The Complainant is LIDL Stiftung & Co. KG, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Igor I Gritsenko, Russian Federation.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2021. On October 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 29, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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. The Complainant filed an amendment to the Complaint on November 1, 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 November 2, 2021. In accordance with the Rules, paragraph 5, the due date for 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 Gregor Vos as the sole panelist in this matter on December 20, 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 BackgroundThe Complainant is part of the LIDL-group that exploits a well-known global supermarket chain based in Germany.
The Complainant is the owner of inter alia the following national and international trademarks (hereinafter jointly referred to as the “Trademarks”):
- German registration No. 2006134 for LIDL registered on 11 November, 1991;
- German registration No. 30009606 for LIDL registered on 9 March, 2000;
- European Union registration No. 001779784 for registered on 12 November, 2001;
- European Union registration No. 001778679 for LIDL registered on 22 August, 2002;
- European Union registration No. 013192752 for registered on 27 February, 2015;
- International registration No. 748064 for LIDL registered on 26 July, 2000;
- International registration No. 974355 for LIDL registered on 9 May, 2008;
Further, it is undisputed that LIDL is the holder of numerous domain names, inter alia:
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The Domain Name was registered on August 30, 2021, and at the time of filing the Complaint resolved to an inactive website. Before the filing of the Complaint, the Domain Name resolved to a website on which a survey about the Complainant was shown.
5. Parties’ Contentions A. ComplainantWith the Complaint, the Complainant requests that the Domain Name is transferred to Complainant. The Complaint is based on the following factual and legal grounds: (i) the Domain Name is identical or confusingly similar to the Trademarks of the Complainant; and (ii) the Respondent has no rights or legitimate interests in the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith.
Firstly, according to the Complainant, the Domain Name is identical or confusingly similar to its well-known Trademarks. The Domain Name consists of the Complainant’s Trademarks with the addition of the element “-de”, which is the descriptive standard code for the representation of Germany.
Secondly, the Complainant states that the Respondent has no rights to or legitimate interests in the Domain Name. The Complainant states that, although by the time of filing the Complaint the Domain Name resolved to an inactive website, the Respondent used the Complainant’s Trademarks for commercial purposes, as shown in the evidence of the Complaint. The website to which the Domain Name used to resolve, showed a sign that was highly similar to the Complainant’s figurative trademarks and . On the redirected website, consumers were asked to fill out a survey on the Complainant’s company and were ultimately redirected to a third-party website on which they were asked to submit contact information. This does not constitute a noncommercial or fair use of the Respondent, since the website to which the Domain Name used to redirect was designed in a fashion that was meant to make Internet users believe that it was operated by the Complainant or an affiliated company. With respect to the third-party website, the Complainant states that it is operated for commercial purposes, namely thecollection of contact information for advertising purposes. Furthermore, the Respondent does not offer goods or services in a bona fide way. Moreover, the Respondent is not commonly known by the Domain Name.
Finally, the Domain Name was registered and is being used in bad faith. The conduct of the Respondent shows intentional capitalization of the fame and goodwill of Complainant’s Trademarks in order to redirect internet users to a third-party website for Respondent’s commercial gain. Also, the Complainant’s use of its Trademarks and business activities predate the registration date of the Domain Name. The Respondent had actual knowledge of Complainant’s Trademarks when registering the Domain Name, as the website was using a logo that is highly similar to the Complainant’s Trademarks. For this reason, the Respondent knew or should have known of the registration and use of Complainant’s Trademarks prior to the registration of the Domain Name. Lastly, the Complainant argues that the current inactive status does not prevent a finding of bad faith under the circumstances of this proceeding.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn view of the lack of a Response filed by the Respondent as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(f), 14(a), and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding on the basis of the Complainant’s undisputed factual presentations.
For a successful complaint, the Complainant must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
(i) the Domain Name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Due to the cumulative character of the criteria, all three elements must be fulfilled, in order for the Panel to be able to grant the remedy requested by the Complainant. The Panel will deal with each of the requirements in turn.
A. Identical or Confusingly SimilarParagraph 4(a)(i) of the Policy requires the Complainant to show that the Domain Name is (i) identical or confusingly similar to a trademark or service mark, (ii) in which the Complainant has rights.
With respect to having rights pursuant to paragraph 4(a)(i) of the Policy, it is noted that the Complainant is the owner of the Trademarks. Consequently, the Panel finds that the Complainant has proven that it has rights in the Trademarks.
With regard to the assessment of identity or confusing similarity of the Domain Name with the Trademarks, it is generally accepted that this test involves a reasoned but relatively straightforward comparison between the Complainant’s Trademarks and the Domain Name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). A domain name will normally be considered confusingly similar to a trademark when a domain name incorporates the entirety of a trademark.
In the present case, the Trademarks are incorporated in their entirety in the Domain Name. The mere addition of the generic Top-Level Domain “.website” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11). Furthermore, the Panel finds that the addition of the element “-de” must be seen as a descriptive term for the representation of the country Germany and does not prevent a finding of confusing similarity.
Accordingly, the Panel finds that the requirement under paragraph 4(a)(i) of the Policy has been fulfilled.
B. Rights or Legitimate InterestsThe second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Domain Name. The onus of proving this requirement, like each element, falls on the Complainant. Given the difficulty in proving a negative, however, it is usually sufficient for a complainant to make out a prima facie case that a respondent lacks rights or legitimate interests. If a complainant does establish a prima facie case, the burden of production shifts to the respondent (see, e.g. WIPO Overview 3.0, section 2.1; and Sanofi v. Cimpress Schweiz GmbH, WIPO Case No. D2017-0522).
Paragraph 4(c) of the Policy lists three non-limitative examples of instances in which a respondent may establish rights or legitimate interests in the disputed domain name.
The Complainant has substantiated that none of these circumstances apply in this case. By defaulting, the Respondent has failed to rebut the prima facie case established by the Complainant. Furthermore, based on the record before it, the Panel does not see an indication that any of the circumstances of paragraph 4(c) of the Policy is present.
Considering the combination of the geographic abbreviation for Germany (i.e., “DE”) with the Complainant’s mark, and noting that the Complainant is a German company, the disputed domain name carries a high risk of implied affiliation, contrary to the fact, which cannot constitute fair use. Seeing as the disputed domain name was previously used for an alleged survey site, which redirected users to third party sites, the Panel finds that the use does not amount to a bona fide offering of rights or legitimate interests. This finding is reinforced given that the disputed domain name currently fails to resolve.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. Paragraph 4(a)(ii) is thereby fulfilled.
C. Registered and Used in Bad FaithUnder paragraph 4(a)(iii) of the Policy, a complainant must show that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four non-limitative circumstances which may be considered as evidence of registration and use in bad faith of a domain name.
In the present case, the Trademarks are registered by the Complainant and have been used for many years. The Complainant’s rights to the Trademarks predate the registration date of the Domain Name. In light of the well-known character of the Trademarks, the Panel agrees with the Complainant that it is not conceivable that the Respondent chose the Domain Name without knowledge of the Complainant’s activities and its Trademarks under which the Complainant is doing business. The well-known character of the Trademarks of the Complainant has been confirmed by earlier UDRP panels (see, e.g., Lidl Stiftung & Co. KG v. Ravshan Nabiev, WIPO Case No. D2020-3108; and LIDL Stiftung & Co. KG v. Domain Administrator, Modern Empire Internet Ltd., WIPO Case No. D2018-0523).
Moreover, the prior use of the disputed domain name was for a survey in reference to the Complainant and featured logos highly similar to those of the Complainant, reinforcing the Respondent’s knowledge of the Complainant. Further, the Panel finds that the prior use illustrates the Respondent’s intent to take unfair advantage of the Complainant’s trademark by ultimately diverting Internet users to an alternative third party commercial pages upon their submission of the alleged survey.
Although the Domain Name does not currently resolve to an active website, previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding (See WIPO Overview 3.0, section 3.3). Rather, the Panel finds that the change in use further suggests the lack of good-faith explanation as for the Respondent’s initial use of the disputed domain name.
Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith and that the third element of paragraph 4(a)(iii) of the Policy is fulfilled.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name,
Gregor Vos
Sole Panelist
Date: January 12, 2022