The Complainant is Lidl Stiftung & Co. KG, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Ravshan Nabiev, Russian Federation.
The disputed domain name <mylidl.space> (the “Disputed Domain Name”) is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2020. On November 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 20, 2020, the Registrar transmitted by email to the Center its verification 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 December 1, 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 December 2, 2020.
On December 1, 2020, the Center transmitted an email in English and Russian regarding the language of the proceeding to the parties. On December 2, 2020, the Center received the Complainant’s response in which it confirmed its request for English to be the language of the proceedings. The Respondent did not comment on the language of the proceeding.
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 December 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2020.
The Center appointed Mariya Koval as the sole panelist in this matter on January 6, 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.
The Complainant belongs to the LIDL-Group, which is a global discount supermarket chain that is based in Germany and operates more than 10,000 stores with over 285,000 employees in 29 countries.
The Complainant is the owner of numerous LIDL trademark (the “LIDL Trademark”) registrations in many jurisdictions throughout the world, among which are:
- German Trademark Registration No. 2006134, registered on November 11, 1991, in respect of goods in classes 3, 5, 8, 11, 16, 18, 21, 28, 29, 30, 31, 32, 33;
- German Trademark Registration No. 30009606, registered on March 3, 2000, in respect of goods and services 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, 42;
- International Trademark Registration No. 974355, registered on May 9, 2008, in respect of goods in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 18, 21, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 39, 40, 41, 42;
- International Trademark Registration No. 748064, registered on July 26, 2000, in respect of goods 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, 40, 41, 42;
- European Union Trade Mark Registration No. 001778679, registered on August 22, 2002, in respect of goods and services 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, 42;
- European Union Trade Mark Registration No. 001779784, registered on November 12, 2001, in respect of goods and services 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, 42;
- European Union Trade Mark Registration No. 013192752, registered on February 27, 2015, in respect of goods and services in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 39, 40, 41, 42, 43, 44.
The Complainant has a significant online presence, it operates different domain names reflecting its LIDL Trademark for sale and promotion of its goods, inter alia: <lidl.com>, <lidl.de>, <lidl.pl>, <lidl.fr>, <lidl.ro>, <lidl.es> and many others.
The Disputed Domain Name was registered on August 5, 2020. As at the date of this decision the Disputed Domain Name does not resolve to an active website. However, in accordance with evidence presented by the Complainant (Annex 6 to the Complaint) the Disputed Domain Name before the filing of the Complaint resolved to a website in the German language, which in its turn redirected the Internet users to another website, “www.dein-supermarkt-gewinn.com”, where the LIDL Trademark was used and where under the promise of receiving at EUR 250 Lidl gift cards, Internet users were asked to submit contact information.
The Complainant asserts that the Disputed Domain Name is confusingly similar to its LIDL Trademark in view of that the Disputed Domain Name incorporates the Complainant’s Trademark in its entirety prefixed with the pronoun “my”. The Complaint noticed that the denomination “Lidl” has no meaning in English, German or Russian in view of that it is derived from the name of a co-founder of the Complainant and, respectively, it is an inherently distinctive trademark and has strong international reputation.
The Complainant also alleges that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name in view of that the Respondent was not using the Disputed Domain Name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy and the use of the Disputed Domain Name did not constitute a legitimate noncommercial or fair use. The Disputed Domain Name incorporates the Complainant’s Trademark in its entirety with addition of the pronoun “my” that can be directly linked to the Complainant’s activity.
The Disputed Domain Name resolved to a website in the German language, which contained some questions for the Internet users regarding their shopping preferences and the Complainant’s supermarket, and further redirected the users to another website, “www.dein-supermarkt-gewinn.com”, where the users were proposed to present their contact details in exchange for promise of EUR 250 Lidl gift cards. These contact details were collected solely for advertising purposes by third-party companies. The design of the website “www.dein-supermarkt-gewinn.com” made it very much unclear to Internet users that this website is in fact not operated by the Complainant or an affiliated company. Moreover, on the above website the Complainant’s LIDL Trademark was used.
The Complainant also noticed that the Respondent has registered another domain name <mymilka.site> corresponding to the extremely well-known MILKA trademark.
The Complainant further contends that the Respondent is not commonly known by the Disputed Domain Name, no permission to use “lidl” or “mylidl” was granted by the Complainant to the Respondent.
The Complainant also alleges that the Respondent registered and was using the Disputed Domain Name in bad faith in view of the following:
- the Complainant’s well-known Trademark is completely incorporated in the Disputed Domain Name;
- the use of the pronoun “my” in the Disputed Domain Name further endorses an assumption of affiliation or sponsorship between the Complainant and the offer located on the website under the Disputed Domain Name;
- on the website to which the Disputed Domain Name previously resolved, ultimately, after having answered all questions the Internet users were redirected to a third-party website which is operated for purposes of commercial gain (data collection for third party advertising) that is an intentional capitalization on the Complainant’s Trademark fame and goodwill;
- the website under the Disputed Domain Name, to which it had been resolving before filing of the Complaint, was clearly designed only to redirect to the third-party website that the Respondent is clearly in some way benefitting from any commercial activity held under this website;
- taking into account that the Complainant’s use of its Trademark and business activity as a very famous discount supermarket chain predates the registration of the Disputed Domain Name, the Respondent obviously was well aware of the Complainant’s LIDL Trademark when registering the Disputed Domain Name;
- there is no conceivable legitimate interest for use of the Disputed Domain Name by the Respondent.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, the complainant to succeed must satisfy the panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which 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 was registered and is being used in bad faith.
The Registrar confirmed that the language of the Registration Agreement for the Disputed Domain Name is Russian.
The Complainant has filed the Complaint in English and requests that English be the language of this proceeding due to the following reasons:
- the Complainant and its representative are not familiar with Russian;
- the Disputed Domain Name is in Latin script, rather than Russian Cyrillic, and includes the English language pronoun “my” before the Complainant's Trademark.
In accordance with paragraph 11(a) of the Rules unless otherwise agreed by the Parties, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Complainant and its representative are both German companies. The Panel takes into account that neither the Complainant nor its representative are able to communicate in Russian and therefore forcing the Complainant to translate the Complaint and annexes thereto, would result in unfair additional expenses for the Complainant and would delay this UDRP proceeding.
The Disputed Domain Name and generic Top-Level Domain (“gTLD”), both are in Latin characters and not Cyrillic characters.
Furthermore, having received the Center’s communication regarding the language of the proceeding, both in English and Russian, the Respondent did not comment on the language of the proceeding.
Paragraph 10(c) of the Rules sets out that the Panel shall ensure that the administrative proceeding takes place with due expedition.
In light of the above, the Panel concludes in accordance with paragraph 11(a) of the Rules that English shall be the language of this proceeding. Translation of the Complaint and other materials would cause unnecessary delay of this proceeding.
The Complainant has properly asserted its rights in the LIDL Trademark due to the long use and number of registrations globally.
The Disputed Domain Name completely reproduces the LIDL Trademark in combination with the pronoun “my” and the gTLD” “.space”. According to 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 terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements. The Panel finds that in view of the fact that in this case the Disputed Domain Name incorporates the entirety of the Complainant’s well-known LIDL Trademark, the addition of the pronoun “my” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s Trademark.
Also, pursuant to section 1.7 of the WIPO Overview 3.0, in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing.
It is also well established that the gTLD, in this case “.space”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar to the Complainant’s Trademark.
In light of the above, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s LIDL Trademark and that the Complainant has established the first condition of paragraph 4(a) of the Policy.
In accordance with section 2.1 of the WIPO Overview 3.0 while the overall burden of proof in UDRP proceedings is on the Complainant, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. If such prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant 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 generally deemed to have satisfied the second element.
The Complainant has used its LIDL Trademark for more than 30 years, which is long before the Respondent registered the Disputed Domain Name in 2020.
According to the section 2.5.1 of the WIPO Overview 3.0, 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. In this case, the Disputed Domain Name contains the Complainant’s Trademark in its entirety and addition of the pronoun “my” which enhances an impression of the Respondent’s relation with the Complainant (that is not consistent with the reality), that, correspondingly, cannot constitute fair use of the Disputed Domain Name.
Also, there is no evidence that the Respondent is using the Disputed Domain Name to offer bona fide goods and services or making a legitimate noncommercial or fair use of the Disputed Domain Name. On the contrary, the website to which the Disputed Domain Name previously resolved, had content in the German language with some questions regarding shopping preferences of Internet users and the Complainant’s supermarket. After answering all questions, Internet users were redirected to the third-party website “www.dein-supermarkt-gewinn.com”, where the LIDL Trademark was used and where under the promise of receiving at EUR 250 Lidl gift cards, the users were asked to submit contact information. The Panel finds that the Respondent may be engaged in a phishing scheme aiming to deceive Internet users and make them believe that they are dealing with the Complainant. With respect to the circumstances of this case, the Panel considers that it is more likely than not that the Respondent registered the Disputed Domain Name with the sole intention of commercial gain by attracting Internet users to his website.
The Panel also considers it is more than likely that the Respondent was well aware of the Complainant’s LIDL Trademark when registering the Disputed Domain Name, taking into account the long use and reputation of the Complainant’s Trademark and the fact that the Respondent was using the LIDL Trademark on the website under the Disputed Domain Name.
The Respondent did not respond to the Complaint and did not participate in this proceeding, accordingly, the Respondent has failed to present any evidence to support any rights or legitimate interests in the Disputed Domain Name.
In light of the above, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Therefore, the second element of the paragraph 4(a) of the Policy has been met by the Complainant.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that indicate bad faith conduct on the part of the respondent, namely:
“(i) circumstances indicating that the respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 respondent’s website or location or of a product or service on the respondent’s website or location.”
The Disputed Domain Name incorporates the Complainant’s Trademark in its entirety that creates a strong likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Name.
According to section 3.1.4 of the WIPO Overview 3.0 UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is of opinion that it is clear that the Respondent, having registered and used the Disputed Domain Name, which is confusingly similar to the well-known Complainant’s Trademark, primarily intended to disrupt the Complainant’s business. In view of the absence of any evidence to the contrary and that the Respondent did not file any statement, the Panel concludes that the Respondent has registered and was using the Disputed Domain Name in bad faith.
In the Panel’s view, the fact that the Respondent knew about the Complainant’s Trademark at the time of the registration of the Disputed Domain Name is undisputable in view of the Respondent previously using the Disputed Domain Name to resolved to a website, which contains the Complainant’s Trademark and a few questions for Internet users regarding their shopping preferences and the Complainant’s supermarket, after the answering to which the users were redirected to another website “www.dein-supermarkt-gewinn.com” where the users were proposed to present their contact details in exchange of promise for EUR 250 Lidl gift cards. It may be noted that the website under the Disputed Domain Name contained no contact information, all links led to a competitor’s website. As a result of the above, the Panel finds that the Respondent had the Complainant’s Trademark in mind and intentionally targeted the Complainant when he registered the Disputed Domain Name for the purpose of attracting Internet users to his website, that clearly cannot be considered as use in good faith.
Also, the Respondent did not respond to the Complainant’s contentions and did not participate in this proceeding at all. Previous UDRP panels have considered that the respondent’s failure to respond to the complaint supports an inference of bad faith, see e.g., Champagne Louis Roederer (CLR) v. Global Web Development, LLC, WIPO Case No. D2004-1073 “The fact that the Respondent failed to respond to the Complaint, in the Panel’s view, adds to the arguments in favour of the Respondent’s bad faith.”
Therefore, having examined all the circumstances of the case the Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is satisfied.
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 <mylidl.space> be transferred to the Complainant.
Mariya Koval
Sole Panelist
Date: January 20, 2021