Decision for dispute CAC-UDRP-108790

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 relies on a number of trademark registrations with the "Leroy Merlin" element, including the following:

• the International Trademark registration under the "Madrid" system (IR) "LEROY-MERLIN" (word) No. 591251, registered on July 15, 1992 and protected, inter alia, in Algeria, Austria, Bulgaria, China, Croatia, Germany, Italy, Spain, Serbia and Ukraine,
• The IR "LEROY MERLIN" (word and device) No. 701781, registered on August 14, 1998, protected, inter alia, in the Benelux, China, Portugal, Switzerland and Spain; and
• the European Union (EU) trademark registration "LEROY MERLIN" (word) No.010843597, registered on December 07, 2012.

THE DISPUTED DOMAIN NAMES ARE IDENTICAL OR CONFUSINGLY SIMILAR TO A TRADEMARK OR SERVICE MARK IN WHICH THE COMPLAINANT HAS RIGHTS 

The Complainant states that it is a French company specializing in all sectors of household goods, the development of the living environment and DIY, both for individuals and professionals, originally founded in 1923.

The Complainant claims that it has over 24,000 (twenty four thousand) employees in France.

The Complainant owns the subsidiary "L'IMMOBILIÈRE LEROY MERLIN FRANCE", where "L'IMMOBILIÈRE" in French means "real estate"

The Complainant relies on its "LEROY MERLIN" trademarks, including the trademarks provided above ("Trademarks") and also refers to its domain names, including <leroymerlin.fr> and <leroymerlin.com> registered since 1996.

The disputed domain names were registered between August 11, 2025 and February 04, 2026. They all were registered with the same registrar and either resolve to an error page or a parking page with commercial links.

The Complainant claims that three out of five disputed domain names were used for fraudulent activities (to send fraudulent emails impersonating Complainant's employees). 

The Complainant submits that all the disputed domain names are confusingly similar to the Trademarks.

With regard to the four disputed domain names, namely, <immo-lmerlin.com>, <immobiliere-lmerlin.com>, <immobiliere-merlin.com> and <limmobiliere-lmerlin.com>, the Complainant submits that they all contain the term “MERLIN”.

The addition of the letter “L” before the term “MERLIN”, evoking the term “LEROY”, and the term“IMMOBILIERE” or its abbreviation “IMMO” (French for “real estate”) is not sufficient to escape the finding that the disputed domain names are confusingly similar to the Trademarks.

It does not change the overall impression of the designations as being connected to the Complainant’s trademark and does not prevent the likelihood of confusion between the disputed domain names and the Trademarks.

With regard to the fifth disputed domain name, namely, <limmobiliere-lm.com>, the Complainant submits that the disputed domain name contains the acronym of the Complainant’s trademark "LEROY MERLIN" (namely “LM”), along with the terms “L’IMMOBILIERE” (French for "real estate”). The Complainant asserts that the acronym of the Complainant’s trademark with the addition of generic terms is not sufficient to escape the finding that the domain name is confusingly similar to the Trademark.

The Complainant contends that the addition of the gTLD “.com” does not change the overall impression of the designations as being connected to Complainant’s trademark.

Therefore, the Complainant submits that the disputed domain names are confusingly similar to its Trademarks.

THE RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DISPUTED DOMAIN NAMES

The Complainant claims that the Respondent is not identified in the Whois database as the owner of the disputed domain names.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names and he is not related in any way to the Complainant. The Complainant does not carry out any activity for, nor has any business with the Respondent.

Neither license nor authorization has been granted to the Respondent to make any use of the Trademarks, or apply for registration of the disputed domain names.

The Complainant claims that non-use (passive holding) of some of the disputed domain names and resolution to PPC pages of the other disputed domain names do not establish rights or legitimate interest.

The Complainant also contends that since the disputed domain names <immo-lmerlin.com>, <immobiliere-merlin.com> and <limmobiliere-lm.com> were used for fraudulent activities, this negates any rights or legitimate interest of the Respondent.

THE DISPUTED DOMAIN NAMES WERE REGISTERED AND ARE BEING USED IN BAD FAITH

The Complainant's submissions on the third UDRP element can be summarized as follows:

• The disputed domain names were registered many years after registration of the Trademarks;
• Prior UDRP decisions have acknowledged the Trademarks' reputation;
• Three of the disputed domain names were used for impersonation and fraud;
• Given the distinctiveness of the Trademarks and reputation, it is reasonable to infer that the Respondent has registered the disputed domain names with full knowledge of the Complainant's trademark;
• With regard to the disputed domain names that are passively held, the Complainant relies on the passive holding doctrine as provided in sec. 3.3 of WIPO Overview of WIPO Panel Views on Select UDRP Questions (“WIPO Overview 3.1”) and submits that the incorporation of a famous mark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use;
• With regard to the disputed domain names that resolve to pages with PPC links, the Complainant submits that the Respondent has attempted to attract Internet users for commercial gain to his own website thanks to the Complainant’s trademarks for his own commercial gain, which is evidence of bad faith.

The Complainant's contentions are summarized in the "Factual Background" section above

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.

Consolidation of proceedings against several Respondents and domain names 

According to the Registrars' Verification the registrants of all five (5) disputed domain names are five different individuals from France.

The Complainant requested consolidation of the proceedings in respect of the disputed domain names and in relation to all Respondents based on the following:

1. All the disputed domain names were registered with the same registrar,

2. They all follow the same naming structure, namely the reproduction of the term "IMMOBILIERE" or its alternatives(e.g. "immo") combined with the Complainant's trademark "LEROY MERLIN" (its part or acronym LM) and

3. Three out of five disputed domain names have been used for fraudulent activities.  

The Panel first notes that under par. 3 (c) of the UDRP Rules, the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. Consolidation is also addressed in WIPO Overview 3.1, section 4.11.2, which states that “panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”.

A similar position is articulated in sec. 0.7 of "UDRP Perspectives on Recent Jurisprudence", updated on June 02, 2025, ("UDRP Perspectives") 

The Panel has also consolidation authority under Rule 10 (e) of the UDRP Rules.

The Panel carefully considered the evidence available in this dispute and facts of the case and decided to accept the consolidation request based on the following:

- All five disputed domain names were registered with the same registrar,

- All five disputed domain names were registered by alleged individuals from France and all seem to use the same email services provider,

- All five disputed domain names follow the same naming pattern - they all contain the word "IMMOBILIERE" ("real estate" in French) or its alteration (e.g short form) coupled with the elements of the Complainant Trademark,

- No one from the identified respondents filed a response and questioned consolidation or otherwise indicated that he or she is not related to the other identified respondents and domain names and

- Totality of the circumstances of this dispute indicates that all the named registrants are either different aliases of the same person or the disputed domain names are commonly controlled.

Based on the above the Panel finds that all of the disputed domain names are more likely than not under common control and consolidation is fair and equitable to both parties.

Based on the above, the Panel accepts the consolidation request of the Complainant and will refer to all named respondents in the complaint as “Respondent”.

A. Identical or confusingly similar 

The Complainant provided evidence of its "LEROY MERLIN" trademark registrations protected in various jurisdictions.

As confirmed by WIPO Overview 3.1: “where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case” (see sec. 1.2.1).

Therefore, the Complainant proved it has trademark rights.

With regard to confusing similarity, the Panel notes that the four disputed domain names incorporate the "Merlin" element of the Complainant's mark (some also contain the "L" letter referring to "Leroy") and plus a descriptive term that is related to the Complainant's subsidiary "L'IMMOBILIÈRE LEROY MERLIN FRANCE".

The Panel agrees with WIPO Overview 3.1 view that "where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element" (see sec. 1.8).

The Panel finds that the Complainant's trademark is recognizable within the four disputed domain names, namely <immo-lmerlin.com>,  <immobiliere-lmerlin.com>, <limmobiliere-lmerlin.com> and <immobiliere-merlin.com>, and the addition of a descriptive term does not affect the confusing similarity.

With regard to the fifth disputed domain name <limmobiliere-lm.com>, the Panel finds it appropriate to apply "broader circumstances" analysis in this case by looking at additional factors related to the registration and use of the disputed domain name such as registrant’s conduct and evidence of targeting of the Complainant's mark, registration of other disputed domain names incorporating the Trademarks and use of the disputed domain name for fraudulent activities impersonating the Complainant (see sec. 1.8 of UDRP Perspectives and sec. 1.15 of WIPO Overview 3.1).

The Panel finds that "broader circumstances" analysis is not a substitute for confusing similarity test, however it may be appropriate in certain limited cases.

The "LM" acronym can be seen as referring to the Trademarks, a descriptive term "limmobiliere" related to the Complainant's business and its subsidiary, and evidence of targeting available in this dispute, taken together, indicate that the disputed domain name <limmobiliere-lm.com> is confusingly similar to the Trademarks for the purpose of the Policy.

The “.com” TLD is to be disregarded for the first element analysis as it is a standard registration requirement.

Therefore, the Panel finds that the first requirement of the Policy has been satisfied.

B. Rights or Legitimate Interests

The general rule in UDRP jurisprudence is the following:

(i) a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests; and

(ii) once such a prima facie case is made, the burden shifts to the respondent who has to demonstrate his rights or legitimate interests in respect of the domain name under paragraph 4 (c) of the Policy. 

If the respondent fails to do so, the second element of the Policy is satisfied, see sec. 2.1 of WIPO Overview 3.1.

The Respondent did not respond.

While failure to respond does not per se demonstrate that the Respondent does not have rights or legitimate interests, it allows the Panel to draw such inferences as it considers appropriate, see paragraph 14(b) of the Rules and CAC Case No. 101284: “A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable inferences may be drawn from the information provided by the complainant”.

The Complainant has made a prima facie case of the Respondent’s lack of rights or legitimate interests.

The Panel agrees with a consensus view expressed in sec. 2.13.1 of WIPO Overview 3.1 that "the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or (unlicensed) pharmaceuticals, phishing/identity theft, distributing malware, unauthorized account access/hacking, copycat sites, passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent".

The Complainant provided evidence of fraudulent use of three out of five disputed domain names for the purpose of impersonating the Complainant and its employees (sending fraudulent emails), namely <immo-lmerlin.com>, <immobiliere-merlin.com> and <limmobiliere-lm.com>.

 There is no evidence of any possible rights and legitimate interest of the Respondent in respect of the two other disputed domain names.

 Given the absence of any response and any explanations from the Respondent as to his choice of the disputed domain names and the evidence of fraudulent use of the three disputed domain names, the Panel does not see any rights or legitimate interest of the Respondent in the circumstances of this dispute.

Therefore, the Complainant established the second Policy element.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists non-exhaustive circumstances indicating registration and use in bad faith.

These circumstances are non-exhaustive and other factors can also be considered in deciding about the bad faith element.

It is well established that bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark (see sec. 3.1 of WIPO Overview 3.1).

Targeting with the intent to take unfair commercial advantage of the complainant’s mark is important in establishing bad faith under the Policy.

As noted in UDRP Perspectives in sec. 3.3: “targeting can be established by either direct evidence (e.g. content of the website) or circumstantial evidence such as strength of the mark and nature of a disputed domain name (e.g. mark plus a term describing Complainant’s business), timing of registration of a domain name and timing of trademark registration, geographic proximity of the parties”.

Besides, as noted by Gerald M. Levine in “Domain Name Arbitration”, a leading treatise on the subject of the UDRP and domain name disputes: “knowledge and targeting are prerequisites to finding bad faith registration” and “knowledge of a complainant’s mark, if not directly evident or denied, can be inferred or rebutted from website’s content, strength of the mark and respective timing of a mark’s use in commerce and registration of the domain name” (see “Domain Name Arbitration”, Gerald M. Levine,  “Legal Corner Press”, Second Edition, 2019, page 235).

Here, both direct and circumstantial evidence indicates that the Respondent targeted the Complainant and such targeting was with intent to profit commercially from the Trademarks.

The Panel finds that the disputed domain names were registered and are being used in bad faith based on the following:

1) Timing of registration of the disputed domain names, many years after the registration of the Trademarks and the launch of Complainant's "LEROY MERLIN" business;

2) Geographic proximity of the Parties: both Parties are from France. Given the Complainant's reputation and fame in France, it is implausible that the Respondent based in France, was not aware of the Trademarks when he registered the disputed domain names;

3) Fame and reputation of the Trademarks, in particular in France (confirmed by the Panel's own research conducted in accordance with Rule 10 of UDRP Rules;

4) Evidence of fraudulent use and impersonation. As provided in WIPO Overview 3.1 and this Panel fully agrees with this view: "The use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith" (see sec. 3.1.4);

5) The fact that the Respondent registered five (5) disputed domain names following the same naming pattern and a similar pattern of use indicates targeting with intent to take unfair advantage of the Trademarks;

6) Passive holding, taking into account the totality of circumstances of this dispute (including the strength of the Trademarks, in particular their high reputation and fame in France), and evidence available (see also sec. 3.3 of WIPO Overview 3.1), supports bad faith.

Based on the above, the Panel finds that the Respondent’s behavior falls within par. 4 b (iv) of UDRP and the Respondent by using the disputed domain names has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement, and the Respondent by registering five (5) disputed domain names has engaged in a pattern of conduct as provided in par. 4 b (ii).

The Panel finds that the Respondent targeted the Complainant with an attempt to take unfair advantage of the Complainant’s mark and that in itself demonstrates bad faith registration and use.

The Panel holds that the third requirement of the Policy has been satisfied.