARKS & SPENCER” (word), registered on October 11, 1985, for various goods in class25; and
• international trademark registration no. 794769 for “MARKS & SPENCER” (word), registered on November 14, 2002, and protected in numerous countries for goods and services in classes 03, 25, 30, and 35.

All disputed domain names were registered on June 27, 2023, i.e., the Complainant’s trademark registrations cited above predate the registration of the disputed domain names.

The Complainant is a major British multinational retailer headquartered in London, England. It was founded in Leeds, United Kingdom, in 1884 by Michael Marks and Thomas Spencer. As of 2026, it operates over 1,053 stores across the UK. It also has a global presence, with over 380 locations outside the UK. These are located in Armenia, Bahrain, Bermuda, Cyprus, the Czech Republic, Egypt, Finland, France, Georgia, Gibraltar, Gran Canaria, Greece, Guernsey, Hong Kong, India, Indonesia, Jersey, Kazakhstan, Kuwait, Libya, Macau, Malaysia, Malta, Morocco, the Philippines, Oman, Qatar, Romania, Russia, Saudi Arabia, Singapore, Spain, Tenerife, Thailand, Turkey, Ukraine and the United Arab Emirates.

The Complainant owns and operates various domain names incorporating the term “MARKS AND SPENCER”, including <marksandspencer.com>, which has been used for a website featuring the Complainant's branding for over 25 years.

Two of the disputed domain names, <marksandspencerireland.com> and <marksandspencerslovenia.com>, feature live e-commerce websites that appear to offer clothing for sale under the Complainant’s “MARKS AND SPENCER” and “M&S” brand names. The remaining disputed domain names are used for parking websites displaying pay-per-click advertising.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain names should be transferred to it.

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are 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 names (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are 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. According to paragraph 3(c) of the UDRP Rules, a complaint may relate to more than one domain name provided they are all registered by the same domain-name holder. This is clearly the case for all disputed domain names in the present dispute.

The disputed domain names are confusingly similar to the Complainant’s trademark “MARKS & SPENCER”. Replacing the ampersand “&” with the word “and” is a technical necessity of the domain name system and does not alter the overall character. Appending a geographical term to each disputed domain name – namely “ireland”, “slovenia”, “australia”, “brasil” (Portuguese for “Brazil”), “denmark”, “hrvatska” (Croation for “Croatia”), “latvia”, “lietuva” (Lithuanian for “Lithuania”), “norge” (Norwegian for “Norway”), “portugal”, “southafrica”, and “suomi” (Finnish for “Finland”) – is also not sufficient to escape the finding that each disputed domain name is confusingly similar to the “MARKS & SPENCER” trademark, as it does not change the overall impression that the designation is connected to the Complainant’s distinctive and well-known trademark.

The Panel further finds that the Complainant successfully submitted prima facie evidence that the Respondent has neither made any use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services, nor is making a legitimate non-commercial or fair use of the disputed domain names, nor is commonly known under the disputed domain names. The Panel accepts the Complainant’s contention that the Respondent’s use of <marksandspencerireland.com> and <marksandspencerslovenia.com> for e-commerce websites amounts to impersonation and passing off. Both the composition of these domain names and the design of the websites for which they are used clearly indicate impersonation. While an impersonation website may be considered an “offering of goods or services”, it is not a bona fide offering. The same is true for the pay-per-click parking websites for which the other disputed domain names are used. This prima facie evidence was not challenged by the Respondent.

The Panel further finds that the Complainant has successfully submitted prima facie evidence that the Respondent has registered and used the disputed domain names in bad faith, namely by intentionally attempting to attract, for commercial gain, internet users to its websites by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites (paragraph 4(b)(iv) of the Policy). The Panel accepts the Complainant’s contention that the Respondent used the disputed domain names <marksandspencerireland.com> and <marksandspencerslovenia.com> to promote online clothing sales, seemingly like the Complainant’s own retail activities. The same is true for the pay-per-click parking websites of the other disputed domain names, which is another way to monetize website visitors drawn to the parking page by the similarity of its domain name to the “MARKS & SPENCER” trademark. Again, this prima facie evidence submitted by the Complainant was not contested by the Respondent.