Complainant is Lidl Stiftung & Co. KG, Germany, represented by HK2 Rechtsanwälte, Germany.
Respondent is Zhichao Yang, China. 2. The Domain Names and Registrars
The first disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2020. On September 10, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On September 10, 2020, September 11, 2020, and September 16, 2020, respectively, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the Domain Names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 17, 2020 providing the registrant and contact information disclosed by the Registrars, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint in English on September 18, 2020. On September 17, 2020, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On September 18, 2020, Complainant confirmed its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding. 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 Respondent in English and Chinese of the Complaint, and the proceedings commenced on September 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 14, 2020. The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on November 4, 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 Complainant is part of the Lidl-Group, a global discount supermarket chain based in Germany. The name “Lidl” is derived from the name of a co-founder of the Lidl supermarkets. Complainant operates more than 10,000 stores with over 285,000 employees in 29 countries with 3,200 stores in Germany alone. Complainant also offers additional services, such as travel services, and mobile telephone services. Complainant owns numerous national and international trademark registrations with the LIDL mark, including: - German Trademark Registration Number 2006134 registered on November 11, 1991; Complainant also owns and operates numerous domain names, including: - All three Domain Names are under common control of Respondent. Domain Name 1 Complainant contends that (i) each of the Domain Names is confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Names; and (iii) Respondent registered and is using each of the Domain Names in bad faith. In particular, Complainant contends that it has trademark registrations for the LIDL marks and owns many domain names incorporating the LIDL mark. Complainant contends that Respondent registered and is using the Domain Names, which incorporate Complainant’s LIDL mark in its entirety, with: - an added dictionary term, “careers-” in Domain Name 1 to confuse Internet users looking for bona fide and well-known LIDL products and services. Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s mark, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Names. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Names, when Respondent clearly knew of Complainant’s rights. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Procedural Issue – Language of the Proceeding The Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. Complainant submits in its communication to the Center on September 18, 2020 and in the Complaint that the language of the proceeding should be English. Complainant indicates that the registration agreements of two of the Domain Names are in English and only the registration agreement for Domain Name 2 Complainant contends that the Domain Names were registered in characters using the Roman alphabet, that the generic Top-Level Domain (“gTLD”) “.com” was chosen, that the addressees of “.com” domain names are located everywhere around the world and they generally speak and understand English. Complainant also contends that it does not understand nor speak Chinese, that the translation of all case relevant documents would unfairly disadvantage Complainant, and that it would be too cost-intensive and the proceeding would be unnecessarily delayed if the proceedings were to be held in Chinese. In exercising its discretion to use a language other than that of the outstanding subject registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs. The Panel accepts Complainant’s submissions regarding the language of the proceeding. The Panel notes that in any case, all of the communications from the Center to the Parties were transmitted in both Chinese and English. Respondent chose not to respond to the Complaint or comment on the language of the proceeding. The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and cost-effective manner. Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding. 6.2. Substantive Issues Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the LIDL marks, which have been registered since at least as early as 1991, well before Respondent registered the Domain Names in 2020 as noted above. Complainant has also submitted evidence, which supports that LIDL is a widely known trademark and a distinctive identifier of Complainant’s products. Complainant has therefore proven that it has the requisite rights in the mark LIDL. With Complainant’s rights in the LIDL marks established, the remaining question under the first element of the Policy is whether the Domain Names, typically disregarding the gTLD in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. Here, the Domain Names are confusingly similar to Complainant’s LIDL trademark. This mark, which is fanciful and inherently distinctive, is completely incorporated in the Domain Names. The voluntary addition of - an added dictionary term, “careers-” in Domain Name 1 in relation to the LIDL mark in each of the respective the Domain Names, does not prevent a finding of confusing similarity between Complainant’s trademarks and the Domain Names registered by Respondent. Thus, the Panel finds that Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the LIDL marks, and does not have any rights or legitimate interests in the Domain Names. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the LIDL trademarks or to seek registration of any domain name incorporating the trademarks. In addition, Respondent has not used the Domain Names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that each of the Domain Names resolves to a website displaying with links to third party websites, which Complainant contends, may enable Respondent to generate revenue through pay-per-click advertising. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Names. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration,WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by any of the Domain Names. Further, the nature of each of the Domain Names carries a risk of implied affiliation with Complainant (see WIPO Overview 3.0, section 2.5.1). Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in each of the Domain Names. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Names. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Names and Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Names in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” The Panel finds that Complainant provided ample evidence to show that registration and use of the LIDL marks long predate the registration of the Domain Names by Respondent. Complainant is also well established and known worldwide, including China, where Respondent resides. Therefore, Respondent was likely aware of the LIDL marks when he registered the Domain Names, or knew or should have known that each of the Domain Names was identical or confusingly similar to Complainant’s mark. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Under the circumstances, Respondent’s registration of each of the Domain Names incorporating Complainant’s widely-known LIDL trademark in its entirety with one or more additional terms as noted above, suggests that Respondent registered the Domain Names with actual knowledge of Complainant’s rights in the LIDL mark, in an effort to opportunistically capitalize on the registration and use of the Domain Names. The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks. As discussed above, each of the Domain Names resolves to a website displaying links to third party websites. Therefore, the Panel finds that by using each of the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website. In addition to the circumstances referred to above, Respondent’s failure to file a response is further indicative of Respondent’s bad faith. Accordingly, the Panel finds that Respondent has registered and used the Domain Names in bad faith and Complainant succeeds under the third element of paragraph 4(a) 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 Domain names, Kimberley Chen Nobles
- German Trademark Registration Number 30009606, registered on March 9, 2000;
- International Trademark Registration Number 974355, registered on May 9, 2008;
- European Union Trade Mark Registration Number 001778679, registered on August 22, 2002;
- European Union Trade Mark Registration Number 001779784, registered on November 12, 2001;
- German Trademark Registration Number 302014074047, registered on June 12, 2015.
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- an added character “e” and a dictionary term “career” in Domain Name 2
- two added dictionary terms “my” and “careers” in Domain Name 3
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names were registered and are being used in bad faith.
- an added character “e” and a dictionary term “career” in Domain Name 2
- two added dictionary terms “my” and “careers” in Domain Name 3
Sole Panelist
Date: November 18, 2020
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