The Complainant is LIDL Stiftung & Co. KG, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Salvador Conde, Spain.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2021. On October 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 27, 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 October 31, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center sent a Language of Proceedings communication. The Complainant filed an amendment to the Complaint on November 1, 2021, as well as a response to the Language of Proceedings communication.
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 November 2, 2021. In accordance with the Rules, paragraph 5, the due date for filing a Response was November 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2021.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on December 21, 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.
3.1 Language of Proceedings
The Complaint was filed in English. The language of the Registration Agreement of the disputed domain name is Spanish.
In accordance with paragraph 11 of the Rules, the language of the proceedings must be the language of the Registration Agreement, unless otherwise agreed by the Parties, and subject to the Panel’s decision considering the circumstances of the case.
In the Complaint, and in the Complainant’s communication dated November 1, 2021, the Complainant requested English to be the language of the proceedings. The Respondent did not reply to the Language of Proceedings communication and did not file a Response. Therefore, there is no agreement between the parties on the language of the proceedings.
However, in order to preserve the spirit of the Policy, which is to provide agile, expedite, and low-cost proceedings, and considering that the content of the website to which the disputed domain name resolves is in English, based on which it is possible to infer that the Respondent is familiarized with the English language, the Panel decides that the language of the proceedings be English.
4. Factual BackgroundThe Complainant is part of the LIDL-Group, a global discount supermarket chain based in Germany.
The Complainant operates over 10,000 stores in 29 countries with over 285,000 employees. Apart from the supermarket chain, the Complainant offers various services, like mobile phone networks, or travel services.
The Complainant owns, among others, the following trademark registrations:
Mark
Registration no.
Registration Date
Classes
Jurisdiction
LIDL
2006134
November 11, 1991
3, 5, 8, 11, 16, 18, 21, 28, 29, 30, 31, 32, 33
Germany
LIDL
30009606
March 9, 2000
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
Germany
LIDL
974355
May 9, 2008
1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 18, 20, 21, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 39, 40, 41, 42
International (WO)
LIDL
748064
July 26, 2000
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, 40, 41, 42
International (WO)
LIDL
001778679
August 22, 2002
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
European Union
LIDL
001779784
November 12, 2001
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
European Union
LIDL
013192752
February 27, 2015
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, 44
European Union
The Complainant is the owner of several domain names like
The disputed domain name was registered on August 6, 2021.
5. Parties’ Contentions A. Complainant I. Identical or Confusingly SimilarThat the disputed domain name is confusingly similar to the LIDL trademark, since it includes it entirely, plus the addition of the term “mania”, which does not prevent a finding of confusing similarity.
That the addition of the generic Top-Level Domain (“gTLD) “.com” to the disputed domain name does not affect the disputed domain name for the purpose of determining its identity or similarity with the Complainant’s trademark.
That the distinctive part of the disputed domain name is the trademark LIDL. That, therefore, Internet users expect that the website to which it resolves be affiliated with the Complainant.
II. Rights or Legitimate InterestsThat, when a Complainant presents a prima facie case, the Respondent has the burden to demonstrate that the Respondent has rights to and/or legitimate interests in the disputed domain name.
That, when a domain name consists of a trademark plus an additional term, there cannot be fair use when a respondent is effectively trying to impersonate a trademark owner or generate the appearance of a sponsorship. That, therefore, since the website to which the disputed domain name resolves displays a logo highly similar to the Complainant’s figurative trademarks, as well as links to the official domain name
That there is no indication that the Respondent is using the disputed domain name in connection with a bona fide offering of goods and services or has made demonstrable preparations to do so.
That the Respondent is not commonly known by the disputed domain name.
That the Complainant has not authorized the Respondent to use the LIDL trademark.
III. Registered and Used in Bad FaithThat the Respondent has used the disputed domain name to attract Internet users to the website to which it resolves and to create the impression that it is an official website or a site somehow authorized by the Complainant.
That panels have found that the mere registration of a domain name that is identical or confusingly similar to a well-known trademark by an unaffiliated party, constitutes in itself a presumption of bad faith.
That the Respondent has created confusion among Internet users, creating an appearance of being affiliated with the Complainant, by using a logo highly similar to that of the Complainant.
That the Respondent knew or should have known of the registration and use of the trademarks LIDL of the Complainant, prior to the registration of the disputed domain name. That the Complainant’s use of its trademarks, and its business activities in Spain, predate the date of registration of the disputed domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsThe Complainant must prove that the three elements of paragraph 4(a) of the Policy have been met:
(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 with respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
In view of the Respondent’s failure to submit a Response, the Panel may decide this proceeding on the basis of the Complainant’s undisputed factual allegations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules (see Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech,
WIPO Case No. D2006-0292 and Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk,
WIPO Case No. D2002-0487).
The Complainant has filed evidence showing that it owns registrations for the trademark LIDL in different jurisdictions, including the European Union, to which Spain belongs, where the Respondent has declared to have his domicile.
This Panel agrees with the determinations reached in Lidl Stiftung & Co. KG v. Name Redacted,
WIPO Case No. D2020-1441; Lidl Stiftung & Co. KG v. Whois Agent, Domain Protection Services, Inc. / Greatrich lasovo,
WIPO Case No. D2021-0443; and Lidl Stiftung & Co. KG v. Domain Privacy Service FBO Registrant, The Endurance International Group, Inc. / Name Redacted,
WIPO Case No. D2020-3128, that the LIDL trademark is well known.
The disputed domain name is confusingly similar to the Complainant’s trademark LIDL, as it incorporates said trademark entirely, with the addition of the term “mania”. However, the inclusion of the term “mania” does not prevent a finding of confusing similarity under the first element (see section 1.7, and 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The addition of the generic Top-Level Domain (“gTLD) “.com” to the disputed domain name constitutes a technical requirement of the Domain Name System (“DNS”). Therefore, it has no legal significance in the present case (see CARACOLITO S SAS v. Nelson Brown, OXM.CO,
WIPO Case No. D2020-0268; SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services,
WIPO Case No. D2015-0565; and Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc.,
WIPO Case No. D2014-1919).
Therefore, the first element of the Policy has been met.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in the disputed domain name:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed 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 disputed domain name, even if it did not acquire 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.
The Complainant has asserted that there is no evidence of the Respondent's use of the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent has not been commonly known by the disputed domain name. Also, the Complainant has argued that it has not authorized the Respondent to use the LIDL trademark (see Beyoncé Knowles v. Sonny Ahuja,
WIPO Case No. D2010-1431; Six Continents Hotels, Inc. v. IQ Management Corporation,
WIPO Case No. D2004-0272; and Autodesk, Inc. v. Brian Byrne, mesh IP, LLC
WIPO Case No. D2017-0191). The Respondent did not contest these allegations.
The website to which the disputed domain name resolves predominantly displays a design that is similar to that of the Complainant. This shows that the Respondent has attempted to impersonate the Complainant. In addition, the Panel notes that the composition of the disputed domain name carries a risk of implied affiliation since Internet users may think that the website to which this disputed domain name resolves is affiliated to or sponsored by the Complainant, which cannot be deemed as a bona fide offering of goods.
Thus, taking into account that the Respondent has intended to confuse Internet users into believing that the website to which the disputed domain name resolves is related to the Complainant, this Panel considers that the Respondent has attempted to impersonate the Complainant. The consensus view among panels appointed under the Policy is that the use of a domain name for illegal activity, such as impersonation, or passing off, cannot confer rights to, or legitimate interests in a domain name (see section 2.13.1 of the WIPO Overview 3.0; see also Self-Portrait IP Limited v. Franklin Kelly,
WIPO Case No. D2019-0283; Seminole Tribe of Florida, d / b / a Seminole Gaming v. Privacy Protect, LLC / Ibro King, Akara Inc,
WIPO Case No. D2018-1692; Allianz SE v. Paul Umeadi, Softcode Microsystems,
WIPO Case No. D2019-1407; SVB Financial Group v. WhoisGuard Protected, WhoisGuard, Inc. / Citizen Global Cargo,
WIPO Case No. D2018-0398; and Haas Food Equipment GmbH c. Usman ABD, Usmandel,
WIPO Case No. D2015-0285).
In light of the above, the Complainant made a prima facie case asserting that the Respondent lacks rights to or legitimate interests in the disputed domain name. The Respondent did not submit any evidence or arguments to challenge the Complainant’s assertions.
Therefore, the second element of the Policy has been fulfilled.
C. Registered and Used in Bad FaithBad faith under the Policy is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 your 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 its website or location.
As previously stated, the Complainant owns several trademark registrations for the LIDL trademark in different jurisdictions, including the European Union, to which Spain belongs, where the Respondent has declared to have his domicile.
Given the notoriety of the trademark LIDL, and the widespread use of it that the Complainant has made internationally, including through its stores in Spain, where the Respondent has claimed to be domiciled, this Panel finds that the Respondent knew the Complainant at the time of registration of the disputed domain name, which in the circumstances of this case constitutes bad faith registration under the Policy.
The fact that the Respondent registered the disputed domain name which entirely reproduces the Complainant’s well-known trademark LIDL, shows that the Respondent has targeted the Complainant, which constitutes opportunistic bad faith (see section 3.2.1 of the WIPO Overview 3.0; see also L’Oréal v. Contact Privacy Inc. Customer 0149511181 / Jerry Peter,
WIPO Case No. D2018-1937; Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot,
WIPO Case No. D2019-0980; Dream Marriage Group, Inc. v. Romantic Lines LP, Vadim Parhomchuk,
WIPO Case No. D2020-1344; and Valentino S.p.A. v. Qiu Yufeng, Li Lianye,
WIPO Case No. D2016-1747).
Previous panels appointed under the Policy have found that the mere registration by an unauthorized party of a domain name that is identical or confusingly similar to a well-known trademark, can by itself create a presumption of bad faith in itself (see section 3.1.4 of the WIPO Overview 3.0. This is so in the present case.
The facts comprised in the case file also show that the Respondent has intentionally used the disputed domain name to attract, for commercial gain, Internet users to the website to which the disputed domain name resolves, by creating the impression among Internet users that said website is related to, associated with, or endorsed by the Complainant, which conduct constitutes bad faith under paragraph 4(b)(iv) of the Policy (see section 3.1.4 of the WIPO Overview 3.0.; see also trivago GmbH v. Whois Agent, Whois Privacy Protection Service, Inc. / Alberto Lopez Fernandez, Alberto Lopez,
WIPO Case No. D2014-0365; and Jupiter Investment Management Group Limited v. N/A, Robert Johnson,
WIPO Case No. D2010-0260).
The Respondent’s attempt to impersonate the Complainant for commercial gain also constitutes bad faith under the Policy (see Philip Morris Products S.A. v. Domain Administrator, Registrant of iqosatismaganiz.com (apiname com) / Anl Girgin, Teknoloji Sarayi,
WIPO Case No. D2019-0466; Self-Portrait IP Limited v. Franklin Kelly,
WIPO Case No. D2019-0283; and Friedman and Soliman Enterprises, LLC v. Gary Selesko, M&B Relocation and Referral, LLC,
WIPO Case No. D2016-0800).
Therefore, the third element of the Policy has been met.
7. DecisionFor 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
Kiyoshi Tsuru
Sole Panelist
Date: January 4, 2022