The Complainant is Lidl Stiftung & Co. KG, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Resay Fessouy, Germany. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2021. On April 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 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 April 9, 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 April 13, 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 April 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2021. The Center appointed Christian Schalk as the sole panelist in this matter on May 17, 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. The language of the proceeding is English. 4. Factual Background The Complainant belongs to a well-known global discount supermarket chain based in Germany. The Complainant operates more than 10.000 stores in more than 29 European countries and in North America. The Complainant offers also services such as a mobile phone network or travel services. The Complainant owns several trademark registrations for the term LIDL such as, for instance, - European Union trademark No. 01779784, registration date December 11, 2001, covering a variety of goods and services; - German trademark registration No. 2006134, registration date November 11, 1991, covering various goods and services; - International trademark No. 748064, registration date July 26, .2000, covering a variety of goods and services, with extensions to various countries inside and outside of Europe; and - International trademark No. 974355, registration date May 9, 2008, covering a variety of goods and services, with extensions to various countries inside and outside of Europe. The Complainant operates several websites which are available under domain names under generic Top-Level Domains (“gTLD”) such as “com” or under country code Top-Level Domains (“ccTLD”) such as “.it”, “.es” or “.pl”. The Complainant’s trademark has been subject to several procedures under the UDRP where the Panels found in favor of the Complainant, for instance, Lidl Stiftung & Co. KG v. Whois Privacy / Wan Zhong, Wanzhongmedia, WIPO Case No. D2016-1284; Lidl Stiftung & Co. KG v. Chen Chang Jiang, WIPO Case No. 2018-0221; LIDL Stiftung & Co. KG v. Whois Agent, Whois Privacy Protection Service, Inc. / Jean-pierre CHAVE,WIPO Case No. D2018-2149 and Lidl Stiftung & Co. KG v. Name Redacted,WIPO Case No. D2020-1149. The disputed domain name is neither connected to a website nor does it redirect to third party websites. 5. Parties’ Contentions A. Complainant The Complainant alleges that the disputed domain name is confusingly similar with Complainant’s trademark rights in the term LIDL. The Complainant explains in this context that the disputed domain name consists of the Complainant’s trademark LIDL and the generic term “gutschein24”. The term “Gutschein” is a German term for “voucher”. Therefore, the Complainant concludes that the trademark LIDL is clearly recognizable within the disputed domain name and that the addition of other terms does not prevent a finding of confusing similarity. The Complainant cites in this context Lidl Stiftung & Co. KG v. SellDa GmbH,WIPO Case No. D2008-0724 to support this argument. The Complainant adds further that the term “gutschein24” suggests that the holder of the disputed domain name is economically linked to the Complainant as gift cards or vouchers relate to the Complainant’s business activities. The Complainant alleges also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant refers to section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) where it is stated that panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. The Complainant continues that on March 1 and 2, 2021, when entering the disputed domain name, Internet users were automatically redirected to different third party websites directed at German speaking Internet users where it was pretended that Internet users could allegedly win gift vouchers for the Complainant’s supermarkets with a value of 250 EUR or 500 EUR. Two of these websites were designed in a fashion that made it unclear to Internet users that the website was in fact not operated by the Complainant or an affiliated company. On all these websites, Internet users were asked to provide their contact details under the promise of receiving such gift vouchers for supermarkets in general, which would include also competitors of the Complainant. The Complainant states that such behavior cannot be regarded as noncommercial or fair use. Therefore, the Complainant believes that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or has made demonstrable preparations to do so. The Complainant explains in this context that the disputed domain name suggests an affiliation with the Complainant. Furthermore, the goodwill of the Complainant’s LIDL trademarks is being exploited to ultimately redirect Internet users to websites designed to collect contact information for third party advertising purposes. The Complainant cites in this context Michelin Recherche Et Technique S.A. v. Milen Radumilo, White & Case,WIPO Case No. D2018-1527 in order to support this argument. In addition, the Complainant argues that the Respondent is not commonly known by the terms which comprise the disputed domain name and that no permission has been granted by the Complainant to the Respondent which would have allowed him to register the disputed domain name. The Complainant believes also that the disputed domain name was registered and is being used in bad faith. According to the Complainant the Respondent knew or should have known of the registration and use of the Complainant’s LIDL trademark prior to the registration of the disputed domain name. The Complainant’s use of its trademarks and business activities as a very famous chain of supermarkets predates the registration of the disputed domain name by decades and the disputed domain name was redirected to a third party websites advertising LIDL gift vouchers. The Complainant refers further to section 3.1.4 of the WIPO Overview 3.0 where it is stated that previous UDRP panels have consistently found that 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 Complainant states that the disputed domain name is confusingly similar to the well-known trademark of the Complainant and that the descriptive term “gutschein24” further endorses an assumption or affiliation or sponsorship between the Complainant and the web offer under the disputed domain name, as Internet users will expect an offer of the Complainant for LIDL -- gift vouchers. The Complainant argues further that the fact that the disputed domain name redirects Internet users to third party websites which are operated for purposes of commercial gain is a clear indication that the Respondent is in some way benefitting from any commercial activity held under the website Internet users are redirected to. The Complainant is convinced that there is no conceivable legitimate interest for the use of the disputed domain name by the Respondent and that any commercial use would necessarily infringe Complainant’s trademarks. The Complainant states also that current passive holding of the disputed domain name does not prevent a finding of bad faith. The Complainant refers in this context to the consensus view of WIPO UDRP panels as outlined in section 3.3 of the WIPO Overview 3.0 according to which the registration of domain names corresponds to famous trademarks can be considered as bad faith registration and use in case of inactive use since the Complainant’s LIDL trademark is very distinctive, has a strong reputation, the Respondent is using a privacy service to conceal his or her identity and that the disputed domain name cannot be used in good faith since it would always suggest endorsement or sponsorship by the Complainant and divert or mislead Internet users. The Complainant argues also that since the decision Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, lack of any conceivable plausible actual or contemplated active use has been considered as bad faith evidence. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel finds that the Complainant has established trademark rights in the term LIDL and that the disputed domain name is confusingly similar to the Complainant’s trademark rights in LIDL. It has been decided by previous UDRP panels that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see, for instance, Yahoo! Inc. v. Blue Q Ltd., Romain Barissat,WIPO Case No. D2011-0702; Casa Editorial El Tiempo, S.A. v. Montanya Ltd,WIPO Case No. D2009-0103; Todito.com, S.A. de C.V. v. Francisco Gómez Ceballos,WIPO Case No. D2002-0717; Bayerische Motoren Werke AG v. bmwcar.com,WIPO Case No. D2002-0615; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA,WIPO Case No. D2002-0504; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; and EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047). The disputed domain name features the trademark LIDL in its entirety. Furthermore, in accordance with previous decisions rendered under the Policy, the addition of descriptive terms to a trademark does not prevent a finding of confusing similarity (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis*,WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan,WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims,WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0565; Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0624; and Toyota France and Toyota Motor Corporation v. Computer-Brain,WIPO Case No. D2002-0002). As set out in section 1.8 of the WIPO Overview 3.0, “[w]here 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 nature of such additional term(s) may however bear on assessment of the second and third elements”. Therefore, the addition of the terms “Gutschein” and the number “24” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. The term “Gutschein” is a German term for “voucher”. The number “24” has no distinctive character at all and suggests in this case that vouchers of LIDL are available at all times of the day. In addition, the gTLD “.club” in the disputed domain name does not affect the determination that the disputed domain name is identical or confusingly similar to the Complainant’s trademark LIDL. It is well-established that gTLDs, such as “.club”, are generally disregarded when determining if there is identity or confusing similarity (see Compagnie Générale des Etablissements Michelin v. Trendimg,WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp.,WIPO Case No. D2001-0936; and Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan,WIPO Case No. D2001-0615 and cases cited therein). For all these reasons, the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Based on the submissions and materials filed in this case, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. It is the consensus view of UDRP panels that once the complainant has made out a prima facie showing on this element, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview 3.0; Ustream.TV, Inc. v. Vertical Axis, Inc,WIPO Case No. D2008-0598; mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141; and Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). The Respondent has not provided any evidence of circumstances specified in paragraph 4(c) of the Policy or of any other circumstances showing a right to or legitimate interest in the disputed domain name. Specifically, the Panel finds no evidence that the Respondent has been or is commonly known by the disputed domain name. The Respondent is neither affiliated with the Complainant nor has a license to use its trademark. Furthermore, the Respondent has not provided the Panel with any substantial explanations as to the Respondent’s rights or legitimate interests in the disputed domain name. In addition, the fact that the word LIDL appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant, the Panel cannot see any rights or legitimate interests of the Respondent in the domain name (Telstra Corporation Limited v. Nuclear Marshmallows, supra). In this case, the composition of the Complainant’s LIDL trademark with the German term „gutschein“ and the number “24” (its translation into English means “lidl-voucher24“) suggest that any website to which the disputed domain name pretends to resolve offers vouchers for services offered by the Complainant. This creates the impression among Internet users that such a website is either one of the Complainant’s websites or of an entity somehow linked with the Complainant while this is not the case. Therefore, the Panel is convinced that the only reason for the Respondent to register the disputed domain name was, on balance, to capitalize on the Complainant’s goodwill by redirecting Internet traffic intended for the Complainant away from it. Such behaviour cannot constitute a bona fide or legitimate use of the disputed domain name (see also Bright Imperial Ltd. v. Cleiton da Silva Pardim,WIPO Case No. D2013-1548). C. Registered and Used in Bad Faith The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which evidence bad faith registration and use of a domain name: (i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is owner of the trademark or service mark 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 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 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 its website or location or of a product or service on its website or location. The Panel finds that the Respondent must have been aware of the Complainant’s trademark and its services when he registered the disputed domain name. The Complainant’s chain of supermarket cannot be overseen in a country like Germany where the Respondent apparently lives. It has a physical presence in more or less all cities of the country. Furthermore, the Complainant has a strong Internet presence and had the Respondent carried out even a basic Internet search, he would have found a number of references to the Complainant. In addition, the combination of the Complainant’s trademark LIDL with the terms “gutschein” and the number “24” in the disputed domain name is an unusual combination and allows the conclusion by the Panel that the Respondent was aware of the Complainant when registering the disputed domain name. Therefore, the Panel is convinced that the disputed domain name has been registered by the Respondent in bad faith. The Panel further finds that the disputed domain name is used in bad faith by the Respondent. Having regard to the material brought before the Panel, the disputed domain name is currently not in use. According to section 3.3 of the WIPO Overview 3.0 it is consensus view that the lack of active use of the domain name does not as such prevent a finding of bad faith and that the panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include the complainant’s well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name. The disputed domain name incorporates the Complainant’s LIDL trademark in its entirety. The Complainant owns for many years a well-known chain of supermarkets in many countries in Europe and in North America under the trademark LIDL. The Complainant offers also travel services and mobile phone services under this trademark. In addition, the LIDL trademark is a distinctive term with no meaning. The disputed domain name suggests that it resolves to websites where Internet users could download vouchers in order to get discounts when they use the Complainant’s services. This only conclusion which Internet users could draw from this behaviour is that such websites are either of the Complainant itself or by somehow affiliated companies of the Complainant while this is not the case. Therefore, the Panel cannot conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as an infringement of the Complainant’s rights under trademark law. Furthermore, the Respondent has apparently also provided inaccurate contact details when it registered the disputed domain name or failed at least to correct such false contact details. The Center has used the contact details given in the WhoIs record as provided by the Registrar when it tried to contact the Respondent. However, the courier service provider could not reach the Respondent in order to deliver the Written Notice of the Complaint. Therefore, the Panel notes that the Respondent may have given incorrect contact details to frustrate or at least to delay this proceeding (see Telstra Corporation Limited v. Nuclear Marshmallows, supra). In addition, the Respondent’s behaviour could also harm the Complainant’s business since Internet users may get frustrated when they arrive to an empty page. They could believe that this website is not correctly functioning or has been hacked. As a consequence, they may even seek for the Complainant’s competitor’s services instead or may even not visit to the Complainant’s real website and use the services offered there. The only reason for this situation is the registration of the disputed domain name by the Respondent. For all this, the Panel finds that the disputed domain name is being used in bad faith by the Respondent. 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 Christian Schalk
Sole Panelist
Date: May 25, 2021
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