The Complainant is Lidl Stiftung & Co. KG, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Whois Agent, Domain Protection Services, Inc., United States of America (“USA”) / Greatrich lasovo, Thailand. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2021. On February 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 16, 2021, 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 March 1, 2021, 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 March 4, 2021. 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 March 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2021. The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on April 27, 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 German-based discount supermarket chain with more than 10,000 stores in 29 countries. It is the owner of the following, amongst others, trademark registrations (Annex 5 to the Complaint and the amendment to the Complaint): - German trademark registration No. 2006134 for the word mark LIDL, registered on November 11, 1991, and subsequently renewed, in classes 3, 5, 8, 11, 16, 18, 21, 28, 29, 30, 31, 32, and 33; - International trademark registration No. 585719 for the word mark LIDL, registered on December 4, 1991, and subsequently renewed, in International classes 1, 3, 5, 8, 11, 16, 18, 21, 28, 29, 30, 31, 32, and 33; - European Union trademark registration No. 001778679 for the word mark LIDL, filed on July 27, 2000, registered on August 22, 2002, and subsequently renewed, in International 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; - International trademark registration No. 1374972 for the word mark LIDL, registered on April 19, 2017, in International classes 1 through 36, and 38 through 44; and - International trademark registration No. 1372074 for the word and device mark LIDL, registered on April 19, 2017, in International classes 1 through 36, and 38 through 44. The disputed domain name The Complainant asserts to be a famous global discount supermarket chain based in Germany, operating more than 10,000 stores in 29 countries, including France where it operates around 1,500 stores, under the LIDL trademark which derives from the name of a co-founder. According to the Complainant, LIDL is an inherently distinctive trademark with no meaning in French, English, or German languages, having the Complainant accrued strong international reputation, already recognized by past panels such as LIDL Stiftung & Co. KG v. Alessandro Ceci,WIPO Case No. D2019-0410; Lidl Stiftung & Co. KG v. Contact Privacy Inc. Customer 1245982556 / lidl France,WIPO Case No. D2020-1095, Lidl Stiftung & Co. KG v. Name Redacted,WIPO Case No. D2020-1441. In the Complainant’s view, the disputed domain name reproduces the Complainant’s well-known trademark with the descriptive prefix “foireauxvins” which translates to “wine market” or “wine fair” and which does not prevent a finding of confusing similarity with the Complainant’s trademark. In addition to that, the Complainant points out that the likelihood of confusion is enhanced due to the fact that LIDL France has offered special wine deals under the description “Foire aux vins Lidl” at “www.lidl-vins.fr/foire-aux-vins-lidl”. Moreover, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name given that: (i) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services nor has made demonstrable preparations to do so, given that the webpage that resolves from the disputed domain name consists of a WordPress page template with no genuine substantive content in Thai and English languages; (ii) the Respondent is not making a noncommercial or fair use of the disputed domain name given that the website is currently used as to give an air of false legitimacy, in an attempt to create an impression that the Respondent is somewhat linked with the Complainant; (iii) the Respondent has not been commonly known by the disputed domain name; and (iv) no permission to use “lidl” or “foireauxvins-lidl” has been granted by the Complainant or any other company of the Complainant’s group to the Respondent. As to the registration of the disputed domain name in bad faith the Complainant argues that Panels have consistently found that the 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 pursuant to paragraph 4(b)(iv), having the Respondent specifically targeted the Complainant given the addition of the “foire aux vins” expression which further endorses an assumption of affiliation or sponsorship between the Complainant and the Respondent, enhancing the likelihood of confusion amongst Internet users. The Complainant further contends that the use being made of the disputed domain name in connection with a webpage with no genuine substantive content can be regarded as passive holding (Instagram, LLC v. Masaki Shishino,WIPO Case No. D2019-2096 and Confédération Nationale du Crédit Mutuel v. Malo Corentine,WIPO Case No. D2018-1844), being the Respondent’s bad faith inferred since (i) the Complainant’s trademark is very distinctive and of strong reputation; (ii) the Respondent has taken steps to conceal its identity through a privacy service; (iii) the disputed domain name could not be put to good use since it would always suggest an endorsement or sponsorship by the Complainant; and (iv) being it inconceivable for a plausible actual or contemplated active use of the disputed domain name by the Respondent. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant: (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. The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name. In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar The Complainant has established its rights in the registered LIDL trademark. The Panel finds that the disputed domain name reproduces the Complainant’s trademark in its entirety with the addition of “foireauxvins-lidl” and is therefore confusingly similar to it. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7). The first element of the Policy has therefore been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent’s rights to or legitimate interests in a disputed domain name. These circumstances are: (i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed 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 disputed domain name, in spite of not having acquired trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent. In that sense, the Complainant indeed states that no permission to use “lidl” or “foireauxvins-lidl” has been granted by the Complainant or any other company of the Complainant’s group to the Respondent. Also, the lack of evidence as to whether the Respondent is commonly known by the disputed domain name or the absence of any trademarks registered by the Respondent corresponding to the disputed domain name, corroborates with the indication of the absence of a right or legitimate interest in the disputed domain name. Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. The second element of the Policy has therefore been established. C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of: (i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant who is the owner of a trademark relating to the disputed domain name 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 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 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 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. The registration and use of the disputed domain name in bad faith can be found in the present case in view of the following circumstances: (i) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name; (ii) the well-known status of the Complainant’s trademark and the nature of the disputed domain name (reproducing the entirety of the Complainant’s trademark in connection with an expression used by the Complainant’s subsidiary in France – indeed, the addition of the expression “foire aux vins” which is used by the Complainant’s subsidiary in France at “www.lidl-vins.fr/foire-aux-vins-lidl” affirms a finding of targeting of the disputed domain name with respect to the Complainant’s LIDL trademark) suggests rather a clear indication of the Respondent’s registration and holding of the disputed domain name in bad faith, with the implausibility of any good faith use to which the disputed domain name may be put; and (iii) the use of a false address in the WhoIs data and, consequently, the Center not being able to have communications fully delivered to it. For the reasons as those stated above, the Panel finds that the disputed domain name was registered and is being used in bad faith pursuant to paragraph 4(b)(i) of the Policy. The third element of the Policy has therefore been established. 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 Wilson Pinheiro Jabur
Sole Panelist
Date: May 11, 2021
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