, EUTM No. 001779784 (figurative mark) registered on November 12, 2001 in classes 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, and 42;The Complainant is Lidl Stiftung & Co. KG, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Name Redacted.1
The disputed domain name <supplier-lidl.com> (hereafter the “Disputed Domain Name”) is registered with Register SPA (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2020. On June 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 9, 2020, 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 June 9, 2020 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 June 12, 2020.
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 June 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2020.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on July 14, 2020. 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.
The Complainant, Lidl Stiftung & Co. KG, belongs to the Lidl Group, a global discount supermarket chain based in Germany and operating – mostly by independent affiliated companies – over 10,000 stores in Europe and the United States of America.
The Complainant owns several trademark registrations for LIDL, including the following:
- LIDL, International word mark No. 585719 registered on December 4, 1991 in classes 1, 3, 5, 8, 11, 16, 18, 21, 28, 29, 30, 31, 32 and 33;
- LIDL, European Union Trade Mark (EUTM) No. 001778679 (word mark) registered on August 22, 2002 in classes 1, 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, and 42;
- , EUTM No. 001779784 (figurative mark) registered on November 12, 2001 in classes 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, and 42;
The Complainant’s group operates on the Internet through websites linked to several domain names, including <lidl.com>, <lidl.de>, <lidl-service.com>, and <lidl.fr>.
The Disputed Domain Name was registered on May 26, 2020.
The Disputed Domain Name appears to have resolved to a standard parking page operated by the Registrar. The Complainant provides evidence of emails sent to third parties from email addresses linked to the Disputed Domain Name. The signature of these emails includes the name of a director of one of the Complainant’s subsidiaries, the physical address of this subsidiary and a link to an official website of the Complainant’s group.
The Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant claims that the Respondent has registered the Disputed Domain Name primarily to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark.
The Complainant has requested that the Panel redact the name used by the Respondent as it corresponds to name of the head of purchasing of one of the Complainant’s subsidiaries. According to the Complainant, it would be unfair and unjust for the personal data of a victim of identity theft to appear in such proceedings.
The Respondent did not reply to the Complainant’s contentions.
The Respondent appears to have used the name of a director of one of the Complainant’s subsidiaries when registering the Disputed Domain Name. Under these circumstances as further detailed below, the Panel considers it appropriate to redact the Respondent’s name from the present decision to avoid any confusion of reputational damage to this person (see Applied Materials Inc. v. Contact Privacy Inc. Customer 0152257585 / Name Redacted, WIPO Case No. D2019-1116; Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788).
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are administrative, the standard of proof is the balance of probabilities.
Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(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 in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Panel will therefore deal with each of these requirements.
To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that it has trademarks rights in the sign LIDL. The Complainant’s LIDL trademarks have been registered and extensively used in connection to their business.
The Disputed Domain Name incorporates the Complainant’s LIDL trademark in its entirety, simply preceding it with the word “supplier” and a hyphen. As stated at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the relevant trademark is recognizable within the Disputed Domain Name, the addition of other (descriptive) terms would not prevent a finding of confusing similarity.
Additionally, it is well established that the generic Top-Level Domain (“gTLD”) “.com” may be disregarded when considering whether the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights.
In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s LIDL trademark.
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see section 2.1 of the WIPO Overview 3.0).
The Panel notes that the Respondent has not apparently been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant.
Where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner (see section 2.5.1 of the WIPO Overview 3.0). The Disputed Domain Name incorporates the Complainant’s LIDL trademark and adds the word “supplier”, which is descriptive and can be directly linked to the Complainant’s retail business. Therefore, the Panel finds that the Disputed Domain Name carries a risk of implied affiliation with the Complainant and cannot constitute fair use.
Beyond looking at the domain name and the nature of any additional terms appended to it, UDRP panels assess whether the overall facts and circumstances of the case, including the absence of a response, support a fair use or not (see sections 2.5.2 and 2.5.3 of the WIPO Overview 3.0).
The Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. While the Disputed Domain Name resolved to a parking page, the Respondent has actively used email addresses connected to the Disputed Domain Name to impersonate a person linked to the Complainant’s group with a clear intent to mislead third parties in relation to the purchase of products. The signature in the emails mentioned the name of a director of one of the Complainant’s subsidiaries, the physical address of this subsidiary and a link to an official website of the Complainant’s group. Evidently, such use cannot be considered a legitimate noncommercial or fair use of the Disputed Domain Name.
Previous UDRP panels have held that the use of a domain name for illegal activity (e.g., phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on the Respondent (see section 2.13 of the WIPO Overview 3.0).
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy.
The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see section 4.2 of the WIPO Overview 3.0 and, for example, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a 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 website or location or of a product or service on the website or location.
In the present case, it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name. The Complainant provides a copy of several emails sent from addresses connected to the Disputed Domain Name. The signature of the emails not only mentions the name of a director of one of the Complainant’s subsidiaries, the physical address of this subsidiary and a link to an official website of the Complainant’s group, it also reproduces the Complainant’s figurative mark as represented above in section 4. Considering the distinctive and well-known character of the Complainant’s LIDL trademark, the Respondent must have had knowledge of the Complainant’s rights at the time of registering the Disputed Domain Name. The Panel therefore finds that the Respondent’s awareness of the Complainant’s trademark rights at the time of registration indicates bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007).
The Respondent also used the same name and the physical address of the Complainant’s subsidiary to register the Disputed Domain Name. The Panel finds that the Respondent’s attempt to conceal its identity is a further indication of bad faith.
The Panel is of the opinion that the Complainant’s trademark has a strong reputation, which makes it difficult to conceive any plausible legitimate use of the Disputed Domain Name by the Respondent. Further, the Respondent has used email addresses connected to the Disputed Domain Name to impersonate a director of a subsidiary of the Complainant. The Panel finds that the Respondent’s use of these email addresses associated with the Disputed Domain Name constitutes bad faith (see section 3.4 of the WIPO Overview 3.0).
By failing to respond to the Complaint, the Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element of the Policy.
For 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 <supplier-lidl.com> be transferred to the Complainant.
For purposes of properly executing this order, the Panel also directs the Registrar’s attention to Annex 1 hereto that identifies the individual listed as registrant of the Disputed Domain Name in the formal record of registration, and orders that the Disputed Domain Name <supplier-lidl.com> be transferred from that individual to the Complainant.
The Panel directs the Center that Annex 1 shall not be published along with this decision.
Flip Jan Claude Petillion
Sole Panelist
Date: July 28, 2020
1 The Respondent appears to have used the name of a director of one of the Complainant’s subsidiaries when registering the Disputed Domain Name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision as discussed in section 6.1 below.