The Complainant is Lidl Stiftung & Co. KG, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Domain Privacy Service FBO Registrant, The Endurance International Group, Inc. United States of America / Name Redacted, France. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2020. On November 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 23, 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 November 25, 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 November 30, 2020. The Center verified that the Complaint together with the amended 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 December 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2020. On December 7, 2020, a third party contacted the Center regarding the claimed unauthorized use of its identity and contact details in relation to the disputed domain name. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 24, 2020. The Center appointed Taras Kyslyy as the sole panelist in this matter on January 25, 2021. 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 a global discount supermarket chain based in Germany with over 10,000 stores in 29 countries and over 285,000 employees onboard. The Complainant owns numerous trademark registrations for LIDL, including for instance international registration no. 585719, registered on December 4, 1991, also designating France. The disputed domain name was registered on August 24, 2020 and resolved to a website depicting logo “CEA” and contact address in France. At the time of the Decision the disputed domain name resolves to a website with pay-per-click links. 5. Parties’ Contentions A. Complainant The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The generic Top-Level Domain (“gTLD”) “.org” does not affect the disputed domain name for the purpose of determining the confusing similarity. The disputed domain name consists of the Complainant’s trademark. Addition of the geographical term “France” does not prevent a finding of confusing similarity. The Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name consists of the Complainant’s trademark plus additional term, and such composition cannot constitute fair use. The disputed domain name was used as an email address for fraudulent emails. There is no indication that the Respondent is using the disputed domain name in connection with bona fide offering of goods or services or has made demonstrable preparations to do so. The Respondent is not commonly known by the disputed domain name. The disputed domain name was registered and is being used in bad faith. The Respondent uses the disputed domain name as a part of an email address for sending fraudulent emails. The disputed domain name was designed and registered with the fraudulent actions in mind. The Respondent registered another trademark-abusive domain name related to the disputed domain name, which confirms its pattern of a bad faith conduct. The Respondent knew or should have known of the Complainant’s trademark when registering the disputed domain name. There is no conceivable legitimate interest for the use of the disputed domain name by the Respondent. Underlying registrant is trying to disguise his real identity (privacy service, most likely providing contact information of unrelated third party). B. Respondent The Respondent did not reply to the Complainant’s contentions. However, the Center has received an email on December 7, 2020, from a third-party indicating a potential identity theft situation. 6. Discussion and Findings A. Identical or Confusingly Similar According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) the applicable gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element of the confusing similarity test. Thus, the Panel disregards the gTLD “.org” for the purposes of the confusing similarity test. According to section 1.7 of the WIPO Overview 3.0, in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that the disputed domain name incorporates the Complainant’s trademark in its entirety. According to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The Panel finds that addition of geographical term “France” does not prevent finding the confusing similarity in the present case. Considering the above the Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name. Furthermore, the Respondent provided no evidence that it holds rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interests (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642). The Complainant did not license or otherwise agree for use of its registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPOCase No. D2014-1875). According to section 2.13.1 of the WIPO Overview 3.0 UDRP panels have categorically held that the 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. According to section 2.13.2 of the WIPO Overview 3.0 panels are generally not prepared however to accept merely conclusory or wholly unsupported allegations of illegal activity, including counterfeiting, even when the respondent is in default. On the other hand, panels have found that circumstantial evidence can support a complainant’s otherwise credible claim of illegal respondent activity. In the present case, the Panel finds that the provided customer’s complain addressed to the Complainant due to fraudulent email using email address associated with the disputed domain name prove this was used for illegal activity and thus cannot confer rights or legitimate interests on the Respondent. The disputed domain name incorporates the LIDL trademark of the Complainant in its entirety and it is its distinctive element. Since LIDL is a well-known trademark, and the disputed domain name was used as a part of email address to send fraudulent emails pretending to be the Complainant, the Panel finds that the Respondent must have been aware of the LIDL trademark when it registered the disputed domain name, and that it chose to target the LIDL trademark. In the Panel’s view, such conduct cannot be regarded as giving rise to rights or legitimate interests on the part of the Respondent to register and use the disputed domain name (see, e.g., LEGO Juris A/S v. Andrei Novakovich,WIPO Case No. D2016-1513). According to section 2.9 of the WIPO Overview 3.0 the use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. The Panel finds this applies to the present case. Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith At the time of the registration of the disputed domain name the Respondent knew, or at least should have known about the existence of the Complainant’s priory registered and known trademark, which confirms the bad faith (see, e.g. The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113). According to section 3.1.4 of the WIPO Overview 3.0 the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark both in Germany and France. Thus, the Panel finds that the disputed domain name confusingly similar to the Complainant’s famous trademark was registered in bad faith. According to section 3.4 of the WIPO Overview 3.0 UDRP panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. The Panel finds that in the present case use of the disputed domain name to send deceptive email constitutes bad faith. According to section 4.4.6 of the WIPO Overview 3.0 particularly noting UDRP paragraph 8(a), panels have found that where a “disclosed” registrant is in turn what appears to be yet another privacy or proxy service (sometimes referred to as a “Russian doll” scenario) or prima facie appears to be a false identity, such multi‑layered obfuscation or possible cyberflight may support an inference of a respondent’s bad faith, e.g., in an attempt to shield illegitimate conduct from a UDRP proceeding. The Panel finds that in the present case usage of the proxy service and further disclosed false identity of the registrant confirm the Respondent’s bad faith. The Respondent ignored its possibility to comment on the contrary and provide any good explanations to prove its good faith while registering and using the disputed domain name. Considering the above the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under 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 Taras Kyslyy 1 On the basis of the case file presented to the Panel, it seems that the Respondent is not the true holder and registrant of the disputed domain name. In light of a potential identity theft, the Panel, therefore, 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 registrant according to the Registrar’s WhoIs database. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding and has indicated that Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case.
Sole Panelist
Date: February 5, 2021
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