The Complainant is Lidl Stiftung & Co. KG of Neckarsulm, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Carmelaa Dhino of Brasov, Romania. 2. The Domain Names, Registry and Registrar
The Registry of the disputed domain names and is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain names is TLD Registrar Solutions Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2018. On April 25, 2018, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain names. On May 2, 2018, the Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the registrant contact details.
The Center verified that the Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 3, 2018. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was June 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2018.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on June 28, 2018. 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 ADR Rules, Paragraph B(5). 4. Factual Background
The Complainant, Lidl Stiftung & Co. KG, is a part of the Lidl Group – global discount supermarket chain operating in 28 countries of the world and more than 10,000 stores in Europe and in the United States of America.
The Complainant is the worldwide owner of numerous LIDL trademarks including (but not limited to):
- German trademark LIDL (word) No. 300096062, registered on March 9, 2000, duly renewed
- German trademark LIDL (word) No. 2006134, registered on November 11, 1991, duly renewed
- European Union Trade Mark LIDL (word) No. 001778679, registered on August 22, 2002, duly renewed
- European Union Trade Mark LIDL (word) No. 006460562, registered October 15, 2008, duly renewed
The Complainant is also the owner of numerous domain names incorporating its LIDL trademark both within generic Top-Level Domains (“gTLD”) and country code Top-Level Domains (“ccTLD”): , , , , and many other domain names.
The disputed domain names and were registered on April 18, 2018 and April 17, 2018, respectively. By the time of filing the Complaint and issuing this Decision, the disputed domain names are not used in connection with active websites and resolve to error pages.
The disputed domain name used to redirect Internet users via ad servers to different websites offering, inter alia, dating services, fraudulent raffles for vouchers for Complainant’s competitors and fraudulent raffles for mobile phones. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) the disputed domain names are identical or confusingly similar to the Complainant’s LIDL trademarks recognized by German and Community Law.
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered or are being used in bad faith.
The Complainant argues that the disputed domain names are confusingly similar to the Complainant’s trademarks since it consists of a misspelling of LIDL trademark. In particular, the letter “i” in LIDL has been changed with the accented letters “ì” and “í”.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent does not have business or legal relationships with the Complainant, nor does the Respondent have any authorization from the Complainant to register the disputed domain names or any domain name corresponding to the LIDL trademarks.
The Complainant further argues that the disputed domain names were registered or are being used in bad faith. It argues that the disputed domain names were intentionally used to attract Internet users, for commercial gain, to the Respondent, by creating a likelihood of confusion with Complainant’s trademark and the disputed domain names. In addition, the Complainant further argues that the Respondent used the domain name to offer fraudulent raffles for vouchers of the Complainant’s competitors via third party websites. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under Article 21(1) of Regulation (EC) No. 874/2004 and Paragraph B(11)(d)(1) of the ADR Rules, in order for the Complaint to succeed, it is for Complainant to establish:
(i) that the disputed domain names are identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or Community law and; either
(ii) that the disputed domain names have been registered by Respondent without rights or legitimate interest in the name; or
(iii) that the disputed domain names have been registered or is being used in bad faith.
Furthermore Article 22(10) of Regulation (EC) No. 874/2004 provides that “[f]ailure of any of the parties involved in an ADR procedure to respond within the given deadlines or appear to a panel hearing may be considered as grounds to accept the claims of the counterparty.” A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or Community law
The Complainant has submitted the evidence of its rights for the LIDL sign in the form of registered trademarks right in Germany and in the European Union.
The disputed domain names and are a deliberate misspelling of Complainant’s LIDL trademark and must be considered confusingly similar to the Complainant’s trademark. More specifically, the disputed domain names differ from the Complainant’s trademarks as follows:
– the “i” is replaced with an “ì”
– the “i" is replaced with an “í”
This conduct, commonly referred to as typosquatting, is insufficient to avoid a finding of identity and/or confusing similarity under Article 21(1) of the Regulation (EC) No. 874/2004 and Paragraph B(11)(d)(1)(i) of the ADR Rules.
Furthermore, the Panel considers that the applicable ccTLD in a domain name such as is viewed as a standard registration requirement and, as such, is disregarded under the confusing similarity test (See Samuel Hubbard Shoe Company LLC and Werner Wyrsch v. Cyrus Jennings,WIPO Case No. DEU2018-0007).
The Panel therefore finds that the Complainant has established the first element of Paragraph B(11)(d)(1) of the ADR Rules. B. Rights or Legitimate Interests
Under the ADR Rules, the burden of proof for the lack of rights and legitimate interests of the Respondent lies with the Complainant. However, the existence of negative facts is difficult to prove, and the relevant information for the Respondent (including any potential evidence of rights and legitimate interests) is mostly in its sole possession. Therefore, the Panel holds that it is sufficient that the Complainant makes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden of production then shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element.
At the time of the filing of this Complaint, the websites for both domain names resolved to an error page. This constitutes prima facie evidence of the lack of rights or legitimate interests.
Previous panels stated that a domain name that is not being used by the Respondent at all cannot be use in connection with a bona fide offering of products (See Gymworld Inc. and Magformers UK Limited v. Vanbelle Jo, Vanbelle Law,WIPO Case No. DEU2017-0001).
According to the WhoIs database, the disputed domain names and were registered by Ms. Carmelaa Dhino. The Respondent is neither affiliated nor connected to the Complainant in any way. She was not authorized or licensed by the Complainant to register or use the disputed domain names that incorporate the Complainant’s trademark. The Respondent does not appear to have any rights or legitimate interests to the disputed domain names.
The Panel finds that the Respondent must have been aware of the Complainant and its reputation associated with the LIDL trademarks at the time of registering the disputed domain names. Previous UDRP panels have already stated that LIDL has a worldwide reputation and explained that “The trademarks of Complainant have been existing for a long time and are well-known.” (LIDL Stiftung & Co. KG v. Domain Administrator, Modern Empire Internet Ltd., WIPO Case No. D2018-0523)1.
The Complainant has submitted evidence showing that the Respondent registered the disputed domain names long after the Complainant registered the trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the LIDL trademark since 1991. The fact that the LIDL trademarks, owned by the Complainant, were registered long before the registration of the disputed domain names attests to the Respondent’s bad faith in these particular circumstances.
Furthermore, the fact that the Respondent has chosen not to respond either to a notice delivered by a bailiff or to the Complaint strongly suggests that the Respondent has nothing to say which might help in rebutting the Complainant’s assertions. (See FNAC Darty Participations et Services and Establissements Darty et Fils v. Paul Romain, WIPO Case No. DEU2018-0003).
As noted above, the disputed domain name has been used in connection with a fraudulent scheme. Clearly, such use by the Respondent cannot give rise to any rights or legitimate interests on the part of the Respondent.
For all the above mentioned reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names, according to Paragraph B(11)(d)(1)(ii) of the ADR Rules. C. Registered or Used in Bad Faith
For the reasons set out under the Panel’s findings under paragraph 6.C above the Panel finds that the disputed domain names were registered and used in bad faith, and that the requirements of Paragraph B(11)(d)(1)(iii) of the ADR Rules have been met. 7. Decision
For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain names, and be transferred to the Complainant2.
Nathalie Dreyfus
Sole Panelist
Date: July 12, 2018
1 Noting the substantive similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has also referred to UDRP cases, where appropriate.
2 The remedy sought by the Complainant is transfer of the disputed domain names. As the Complainant is established and located within the European Union, it satisfies the general eligibility criteria for registration of the disputed domain names as set out in Article 4(2)(b) of the Regulation (EC) No. 733/2002.
Full & Egal Universal Law Academy