The Complainant is Lidl Stiftung & Co. KG of Neckarsulm, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Name Redacted1 2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name is the European Registry for Internet Domains ("EURid" or the "Registry"). The Registrar of the disputed domain name is PDR Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 25, 2018. On April 25, 2018, the Center transmitted a request for registrar verification in connection with the disputed domain name to the Registry by email. On May 2, 2018, the Registry transmitted to the Center a verification response by email confirming that the Respondent is listed as the registrant and providing the registrant contact information.
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 4, 2018. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was June 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 21, 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, belongs to the Lidl Group, a global discount supermarket chain based in Germany. The Complainant operates more than 10,000 stores all over Europe and the United States of America with approximately 315,000 employees.
The Complainant is the owner of numerous national and community trademarks for LIDL, including:
- German Trademark LIDL (word), No. 30009606, registered March 9, 2000, duly renewed;
- German Trademark LIDL (word), No.2006134, registered November 11, 1991, duly renewed;
- European Union Trade Mark LIDL (word) No. 001778679, registered August 22, 2002, duly renewed;
- European Union Trade Mark LIDL (word) No. 006460562, registered October 15, 2008.
The Complainant also promotes its trademark through different domain names owned by its group: , , , and .
The disputed domain name was registered on March 21, 2018. It is not used in connection with an active website and resolves to an error page. The Complainant's evidence shows that the disputed domain name has been used in connection with a fraudulent email scheme, whereby the Respondent has used an email address incorporating the disputed domain name in order to impersonate a senior member of Schwartz-Group (which includes the Complainant's group of companies) offering fictitious business opportunities. 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name has been registered or is being used in bad faith.
The Complainant argues that the disputed domain name is confusingly similar to the Complainant's trademarks since it is composed of the entire trademark LIDL together with the term "gmbh", which is an abbreviation of "Geselleschaft mit beschränkter Haftung" (English: Limited Liability Company), a very common form of incorporation in Germany.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name as the disputed domain name was registered in name of a senior member of the Schwarz-Group which includes the Lidl Group by an unknown third party. The Complainant further argues that the Respondent is not making a fair use of the disputed domain name considering that the disputed domain name resolves to an inactive page and is connected to a fraudulent email scheme. Finally, the Complainant asserts that it never gave an authorization to a third party to register the disputed domain name on its behalf.
The Complainant further argues that the disputed domain name was registered and is used in bad faith. It argues that the disputed domain name was registered with the aim of taking advantage of the reputation of the Complainant's LIDL trademarks that are well-known in Germany and all around the world. Moreover, the Complainant argues that the Respondent uses the disputed domain name and the corresponding email address "[…]@" to forward and to receive phishing emails offering false business opportunities with the Complainant. 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 name is 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 name has been registered by Respondent without rights or legitimate interests in the name; or
(iii) that the domain name has 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 the 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 name consists of the Complainant's LIDL trademarks, together with the term "gmbh", which refers to a common form of incorporation in Germany. This addition is insufficient to avoid a finding of confusing similarity.
The disputed domain name incorporates the trademark of the Complainant in its entirety. The country code Top-Level Domain ("ccTLD") ".eu" is disregarded, as ccTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (see Samuel Hubbard Shoe Company LLC and Werner Wyrsch v. Cyrus Jennings,WIPO Case No. DEU2018-0007).
In the given case, the Panel finds that the Complainant's trademark is clearly recognizable in the disputed domain name.
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 name. 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.
The website resolves 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 name was registered in name of a senior member of the Schwartz-Group. The Respondent is neither affiliated nor connected to the Complainant in any way. It was not authorized or licensed by the Complainant to register or use the disputed domain name that incorporate the its trademark.
The Respondent does not appear to have any independent right to the disputed domain name.
The Panel finds that the Respondent must have been aware of the Complainant and his reputation associated with the LIDL trademarks at the time of registering the disputed domain name. Previous 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).2
The Complainant has submitted evidence showing that the Respondent registered the disputed domain name 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 name attests to the Respondent's bad faith in these particular circumstances.
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 email scheme. Clearly, such use of the disputed domain name 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 name, according to Paragraph B(11)(d)(1)(ii) of the ADR Rules. C. Registered or Used in Bad Faith
For reasons set out under the Panel's findings under paragraph 6.C above the Panel further finds that the disputed domain name was 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 above mentioned reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name be transferred to the Complainant.3
Nathalie Dreyfus
Sole Panelist
Date: July 12, 2018
1 The Respondent appears to have used the name and contact details of a senior member of the Complainant when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent's name from this decision.
2 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.
3 The remedy sought by the Complainant is transfer of the disputed domain name. As the Complainant is established and located within the European Union, it satisfies the general eligibility criteria for registration of the disputed domain name as set out in Article 4(2)(b) of the Regulation (EC) 733/2002.
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