The Complainant is LIDL Stiftung & Co. KG, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Christina Grosso, FNRP, United States of America (“United States”).
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 28, 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 29, 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 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2021. The Respondent did not submit a
Response within this period. Accordingly, the Center notified the Respondent’s default on December 3, 2021.
The Center appointed Gregor Vos 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.
On January 4, 2022, the Respondent filed a Response. The Panel has decided to admit this Response for reasons explained below.
4. Factual BackgroundThe Complainant is part of the LIDL-group that operates 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 November 11, 1991;
- United States registration No. 4461179 for LIDL, registered on January 7, 2014;
- United States registration No. 4461178 for , registered on January 7, 2014;
- United States registration No. 5206745 for , registered on May 23, 2017;
- European Union Trade Mark No. 001779784 for , registered on November 12, 2001;
- European Union Trade Mark No. 013192752 for , registered on February 27, 2015;
- International registration No. 1353695 for , registered on November 18, 2016; and
- International registration No. 1541701 for LIDL, registered on January 30, 2020.
Further, it is undisputed that the Complainant is the holder of numerous domain names, inter alia:
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The Domain Name was registered on July 27, 2021, and at the time of filing the Complaint redirected to a website that depicts a supermarket and offers webinars.
5. Parties’ Contentions A. ComplainantWith reference to paragraph 4(i) of the Policy, the Complainant requests that the Domain Name is transferred to the Complainant. The Complaint is based on the following factual and legal grounds: the Domain Name is identical or confusingly similar to the Trademarks of the Complainant, the Respondent has no rights or legitimate interests in the Domain Name, and the Domain Name has been registered and is being used in bad faith.
Firstly, according to the Complainant, the Domain Name is confusingly similar to its well-known Trademarks. The Domain Name incorporates the element LIDL from the Trademarks in their entirety with the mere addition of the generic Top-Level Domain “.com”. Moreover, the Complainant states that the confusing similarity cannot be avoided by adding the descriptive term “deal”.
Secondly, according to the Complainant, the Respondent has no rights to or legitimate interests in the Domain Name. The Complainant states that the Respondent is redirecting Internet users from the Domain Name to a website where its own or third-party business activities such as a webinar are being promoted. Furthermore, the actions performed under the Domain Name do not constitute a bona fide offering of goods or services. The nature of the Domain Name and the content of the website to which the Domain Name redirects, namelya depiction of a photograph of a supermarket run by the Complainant including the Trademarks, falsely suggests affiliation with the Complainant. Also, the Respondent exploits the goodwill of Complainant’s Trademarks by redirecting Internet users to Respondent’s – or a third-party – website designed to collect contact information of consumers.
Finally, the Complainant states that the Domain Name was registered and is being used in bad faith. Referring to paragraph 3.1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Complainant states 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. The registration and use of the Domain Name in bad faith of the Respondent is further established by the use of the descriptive term “deal”, that endorses an assumption of affiliation or sponsorship. Also, the use of Complainant’s Trademarks and its business activities predate the registration date of the Domain Name, which the Respondent knew or should have known, because the Domain Name redirects to a website depicting a photograph of a supermarket operated by the Complainant.
B. RespondentThe Respondent has replied to the Complainant’s contentions, but not within the set timeframe. In its Response the Respondent states that it is not using the Domain Name with the Trademarks as a source identifier for its goods and services and does not attempt to trade off on the goodwill of the Trademarks.
Further, the Respondent states that it is making fair use of the Domain Name, without intent to misleadingly divert consumers or to tarnish the Trademarks.
Also, according to the Respondent, the Domain Name was not registered in an intentional attempt to attract for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Trademarks 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.
Finally, the Respondent states that it has removed the website used in connection with the Domain Name, consents to the remedy requested by the Complainant, and agrees to transfer the Domain Name to the Complainant.
6. Discussion and FindingsThe principles which the Panel should apply in deciding whether or not to admit supplemental filings have been considered in earlier UDRP decisions (see, e.g., The E.W. Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447 and Patriot Supply Store, Inc., d/b/a My Patriot Supply v. Domain May be for Sale, Check Afternic.Com Domain Admin, Domain Registries Foundation,WIPO Case No. D2016-1573). The principles include that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission. If further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure. The reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
In this case, the purpose of the Response was to indicate the consent to transfer the Domain Name. Accordingly, the Panel has decided to admit the Response. The Panel did not consider it necessary to give the Complainant an additional opportunity to reply to the Response because the Response did not contain any substantiated or new arguments.
In this case, the Panel has decided to proceed to a substantive decision for the reason that the Respondent has not conceded that the three elements of paragraph 4(a) of the Policy have been satisfied. On the contrary, the Respondent denies this. In the Panel’s view, the Complainant is entitled to a decision for which it has gone through the effort and expense in filing the Complaint, also noting the Complainant has not expressly agreed to accept the Respondent’s consent. See section 4.10 of the WIPO Overview 3.0.
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;
(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 registered as 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 3.0). A domain name will normally be considered confusingly similar to that mark when a domain name incorporates the entirety of a trademark.
In the present case, the Trademarks are incorporated in their entirety in and are recognizable within the Domain Name. The addition of the generic Top-Level Domain “.com” and the descriptive term “deal” does not prevent a finding of confusing similarity with the Trademarks (see sections 1.8 and 1.11 of the WIPO Overview 3.0). Following this reasoning, the Panel finds that the requirement under paragraph 4(a)(i) of the Policy has been satisfied.
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; 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 a disputed domain name. The Panel finds that the Complainant has sufficiently substantiated that none of the examples apply to the present case. The Respondent has not substantiated its statement that it is making fair use of the Domain Name and has thus failed to address the prima facie case made by the Complainant.
Furthermore, the Panel notes that the nature of the Domain Name, incorporating the Complainant’s widely-known Trademarks and a descriptive term, and content of the website resolving from the Domain Name, incorporating a depiction of a photograph of a supermarket run by the Complainant including the Trademarks, carry a risk of implied affiliation with the Complainant (see section 2.5 of the WIPO Overview 3.0).
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. Paragraph 4(a)(ii) of the Policy 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 Trademark predate the registration date of the Domain Name. In light of the well-known character of the Trademark, 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 Trademark under which the Complainant is doing business. The well-known character of the Trademark 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).
Further, the Panel finds that the Respondent lacks any rights to or legitimate interest in the Domain Name and that the Respondent is taking unfair advantage of the Domain Name by diverting Internet users to an alternative page on which a photograph of a supermarket exploited by the Complainant is depicted and webinars are offered. Therefore, the Panel finds from the present circumstances that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s Trademarks as to the source, sponsorship, affiliation or endorsement.
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 13, 2022