BDR Thermea France v Joe D Morneau, Whisler Beth, Camila Santos
WIPO Case No. D2025-2295
•12-08-2025
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
BDR Thermea France v. Joe D Morneau, Whisler Beth, Camila Santos
Case No. D2025-2295
1. The Parties
The Complainant is BDR Thermea France, France, represented by SafeNames Ltd., United Kingdom.
The Respondents are Joe D Morneau, United States of America; Whisler Beth, United States of America; and Camila Santos, United States of America.
2. The Domain Names and Registrars
The disputed domain names <dedietrichfr.com> and <dietrichchauffage.com> are registered with
Gname.com Pte. Ltd.; and
The disputed domain name <dedietrichsales.com> is registered GMO Internet, Inc. d/b/a Discount-
Domain.com and Onamae.com. (the “Registrars”)
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2025. connection with the disputed domain names. On June 13, 2025, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondents (Redacted for privacy, and Joe D Morneau) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 23, 2025 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the Complainant to either file separate complaint(s) for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. The Complainant filed an amended Complaint on June 23, 2025.
The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on June 27, 2025. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2025. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on July 18, 2025.
The Center appointed Stefan Bojovic as the sole panelist in this matter on July 29, 2025. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a multinational manufacturer and distributor of domestic and commercial water and space heating systems. Other products include solar thermal appliances, air conditioning units, and radiators. The Complainant is part of the BDR Thermea Group, founded in 2009, through the merger of Baxi, De Dietrich and Remeha. The Group as a whole serves customers in over 100 countries worldwide and has achieved a total turnover of EUR 2.3 billion in 2023.
The Complainant’s DE DIETRICH brand represents a global provider of thermal comfort systems for domestic and commercial customers and serves commercial clients in the following industries: pharmaceutical, chemical, food and recycling. Its origins begin in 1684, with the Dietrich family in France and since then, DE DIETRICH has expanded its sales into 50 countries.
The Complainant is the owner of a number of registered trademarks in various jurisdictions for its DE
DIETRICH trademark, including the following:
| - | European Union trademark registration No. 003816551 for DE DIETRICH, registered on May 4, 2006; |
| - | French trademark registration No. 1266210 for DE DIETRICH, registered on March 22, 1984; and |
| - | United Kingdom trademark registration No. UK00903816551 for DE DIETRICH, registered on May 4, 2006. |
In addition, the Complainant’s principal website is located on the domain name <dedietrich-heating.com>, which was registered on December 15, 2006.
The disputed domain name <dietrichchauffage.com> was registered on January 22, 2025 and it used to resolve to an online store purportedly offering the Complainant’s DE DIETRICH products at heavily discounted prices and using the Complainant’s logo and official product images. At the time of the Decision, the disputed domain name does not resolve to any active website as a consequence of takedown notice filed by the Complainant before initiating the present proceedings.
The disputed domain name <dedietrichfr.com> was registered on December 22, 2023 and it used to resolve to an online store purportedly offering the Complainant’s DE DIETRICH products at heavily discounted prices and using the Complainant’s logo and official product images. At the time of the Decision, the disputed
domain name does not resolve to any active website as a consequence of takedown notice filed by the
Complainant before initiating the present proceedings.
The disputed domain name <dedietrichsales.com> was registered on November 19, 2024 and it still resolves to an online store purportedly offering the Complainant’s DE DIETRICH products at heavily discounted prices and using the Complainant’s logo and official product images.
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5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.
Notably, the Complainant contends that the disputed domain names are confusingly similar to its DE DIETRICH trademark, as they contain the trademark with the addition of the generic words or terms “chauffage” (“heating” in French), “fr”, and “sales”. In the disputed domain name <dietrichchauffage.com>,
the portion “de” is missing from the Complainant’s trademark. However, the distinctive portion of this disregarded as it is a standard registration requirement.
disputed domain name remains confusingly similar to the Complainant’s DE DIETRICH mark, and Internet
users are likely to associate the term “Dietrich Chauffage” (“Dietrich Heating”) with the Complainant.
| contends that the Respondents are not authorized to use the Complainant’s DE DIETRICH trademark. | With reference to rights or legitimate interests in respect of the disputed domain names, the Complainant no authority has been given to the Respondents to use DE DIETRICH trademark or purport to sell products labelled by this trademark. Regardless of whether goods were actually being offered, and whether those goods were genuine or counterfeit, the Respondents’ use was fraudulent through its clear attempt to impersonate the Complainant and encouragement of online users to submit their personal details. Even if the offered goods were genuine (which is unlikely given the discounted prices advertised), the Respondents would not fall under the reseller defense as the lack of affiliation with the Complainant was not disclosed. On the contrary, the Respondents are trying to cause confusion through use of the Complainant’s logo. |
| With reference to the circumstances evidencing bad faith, the Complainant states that it has a strong reputation with the trademark DE DIETRICH within its sector and that has used the DE DIETRICH trademark in commerce for decades and, consequently, has longstanding trademark rights in the same. The Respondents had knowledge of the Complainant and intent to target the Complainant’s DE DIETRICH trademark. Furthermore, based on the use of the disputed domain names for online store that impersonates the Complainant, the Complainant holds that the Respondents had intentionally attempted to attract, for commercial gain, online users by creating a likelihood of confusion with the Complainant’s DE DIETRICH trademark and offerings. Such conduct is clearly calculated to give online users the false impression that such resolving websites’ content is controlled and authorized by the Complainant, when this is not the case. | |
| B. Respondents | |
| The Respondents did not reply to the Complainant’s contentions. | |
| 6. Discussion and Findings | |
| 6.1. Preliminary Issue: Consolidation of Multiple Respondents | |
| The amended Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. The Complainant requests the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules. | |
| The disputed domain name registrants did not comment on the Complainant’s request. |
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Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.
In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or
corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable
to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”), section 4.11.2.
As regards common control, the Panel notes that, although the disputed domain names are registered by the nominally different domain name registrants, they share a number of commonalities, that include the following:
| - | All disputed domain names resolve or used to resolve to websites that contained online shop and used logo of the Complainant and its official product images; |
| - | The layout of these websites is very similar; |
| - | The content of these websites is almost identical (for example: the websites displayed the offer of the same products that even had the same prices and the same percentage of the discount); |
| - | On all these websites there is a note that they are operated by an entity named “De Dietrich Sales” (or “De Dietrich Soldes” in the French language websites); and |
| - | All domain name registrants are located in the United States of America, although in different states. |
Having in mind the above, the Panel concludes that it is more likely than not that all the disputed domain names are under common control.
As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.
Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding.
6.2. Substantive Issues
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy stipulates that the Complainant must prove each of the following:
(i) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.
The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.
The Panel finds the Complainant’s DE DIETRICH trademark is recognizable within the disputed domain names, as it is contained in its entirety in the disputed domain names <dedietrichfr.com> and
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<dedietrichsales.com>, while in the disputed domain name <dietrichchauffage.com> the “dietrich” portion of
this trademark is contained and clearly recognizable. Accordingly, the disputed domain names are
confusingly similar to the Complainant’s trademark for the purposes of the Policy. WIPO Overview 3.0,
section 1.7.
Although the addition of other terms (here, “chauffage” – meaning “heating” in French, “fr”, and “sales) may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s
trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.
In addition, it is well established that “.com”, as a gTLD, can be disregarded in the assessment of the
confusing similarity between the disputed domain names and the Complainant’s trademark. WIPO Overview
3.0, section 1.11.1.
The Panel, therefore, finds that the first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise.
The disputed domain names resolve or used to resolve to online stores purportedly offering the Complainant’s DE DIETRICH products at heavily discounted prices and using the Complainant’s logo and official product images. Such online stores do not contain any disclaimer regarding the lack of connection with the Complainant. On the contrary, these websites seem to be designed to deliberately mislead Internet users that they are connected to or endorsed by the Complainant. Such use of the disputed domain names cannot be considered as a bona fide offering of goods or services nor as a legitimate noncommercial or fair use of the disputed domain names. Panels have held that the use of a domain name for illegitimate activity (here, claimed impersonation of the Complainant) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.
The Panel also finds that the structure of the disputed domain names <dedietrichfr.com> and <dedietrichsales.com>, which contain the Complainant’s DE DIETRICH trademark in combination with the words “fr” (which stands for ISO 3166-1 alpha-2 two-letter country code for France), and “sales” carries a risk of implied affiliation, especially in the light of the fact that the Complainant is French company that produces and markets heating equipment. WIPO Overview 3.0, section 2.5.1.
Having in mind the above, the Panel finds the second element of the Policy has been established.
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C. Registered and Used in Bad Faith
The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.
The Panel notes that the Respondent must have been well-aware of the Complainant and its DE DIETRICH trademark at the time of the registration of the disputed domain names. Namely, the registration of DE DIETRICH trademark predates the registration of the disputed domain names by decades, making it unlikely that the Respondent was not aware of the Complainant’s trademark at the time of registration of the disputed domain name. Also, the choice of additional words “chauffage” (meaning “heating” in French), “fr” (which stands for ISO 3166-1 alpha-2 two-letter country code for France), and “sales” further indicates the Respondent’s awareness of the Complainant’s DE DIETRICH trademark. Finally, the use of the disputed domain names for impersonation of the Complainant leaves no room for doubt on the Respondent’s knowledge of the Complainant and its DE DIETRICH trademark and evidences that the Respondent actually had the Complainant in mind when registering the disputed domain names.
Due to the above, the Panel finds that the disputed domain names have been registered in bad faith.
As previously indicated, the disputed domain names resolve or used to resolve to online stores purportedly offering the Complainant’s DE DIETRICH products at heavily discounted prices and using the Complainant’s logo and official product images. The Panel considers such use of the disputed domain names as evidence of bad faith indicating that the Respondent has used confusingly similar disputed domain names primarily with the intention of 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 such website, or of a product or service on such websites. Additionally, panels have held that the use of a domain name for illegitimate activity (here, claimed impersonation of the Complainant) constitutes bad faith. WIPO Overview 3.0, section 3.4.
Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain names constitutes bad faith under the Policy.
While the disputed domain names <dietrichchauffage.com> and <dedietrichfr.com> no longer resolve to active website, such inactivity does not prevent a finding of bad faith given the totality of the circumstances of the case at hand. WIPO Overview 3.0, section 3.3.
Therefore, the Panel finds that the disputed domain names have been both registered and are being used in bad faith, and consequently that the Complainant has established the third element of the Policy.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel
orders that the disputed domain names <dedietrichfr.com>, <dedietrichsales.com>, and
<dietrichchauffage.com> be transferred to the Complainant.
/Stefan Bojovic/
Stefan Bojovic
Sole Panelist
Date: August 12, 2025
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