The Complainant is Lidl Stiftung & Co. KG, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Name Redacted.1 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2020. On May 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 2020, 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 May 15, 2020, 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 May 19, 2020. 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 June 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 23, 2020. On June 29, 2020, the Center received an email communication from the Complainant regarding the identity of the Respondent. The Center appointed Mihaela Maravela as the sole panelist in this matter on June 26, 2020. 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. According to the information received from the Registrar, the language of the registration agreement is French and English. The Complainant submitted the Complaint in English and the Panel decides that the language of the proceeding should be the English language in accordance with paragraph 11(a) of the Rules. 4. Factual Background The Complainant belongs to the Lidl Group, a global discount supermarket chain based in Germany. The Complainant operates – mostly by independent affiliated companies – more than 10,000 stores all over Europe with almost 315,000 employees. The Complainant is the exclusive owner of registered trademarks consisting of the word “lidl” in various jurisdictions throughout the world, including the following: - the International word trademark LIDL No. 585719 registered as of December 4, 1991; According to the WhoIs information for the disputed domain name and unrebutted statements of the Complainant, the Respondent appears to have used the name and contact details of one of the Complainant’s subsidiaries to register the disputed domain name, while the Complainant asserts that its subsidiary has nothing to do with the disputed domain name. The disputed domain name was registered on April 20, 2020. At the time of filing the Complaint, the disputed domain name directed to a default website of the Registrar, and at the time of the Decision, it directs to an inactive website. 5. Parties’ Contentions A. Complainant The Complainant argues that the disputed domain name is confusingly similar to the trademark LIDL of the Complainant. The disputed domain name consists of the Complainant’s trademark LIDL and the additional term “info”. The Complainant argues that the trademark is clearly recognizable within the disputed domain name, and that the addition of other terms to the trademark does not prevent a finding of confusing similarity. The descriptive term “info” suggests that the disputed domain name holder is economically linked to the Complainant. With regard to the second element, the Complainant argues that the Respondent does not use the disputed domain name for an active website; rather, the Respondent used the disputed domain name as an email address for fraudulent emails. The Respondent sent an email to an Italian food supplier in which the Respondent claimed to be the head of purchasing of one of the Complainant’s subsidiaries and displayed the link to the official website of the Complainant. The Complainant argues that with these emails, the Respondent misleadingly created the impression that the Complainant is interested in business relations with the addressee of the emails. With these emails, the Respondent ordered various goods and the addressee of the email contacted the Complainant’s subsidiary in Italy to inquire about the authenticity of the email. The Complainant argues that such fraudulent behavior does not represent noncommercial or fair use of the disputed domain name. In addition, the Complainant argues that there is no indication that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services or that it has made demonstrable preparations to do so. No permission to use the LIDL trademark was granted by the Complainant to the Respondent. The Respondent is not in any way affiliated with the Complainant and the Respondent provided information with the Registrar falsely indicating that it is affiliated with the Complainant. In what concerns the third element, the Complainant argues that the LIDL trademark is derived from the name of a co-founder of Lidl supermarkets and has no meaning in German, French or Italian and that LIDL is an inherently distinctive trademark and of strong international reputation. The Complainant’s use of its trademarks and business activities as a famous discount supermarket chain predates the registration of the disputed domain name by decades hence the Respondent had actual knowledge of the Complainant’s trademarks when acquiring the disputed domain name. This knowledge is indicated by use of the disputed domain name as part of a phishing scheme offering false business opportunities. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant. “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 15(a) of the Rules. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed. Given the evidence put forward by the Complainant, the Panel is satisfied that the Complainant has proved its rights over the LIDL trademark. As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks in which the Complainant holds rights. According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “this test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”. Also, according to section 1.7 of the WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. Here the disputed domain name wholly incorporates the Complainant’s LIDL trademark in addition to the prefix “info” and a hyphen. The fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. The addition of an additional term (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0. It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 of the WIPO Overview 3.0. This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name: (i) before any notice to it of the dispute, the respondent’s use of, or 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; or (ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” In the present case, the Complainant has established a prima facie case that it holds rights over the trademark LIDL and claims that the Respondent has no legitimate reason to acquire and use the disputed domain name. There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Rather, according to the unrebutted evidence put forward by the Complainant, the Respondent used the disputed domain name for scamming activities and such activity cannot confer rights or legitimate interests on the Respondent. Section 2.13 of the WIPO Overview 3.0. For a similar finding, see LIDL Stiftung & Co. KG v. Whois Agent, Whois Privacy Protection Service, Inc. / Jean-pierre CHAVE,WIPO Case No. D2018-2149. By not replying to the Complainant’s contentions, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. Accordingly, the Panel gives credence to the Complainant’s assertion that no license or authorization was ever given for the use of the trademark LIDL in the disputed domain name. With the evidence on file, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the requirement of paragraph 4(a)(ii) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith. According to the unrebutted assertions of the Complainant, its LIDL trademark has been widely used in commerce well before the registration of the disputed domain name in April 2020. The disputed domain name incorporates the Complainant’s trademark and the prefix “info” and a hyphen, in addition to the relevant gTLD. Under these circumstances, the Panel considers that the Respondent has registered the disputed domain name with knowledge of the Complainant’s trademark LIDL, with an intention to create a likelihood of confusion between the disputed domain name and the Complainant and its trademark LIDL. See for a similar finding LIDL Stiftung & Co. KG v. Alessandro Ceci,WIPO Case No. D2019-0410. The Complainant argues that, shortly after the disputed domain name was registered, the Respondent used the disputed domain name for sending emails to the Complainant’s suppliers impersonating the identity of an employee of the Complainant’s subsidiary in France to misleadingly create the impression that the Complainant is interested in business relations with the addressee of the emails. The emails included the Complainant’s name, the address of its subsidiary in France and a link to the Complainant’s official website for the French market. The evidence put forward by the Complainant in this respect has not been rebutted by the Respondent. The use of a domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers and employees constitutes bad faith on the side of the Respondent (section 3.4 of the WIPO Overview 3.0). See for similar findings, e.g. Lidl Stiftung & Co. KG v. Privacy Protect, LLC (PrivacyProtect.org) / Nat Medy,WIPO Case No. D2018-0176. Also, as described under the section 4. above, the Respondent appears to have used the name and contact details of one of the Complainant’s subsidiaries to register the disputed domain name. Providing what appears to be false contact information further supports the finding of bad faith. In the Panel’s view, these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondents failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled. 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 Mihaela Maravela 1 The Respondent appears to have used the name and contact details of one of the Complainant’s subsidiaries when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See ASOS plc. v. Name Redacted,WIPO Case No. D2017-1520.
- the European Union word trademark LIDL No. 001778679 registered as of August 22, 2002;
- the European Union figurative trademark No. 001779784, registered on November 12, 2001.
Sole Panelist
Date: July 10, 2020
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