The Complainant is Lidl Stiftung & Co. KG, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Jean Yves Moreau, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2020. On August 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 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 August 28, 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 September 2, 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 September 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2020. The Center appointed James Bridgeman SC as the sole panelist in this matter on October 8, 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. 4. Factual Background The Complainant’s group of enterprises are the proprietors of an international chain of supermarkets and the Complainant is the registered owner of a portfolio of registered trademarks used by the group including the following: - German (Deutches Patent-und Markenampt) registered trademark LIDL, registration number 2006134, registered on November 11, 1991 for goods in classes 29, 3, 5, 8, 11, 16, 18, 21, 28, 30, 31, 32, 33; - German (Deutches Patent-und Markenampt) registered trademark LIDL, registration number 30009606, registered on March 3, 2000 for goods in classes 35, 1, 2, 3, 4, 5, 7, 8, 9, 11, 13, 14, 16, 18, 21, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 36, 39, 41, 42; - International Trademark registration LIDL, registration number 585719, registered on December 4, 1991 for goods in classes 01, 03, 05, 08, 11, 16, 18, 21, 28, 29, 30, 31, 32, 33 designating AT, BG, BX, CH, CZ, ES, FR, HR, HU, IT, LI, MC, ME, MK, PL, PT, RO, RS, RU, SI, SK and SM under the Madrid Protocol; - European Union Trade Mark LIDL, registration number 001778679, registered on August 22, 2002 for goods 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, 42; and - United Kingdom registered trademark LIDL, registration number 00001564484 registered on November 24, 1995 for goods in classes 03, 05, 08, 11, 16, 18, 21, 28, 29, 30, 31, 32, 33. The Complainant has an established Internet presence with numerous websites to which country code Top-Level Domain names resolve, including the following: The disputed domain name was registered on June 17, 2020. It does not resolve to an active website but is being used as an email address to contact third parties while impersonating the Complainant. There is no information available about the Respondent except for that provided in the Complaint, the Registrar’s WhoIs, and the information provided by the Registrar in response to the Center’s enquiry for verification of the registration details of the disputed domain name in the course of this proceeding. The Respondent had availed of a privacy service to conceal his identity, which was disclosed by the Registrar in response to said verification request. 5. Parties’ Contentions A. Complainant The Complainant claims rights in the LIDL trademark acquired by its ownership of the abovementioned trademark registrations and the goodwill and reputation that it has established in the mark though use of the LIDL mark in its international supermarket business comprised of more than 10,000 stores with over 285,000 employees in 29 countries, as well as on its numerous websites described above. The Complainant submits that the disputed domain name is confusingly similar to its LIDL trademark as it consists of Complainant’s trademark prefixed with the term “b2b”. The Complainant argues that the LIDL trademark is clearly recognizable within the disputed domain name, and the incorporation of the descriptive term “b2b” which is commonly used to describe “business to business” relationships, suggests that the disputed domain name holder is economically linked to Complainant. The Complainant adds that the generic Top-Level Domain (“gTLD”) extension “.com” does not affect the issue of the identity or similarity of the disputed domain name and Complainant’s trademark, citing Magnum Piercing, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525. The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name arguing that the Respondent is not commonly known by “lidl” or “b2b-lidl” and adds that no permission to use the LIDL trademark or “lidl-b2b” was granted to Respondent by Complainant or any other company within its group. The Complainant asserts that it monitors its LIDL trademark and would be aware if there were any relevant trademark or trade name rights of third parties. The Complainant submits that the Respondent’s use of the disputed domain name does not represent a noncommercial, legitimate or fair use. In support of this assertion, the Complainant refers to a screenshot of the web location to which the disputed domain name resolved as of August 21, 2020 demonstrating that the disputed domain name resolves to an “under-construction” website of the Registrar. Referring to copy emails exhibited in an annex to the Complaint, the Complainant alleges that the Respondent has used the disputed domain name to send fraudulent emails from addresses associated with the disputed domain name, purporting to wish to set up a supplier relationship and seeking a quotation for the supply of produce. The exhibited copy emails were sent to both a German and a Belgian food supplier. The emails purport to be sent by the Purchasing Director of SAS Lidl France (a subsidiary of the Complainant). The footers of said emails display the correct name of the actual Purchasing Director of Lidl France, the correct name and address of Lidl France, a link to the official website of Lidl France, and in some cases incorporated the Complainant’s distinctive figurative trademark. The Complainant argues that the objective of these emails was to allow the Respondent to place orders for goods on account, taking advantage of the reputation and goodwill of the Complainant and its subsidiaries. The intention was to have the goods delivered to addresses where they could be received by the Respondent or his accomplices, and the consignees would not be paid. The Complainant was alerted to these emails by the German and Belgian food supplier addressees, who made enquiries of Lidl France after receiving substantial orders. The Complainant submits that such fraudulent activities obviously do not constitute a bona fide use of the disputed domain name. Referring to section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), the Complainant adds that UDRP panels established under the Policy have largely held that where a domain name consists of a trademark plus an additional term, such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. The Complainant argues that in the present case the disputed domain name incorporates the Complainant’s LIDL trademark and adds the descriptive term “b2b”, which infers a relationship with Complainant and its business partners. The Complainant adds that there is no indication that the Respondent is using the disputed domain name in connection with a bona fide offering of good or services or has made demonstrable preparations to do so and the Respondent has effectively masqueraded as a subsidiary or operating division of the Complainant’s group. The Complainant argues that such a use could never form a basis for a claim to a right or legitimate interest. The Complainant asserts that any commercial use of the disputed domain name by the Respondent would necessarily infringe Complainant’s trademarks, being registered for goods and services in a multitude of classes granting wide protection. The Complainant further submits that that there is a consensus view among UDRP panelists that once the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name the burden of production shifts to the Respondent. The Complainant submits that the disputed domain name was registered in bad faith arguing that the registrant could not have been unaware of the Complainant and its reputation when the disputed domain name was registered because LIDL is an inherently distinctive mark with strong international reputation that is derived from the name of a co-founder of the Complainant’s supermarket business and has no meaning in English, German, French, or Dutch. Referring to abovementioned exhibited copy emails the Complainant points out that the emails not only mention the name of a director of one of the Complainant’s subsidiaries but also give the physical address of this subsidiary and a link to an official website of the Complainant’s group and use the Complainant’s figurative trademark. The Complainant argues that it is inconceivable that the registrant was unaware of the Complainant and its trademark rights when the disputed domain name was registered. The Complainant alleges that the disputed domain name is being used in bad faith as it is being used for the fraudulent activity described above and argues that it is evident that the disputed domain name was designed and registered with these fraudulent actions in mind and as an exclusive purpose, i.e., the domain registration was in bad faith (see Samsung Electronics Co., Ltd. v. Albert Daniel Carter,WIPO Case No. D2010-1367). The Complainant adds that bad faith use of the disputed domain name is also demonstrated by Respondent’s passive holding of the disputed domain name, which resolves to an “under-construction” web page. In the Amendment to the Complaint, the Complainant adds that the Complainant owns trademarks in the United Kingdom, where the underlying registrant is allegedly located. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires the Complainant to establish that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has adduced clear and convincing evidence of its rights in the LIDL trademark acquired by its ownership of the abovementioned trademark registrations and the goodwill that it has established in the mark though its use in its international supermarket business. The disputed domain name consists of the Complainant’s LIDL trademark in its entirety, a hyphen, the characters “b2b” and the gTLD “.com” extension. The LIDL mark is the initial, dominant and only distinctive element, clearly recognizable within the disputed domain name. The characters “b2b” are commonly recognized as the acronym, standing for “business to business” relationships. Neither the term “b2b” nor the hyphen prevent a finding that the disputed domain name is confusingly similar to the Complainant’s LIDL mark. In the circumstances of this case, the gTLD extension “.com” does not affect the issue of the identity or similarity of the disputed domain name and Complainant’s trademark, as it would be taken as a technical requisite for a domain name. This Panel finds therefore that the disputed domain name is confusingly similar to the LIDL trademark in which the Complainant has rights. The Complainant has therefore satisfied the first element of the test in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name alleging: - that the Respondent is not commonly known by the name “lidl” or “b2b-lidl”; - that no permission to use the LIDL mark or “lidl-b2b” was granted to Respondent by Complainant or any other company within its group; - that the screenshot of the web location to which the disputed domain name resolved as of August 21, 2020 shows that the disputed domain name resolves shows that it is inactive resolving only to an “under-construction” webpage hosted by the Registrar; - that the copy emails exhibited as an annex to the Complaint, prove that the Respondent uses the disputed domain name to send fraudulent emails to mislead third parties for fraudulent purposes and such fraudulent activities obviously do not constitute a bona fide use of the disputed domain name; - that the composition of the disputed domain name that consists of Complainant’s trademark in combination with the descriptive term “b2b” effectively suggests sponsorship or endorsement by the Complainant as the trademark owner; - that there is no indication that the Respondent is using the disputed domain name in connection with any bona fide offering of good or services or has made demonstrable preparations to do so; - that the Respondent has effectively masqueraded as a subsidiary or operating division of the Complainant’s group, which could never form a basis for a claim to a right or legitimate interest; and - that any commercial use of the disputed domain name by the Respondent would necessarily infringe Complainant’s trademarks, being registered for a multitude of classes. As the Complainant has rightly argued, there is a consensus view among UDRP panelists that once the Complainant makes out a prima facie case the burden of production shifts to the Respondent to prove his rights or legitimate interests in the disputed domain name. The Respondent has not filed any Response or engaged with this UDRP procedure in any way, and therefore has failed to discharge the burden of production. This Panel must therefore find that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore succeeded in the second element of the test in paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Having reviewed the evidence, this Panel is convinced that the registrant of the disputed domain name must have been aware of the Complainant, its LIDL mark, and its international reputation when the disputed domain name was chosen and registered. LIDL is a distinctive mark derived from the name of a co-founder of the Complainant and has no meaning in English, German, French, or Dutch. The evidence also shows that on the balance of probabilities the disputed domain name is being used to take advantage of the Complainant’s name and reputation and, in particular, to impersonate a French member of the Complainant’s group of enterprises. The fraudulent emails exhibited with the Complainant were sent from the email addresses associated with the disputed domain name. The uncontested evidence shows that on the balance of probabilities the Respondent usurped the identity of a director of the Complainant’s French subsidiary and used the physical address of this subsidiary in an endeavor to mislead and defraud third party suppliers. The Respondent has not used the disputed domain name to establish an active website and the disputed domain name resolves to a web page that is stated to be “under construction”. In the circumstances of this case, causing the disputed domain name to resolve to this inactive web location, while using the disputed domain name for the purposes of fraudulent emails amounts to use of the disputed domain name in bad faith. This Panel finds therefore that the disputed domain name was registered and is being used in bad faith and the Complainant has therefore succeeded in the third and final element of the test in paragraph 4(a)(iii) 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 name James Bridgeman SC
Sole Panelist
Date: October 16, 2020
Full & Egal Universal Law Academy