The Complainant is Lidl Stiftung & Co. KG of Neckarsulm, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Privacy Protect, LLC (PrivacyP) of Burlington, Massachusetts, United States of America (“US”) / Nat Medy of London, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Hostinger, UAB (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2018. On January 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name(s). On January 30, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 31, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 31, 2018.
The Center verified that the Complaint together with the amendment to the 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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 22, 2018.
The Center appointed Charles Gielen as the sole panelist in this matter on March 5, 2018. 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 owns worldwide numerous trademark registrations for LIDL, such as European Trade Mark No. 001778679 registered on August 22, 2002, for goods and services in classes 01, 02, 03, 04, 05, 07, 08, 09, 11, 13, 14, 16, 18, 21, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 39, 41 and 42. Furthermore, the Complainant holds numerous domain names incorporating the trademark LIDL, such as: , , , and .
The disputed domain name was created on January 19, 2018 and does not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant contends it belongs to the LIDL-Group, a global discount supermarket chain based in Germany, operating – mostly by independent affiliated companies – more than 10.000 stores all over Europe and the US with ca. 315.000 employees. Currently the stores operated by the Complainant can be found in 28 countries. The Complainant also offers various additional services, e.g. a mobile phone network and travel services.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark, since the disputed domain name reproduces the trademark LIDL in its entirety followed by the term “grupp”, which is a typographical error of the German word “Gruppe” (in English: “group”). “lidl” is the distinctive part of the disputed domain name. According to the Complainant, the disputed domain name relates to the Complainant’s trademark and corporate structure, insinuating that the disputed domain name belongs to an entity of the LIDL-Group. Therefore Internet users will expect a website of the Complainant under the disputed domain name.
Furthermore, the Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant gives the following reasons for this. First of all there is no noncommercial or fair use of the disputed domain name, which does not resolve to a website, but originally redirected to being a domain name of the Complainant. The disputed domain name is being used in the email address “info@” from which misleading emails are being sent. Furthermore, there is no actual bona fide offering of goods or services under the disputed domain name and there is no indication of the Respondent’s demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Finally, the Respondent is not commonly known by “lidl” or “lidlgrupp”. There is no sign that another person or entity of this name is in whatever way permitted to use the Complainant’s trademark.
Finally, the Complainant argues that the Respondent registered and is using the disputed domain name in bad faith. Among others, the following reasons are given. The Respondent uses the disputed domain name as part of the email address “info@”. From this email address the Respondent sends fraudulent emails to third parties in which he is impersonating an employee, who is responsible for human resources within the Schwarz-Group which the Complainant belongs to. With these emails the Respondent misleadingly creates the impression, that the LIDL-Group is interested in business relations with the addressee of the email (which uses the text: “We wish you hear from you very soon in the aims to start business together”).
The Complainant assumes that the Respondent either wants to illegally solicit money or personal data from the addresses in the end. By incorporating the disputed domain name into the email-address to commit fraudulent actions impersonating a representative of the Complainant, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location, or of a product or service on the Respondent’s website or location. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel is of the opinion that the Complainant’s contentions are reasoned and that the disputed domain name should be transferred to the Complainant pursuant to the Policy. A. Identical or Confusingly Similar
The Complainant proves that it has rights in the trademark LIDL based on numerous trademark registrations. The term “lidl” in the disputed domain name is identical to this trademark. The fact that the disputed domain name contains the term “grupp” does not alter the conclusion that the disputed domain name is confusingly similar to the trademark LIDL. The main reason is that the term “grupp” clearly refers to the generic notion in the German language “Gruppe”. In the disputed domain name the emphasis therefore lies on the first word, which is “lidl” and which is identical to the trademark of the Complainant. The added suffix “.com” does not change the finding that the disputed domain name is confusingly similar, since the suffix “.com” is understood to be a technical requirement. In making the comparison between the trademark and the disputed domain name, the generic Top-Level Domain (“gTLD”) “.com” is disregarded. The Panel is of the opinion that applying these principles to this case, the disputed domain name is confusingly similar to the trademark.
Therefore, the requirement under paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests
The Panel is of the opinion that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The first reason is that the Complainant’s trademark is not a term one would choose as a domain name without having specific reasons to choose such a term and this word certainly is not a descriptive term serving to indicate specific characteristics of any goods or services. Furthermore, the disputed domain name was registered long after the Complainant started to use the trademark LIDL. The Panel is convinced that the term “lidl” in the disputed domain name has no other meaning except to refer to the Complainant and its businesses, which is proven by the fact that the disputed domain name originally redirected to the website of the Complainant and also by the fact that the Respondent uses the email address “info@” for sending emails in which the name of a person working for the group to which the Complainant belongs, is used. In view of the international fame of the trademark LIDL, the Respondent must have been aware of the prior existence of this trademark. Finally, the Respondent has not come forward claiming any rights or legitimate interests and the Panel does not find so in the present record.
In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith
The Panel is of the opinion that the disputed domain name was registered and is being used in bad faith.
The main reasons for this conclusion are as follows. The trademark LIDL enjoys international fame and consists of a coined term. The intention of the Respondent is to mislead consumers in believing that the disputed domain name is in one way or the other connected to the Complainant and its business. This intention also follows from the fact that the Respondent uses the disputed domain name to send emails impersonating a person working for the group to which the Complainant belongs in order to solicit business. The Panel is of the opinion that registration and use of a domain name in connection with such activities constitutes bad faith under the Policy.
The Panel therefore considers the requirement of paragraph 4(a)(iii) of the Policy to be met. 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 name be transferred to the Complainant.
Charles Gielen
Sole Panelist
Date: March 19, 2018
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