The Complainant is Lidl Stiftung & Co. KG, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Celia Louis Sidney, 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 October 2, 2020. On October 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 5, 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 October 6, 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 October 7, 2020. In addition, the Center sent an email communication in both French and English regarding the language of the proceeding on October 6, 2020. The Complainant replied on October 7, 2020 requesting English to be the language of the proceeding and the Respondent did not submit any comments. 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 in both French and English, and the proceedings commenced on October 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2020. The Center appointed Benjamin Fontaine as the sole panelist in this matter on November 10, 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 following facts were duly detailed and evidenced by the Complainant in its Complaint: The Complainant is an entity of the German group Lidl, a famous global discount supermarket chain based in Germany. The Complainant employs nearly 280,000 employees worldwide, and owns stores in 29 countries. The reputation of the Complainant was already recognized in several UDRP decisions (see for instance LIDL Stiftung & Co. KG (LIDL International), SNC LIDL (LIDL France) contre Contact Privacy Inc., Customer 1243146337 / Nom anonymisé, WIPO Case No. D2019-0228). The trademark LIDL of the Complainant is subject to numerous registrations worldwide. The following rights have been relied upon, in particular, for the purpose of this Complainant: - European Union trademark No. 1 779 784 LIDL (word) in classes 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, 35, 36, 39, 41, 42 filed on July 27, 2000 and registered on November 12, 2001; - United Kingdom trademark No. 1 564 484 LIDL (word) in classes 3, 5, 8, 11, 16, 18, 21, 28, 29, 30, 31, 32, 33 filed on March 7, 1994 and registered on November 24, 1995. The Complainant is also the owner of a number of domain names, which are used in support of its activities. That includes domain names such as The disputed domain name The disputed domain name resolves to an inactive webpage however, it was used to send fraudulent emails. Emails were sent through the email address “…@exp-lidl.com”, in which an individual allegedly named Marcellus McKay contacted companies alleging that he was “Export-Import Director of hypermarket Lidl great britain limited (United Kingdom)” and was looking for B2B collaboration. The signature of the emails contains a logo of the Complainant and two domain names, the disputed domain name and Lidl’s official domain name. The emails also display the following: “Warning: this email is from Lidl UK ltd. The information in this email and any attachments, if any, is private and confidential and may be subject to legal privilege. If you are not the intended recipient or if you received this email in error, please destroy and delete the message. We are not responsible for any loss or damage resulting from the use of this email or attachments, and we recommend that you submit them to your virus checking procedures prior to use”. 5. Parties’ Contentions A. Complainant I. As regards the language of proceedings Even though the language of the registration agreement for the disputed domain name is French, the Complainant requests that the language of the proceeding be English. It first claims being not familiar with French, and then refers to section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) which states that proceeding in a language other than that of the registration agreement is warranted if, inter alia, evidence is presented, that the Respondent can understand the language of the Complaint and the language of the Complaint was used in prior correspondence. In this case, the Complainant argues that there is evidence that the Respondent understands English (namely the fact that it is located in Greater London, and that it sent emails in English). The Complainant’s last argument is that translating the Complaint into French would require a significant translation cost. II. As regards the substance The Complainant develops a full set of arguments supported by numerous case law and references to the WIPO Overview 3.0. These arguments can be summarized as follows: First, the Complainant claims that the addition of the specific Top-Level Domain (“TLD”) name such as “.com” as in the present case does not affect the similarity between the disputed domain name and the trademarks, before stating that the disputed domain name is confusingly similar to its LIDL trademarks as it includes them in its entirety. To support its argumentation, the Complainant relies on section 1.8 of the WIPO Overview 3.0. The Complainant further claims that the disputed domain name contains the word element “exp”, which is the abbreviation of “export”. The Complainant relies on case law where it was found that the mere addition of a non-significant element does not prevent the trademarks and the disputed domain name from being similar. Second, the Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name. It is further argued that the fact that the disputed domain contains the Complainant’s trademarks plus a descriptive term cannot constitute fair use (it relies on section 2.5.1 of WIPO Overview 3.0). Then, the Complainant indicates that the Respondent used the disputed domain name as an email address for fraudulent emails in which it pretends being the Export-import Director of Lidl Great Britain Limited. Finally, it is claimed 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 and that the Respondent is not commonly known under the name Lidl. Third, on the registration and use in bad faith, the Complainant argues that the Respondent uses the disputed domain name as part of the email address for sending scam emails offering false business opportunities. It is also argued that the use of domain names for phishing, scam or fraud falls within the scope of Policy paragraph 4(b)(iv). Besides, the disputed domain name includes the earlier LIDL trademarks. The Complainant also argued that because of its reputation, the Respondent could not ignore its existence and registered the disputed domain name on purpose. Finally, the Respondent argues that there is no conceivable legitimate interest for the use of the disputed domain name by the Respondent and that non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings I. As regards the language of proceedings The Panel is seized of a request that the language of the present proceedings be English rather than French, even though French is the language of the registration agreement of the disputed domain name. The Panel has the possibility to choose a language of the proceedings other than the language of the registration agreement as defined in paragraph 11 of the UDRP Rules if it deems it appropriate, provided that the Respondent apparently understands the language of the Complaint, or at least has had the opportunity to challenge this choice and has not done so, and that the choice of the language of the registration agreement would unfairly disadvantage the Complainant, in particular due to translation constraints (see section 4.5. WIPO Overview 3.0). In the present case, the Respondent sent emails in English and has an address in London. Besides, the Respondent has not objected to the request of the Complainant. In view of these circumstances, the Panel therefore grants the Complainant's request that the language of these proceedings be English. II. As regards the substance Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings: (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 was registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant, under the first requirement of paragraph 4(a) of the Policy, needs to establish that the disputed domain name is confusingly similar to a trademark or a service mark in which it has rights. The Complainant owns several trademark rights over the sign LIDL. The Panel finds that it is confusingly similar to the disputed domain name, as the trademark is entirely included in it and is separated from the radical “exp” by a hyphen. The meaning of the additional element “exp” might be discussed, as if the Complainant indicates that it means “export”, a previous UDRP decision found that it is a common and well-known abbreviation for “express” (Six Continents Hotels, Inc. v. Daniel Kirchhof, Unister GmbH,WIPO Case No. D2010-1960). In any case, the Complainant’s LIDL trademark is clearly recognizable within the disputed domain name and the additional term “exp” does not prevent a finding of confusing similarity under the first element (see section 1.8 of the Overview 3.0). Therefore, the Panel finds that the first element of the Policy is satisfied. B. Rights or Legitimate Interests As per the section 2.1 of the WIPO Overview 3.0., a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. In this case, the Complainant has sufficiently argued that the Respondent is not commonly known by the disputed domain name, and has not been authorized by the Complainant to register and use the disputed domain name. Further, section 2.13 of WIPO Overview 3.0 states that “use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”. In the present case, the Respondent uses an email address containing the disputed domain name to attract potential business partners of the Complainant. Accordingly and absent specific allegations of the Respondent, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interest in the disputed domain name and consequently satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith In order to prevail under the third element of paragraph 4(a) of the Policy, the Complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists a number of circumstances, which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are: (i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or (ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trademark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or (iii) [the respondent has] registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location. Regarding, first, the registration of the disputed domain name in bad faith, the Panel notes that the Respondent has specifically targeted the earlier reputed trademarks of the Complainant. The association of LIDL to the term “exp”, which can be an abbreviation of “export” or “express”, confirms this presumption. Furthermore, the evidence shows that the Respondent is using the disputed domain name in its email address to falsely inform business partners that it acts on behalf of the Complainant. This behavior includes reproducing the Complainant’s logo and official website. The Panel agrees with the Complainant that by using the disputed domain name as described, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website and other online locations, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location, which is a circumstance of registration and use in bad faith pursuant to Policy paragraph 4(b)(iv). Accordingly, the Panel finds that the third criteria element set out in paragraph 4(a) of the Policy is also satisfied. 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 Benjamin Fontaine
Sole Panelist
Date: November 19, 2020
Full & Egal Universal Law Academy