The Complainant is LIDL Stiftung & Co. KG, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama /John Winston, 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 12, 2020. On October 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 13, 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 14, 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 15, 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 October 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 6, 2020. The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on November 13, 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 is LIDL Stiftung & Co. KG and belongs to the LIDL-Group, which is a famous global discount supermarket chain that is based in Germany and operates more than 10,000 stores with over 285,000 employees in 29 countries. The Complainant is the owner of numerous LIDL trademarks, including: 1. The German word trademark LIDL No. 2006134 registered on November 11, 1991 in classes 3, 5, 8, 11, 16, 18, 21, 28, 29, 30, 31, 32 and 33; 2. The German word trademark LIDL No. 30009606 registered on March 9, 2000 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 and 42; 3. The International word trademark LIDL No. 585719 registered on December 4, 1991 in classes 1, 3, 5, 8, 11, 16, 18, 21, 28, 29, 30, 31, 32 and 33; 4. The European word trademark LIDL No. 001778679 registered on August 22, 2002 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 and 42; 5. The European figurative trademark LIDL No. 01779784 registered on November 12, 2001 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 and 42; 6. The European figurative trademark LIDL No. 013192752 registered on February 27, 2015 in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 38, 39, 40, 41, 42, 43 and 44. All rights of companies of the LIDL-Group to act under the name “Lidl” and to use the LIDL trademarks thus derive from the Complainant. Several domain names including the name “Lidl” are used worldwide to promote the Complainant’s trademarks, including: - The disputed domain name has been registered on September 6, 2020 and, at the time of the Complaint, resolved to a pay-per-click parking page. At the time of the decision, the disputed domain name resolves to an error page. 5. Parties’ Contentions A. Complainant In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below. First of all, the Complainant asserts the disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has rights, since it consists of the LIDL trademark suffixed with the descriptive French term for “sales”, “ventes”. The Complainant considers that the LIDL trademark is clearly recognizable within the disputed domain name, and that the descriptive term “ventes” rather suggests that the disputed domain name holder is economically linked to the Complainant than prevents a finding of confusing similarity. Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Respondent is not known by “lidl” or “lidl-ventes” or “ventes-lidl”, and that no permission to use the Complainant’s trademarks was granted to the Respondent by the Complainant, nor by any other company of the LIDL-Group. The Complainant also considers that the Respondent is not making a noncommercial or fair use, nor a bona fide use of the disputed domain name, since it incorporates the whole LIDL trademark and the term “ventes”, that can be directly linked to the Complainant’s activities, in order to resolve into a pay-per-click parking page leading to third party competing links. The Complainant adds that the disputed domain name has been used by the Respondent as an email address in order to send fraudulent emails to suppliers. Finally, the Complainant claims that the disputed domain name was registered and is used in bad faith. The Complainant states that the disputed domain name was used for phishing and for resolving to a pay-per-click page, which demonstrates its bad faith registration and use, adding that the Respondent obviously had actual knowledge of the LIDL trademarks when acquiring the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has right; (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 According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. First of all, the Panel finds that the Complainant has provided evidence that it has rights in the LIDL trademarks. Then, the Panel notices that the disputed domain name is composed of (i) the LIDL trademark in its entirety, to which has been added the term “ventes”, for “sales” in French, those terms being separated by a hyphen, and (ii) the generic Top-Level Domain (“gTLD”) “.com”. The applicable gTLD in a domain name is viewed as a standard registration requirement and as such is generally disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark. The Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the domain name. 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 domain name. 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 the UDRP (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)). Moreover, the Panel concurs with the opinion of several prior UDRP panels which have considered that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms, whether descriptive or meaningless, would not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview 3.0). Regarding the disputed domain name, the Panel finds that the addition of the term “ventes” to the LIDL trademark does not avoid a finding of confusing similarity. Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant’s trademarks. B. Rights or Legitimate Interests According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are: (i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. According to prior UDRP panel decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out prima facie 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 (see section 2.1 of the WIPO Overview 3.0). According to the Panel, the Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Panel finds that, at the time of the Complaint, the Respondent’s use of the disputed domain name was not in connection with a bona fide offering of goods or services, since it had been used as an email address in order to send fraudulent emails to suppliers by impersonating the Complainant or any other company of the LIDL-Group, and otherwise resolved to a pay-per-click parking page, which does not represent a bona fide offering given that it appears that the links comprised in this page competed with or capitalized on the reputation and goodwill of the Complainant’s trademark. Moreover, the Panel considers that the Respondent has not been commonly known through the disputed domain name. Finally, the Panel finds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, since no permission to use the Complainant’s trademark has been granted to the Respondent by the Complainant, and on the contrary used the disputed domain name to mislead suppliers, with an intent for commercial gain consisting of having goods delivered to its address without paying and while impersonating the Complainant or any other company of the LIDL-Group towards the supplier. However, the Respondent did not reply to the Complainant’s contentions. Therefore, the Panel considers that the Complainant has established that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and is being used in bad faith. Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith: “(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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.” According to prior UDPR decisions, particular circumstances panels may take into account in assessing whether the respondent’s registration of a domain name is in bad faith include: (i) the nature of the domain name (e.g., a typo of a widely-known mark, or a domain name incorporating the complainant’s mark plus an additional term such as a descriptive or geographic term, or one that corresponds to the complainant’s area of activity or natural zone of expansion), (ii) the chosen top-level domain (e.g., particularly where corresponding to the complainant’s area of business activity or natural zone of expansion), (iii) the content of any website to which the domain name directs, including any changes in such content and the timing thereof (see section 3.2.1 of the WIPO Overview 3.0). First of all, the Panel finds that it is established that the LIDL trademarks were registered before the registration of the disputed domain name, which wholly incorporates the widely known LIDL trademark plus the additional term “ventes”, that is connected to the Complainant’s activities. Moreover, the Panel finds that it is impossible that the Respondent did not know the LIDL trademarks at the registration stage, since the Respondent used the disputed domain name in an email address for phishing purposes, by impersonating the Complainant or any other company of the LIDL-Group, in particular by reproducing the LIDL trademarks at the bottom of the email. Doing so, the Panel finds that the Respondent intentionally attempted to obtain commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to the source of the email the Respondent sent with the address using the disputed domain name. Furthermore, the fact that the disputed domain name resolved to a pay-per-click page leading to third party competing links at the time of the complaint and now resolves to a default page at the time of this decision constitutes a current “passive holding”, that does not prevent any finding of bad faith. Finally, the Panel considers that the Respondent registered and used the disputed domain name for phishing purposes and in order to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the LILD trademarks. Consequently, in view of all the circumstances of this case, the Panel finds that the disputed domain name has been registered and is being used in bad faith according to Policy, paragraph 4(a)(iii). 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 Christiane Féral-Schuhl
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Sole Panelist
Date: November 27, 2020
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