WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lidl Stiftung & Co. KG v. SellDa GmbH
Case No. D2008-0724
1. The Parties
The Complainant is Lidl Stiftung & Co. KG of Neckarsulm, Germany, represented by Harmsen & Utescher, Germany.
The Respondent is SellDa GmbH of Berlin, Germany, represented by Michael Hoepfner, Germany.
2. The Domain Names and Registrars
The disputed domain names <lidl-strom.com>, <lidlstrom.com>, <lidlstrompaket.com> and <lidl-strompaket.com> are registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2008. On May 8, 2008, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the domain names at issue. On May 8, 2008, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 16, 2008. In accordance with paragraph 5(a) of the Rules, the due date for Response was June 5, 2008. The Respondent filed two communications in German language with the Center on May 23, 2008 and June 6, 2008 respectively (which are discussed by the Panel subsequently under party contentions).
The Center appointed Brigitte Joppich as the sole panelist in this matter on June 18, 2008. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is a member of the “Lidl” group which is one of the largest trading-groups in Germany and Europe with approx. 3,000 “Lidl” stores in Germany and yearly turnovers of approx. 40 billion Euros. The Complainant operates stores in 21 European countries, inter alia in France, Italy, Spain, England, Austria and Portugal and has used the name “Lidl” for more than 70 years. The Complainant has also been using the designation “Lidl” in connection with generic terms as an indication of the goods and services offered under the name “Lidl”, inter alia in Internet domain names as for example <lidl-dsl.de>, <lidl-fotos.de> (German for “Lidl” photographs), <lidl-blumen.de> (German for “Lidl” flowers) or <lidl-reisen.de> (German for “Lidl” trips).
The Complainant is the owner of numerous trademark registrations concerning the designation “Lidl” in various countries, inter alia German trademark no. 30567731 LIDL with a priority of November 16, 2005, German trademark no. 2006134 LIDL with a priority of July 3, 1991, German trademark no. 30009606 LIDL with a priority of February 8, 2000, Community trademark no. 4746327 LIDL with a priority of November 17, 2005 and Community trademark no. 1778679 LIDL with a priority of July 27, 2000 (the “LIDL Marks”).
The disputed domain names were first registered on June 1, 2007, and were used to forward Internet users to the domain name <flexstrom.de> where Flexstrom GmbH, a German energy provider, offered its services.
The Complainant sent a cease and desist letter to the Respondent on March 28, 2008. In its response, the Respondent stated that all content had been deleted from the websites at the disputed domain names and that it was willing to transfer the domain names to the Complainant against payment of the fees directly connected to such transfer.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain names are confusingly similar to the LIDL Marks as they consist of the term “Lidl” and the additional generic terms “Strom” (German for “electricity”) and “Strompaket” (German for “electricity package”).
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain names as it is neither the owner of any trademark, trade name or any other right in the name “Lidl”, nor is it a licensee of the Complainant, nor has it otherwise obtained any authorization to use the trademarks and trade name “Lidl” or to apply for the disputed domain names.
(3) The Complainant finally contends that the domain names were registered and are being used in bad faith.
With regard to bad faith registration, the Complainant contends that it is inconceivable that the Respondent was unaware of the Complainant and its well-known LIDL Marks at the time it registered the domain names as the Complainant operates approx. 3000 “Lidl” stores in Germany, offering food and other goods as well as services of all kind.
With regard to bad faith use, the Complainant contends that it offered the supply of electricity between December 10, 2007 and December 23, 2007, that the disputed domain names forwarded Internet users to an identical offer at <flexstrom.de> and that such use is clear evidence of the fact that the Respondent used the domain names to create a likelihood of confusion with the Complainant’s trademarks as well as an interest in the commercial offer at <flexstrom.de>, by exploiting the Complainant’s reputation under the trademark und trade name “Lidl”. Furthermore, as the domain names were temporarily parked and linked to third parties’ websites, the Respondent was trying to receive pay-per-click revenues from the websites at the disputed domain names which also is evidence of bad faith use of the domain names under paragraph 4(b)(iv) of the Policy. Finally, the Complainant contends that the registration of various domain names with the identical element “Lidl” constitutes a registration with the purpose of preventing the Complainant from reflecting its trademark plus additional generic terms referring to the supply of electricity (“Strom” and “Strompaket”) in corresponding domain names, which also is an indication of the registration and use of the disputed domain names in bad faith under paragraph 4(b)(ii) of the Policy.
The Respondent filed two communications with the Center in German language. Even though the language of this administrative proceeding is English, the Panel decided to take these communications into account as both parties are able to understand German.
In its communications, the Respondent contends that it offered the transfer of the disputed domain names to the Complainant and that there was no need for the Complainant to initiate proceedings under the Policy. Furthermore, the Respondent stated that it would delete the disputed domain names.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark; and
(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.
A. Identical or Confusingly Similar
The disputed domain names fully incorporate the Complainant’s well-known LIDL Marks in which the Complainant has exclusive rights.
The mere addition of the generic words “Strom” (German for “electricity”) and “Strompaket” (German for “electricity package”) following the trademark does not eliminate the similarity between the Complainant’s marks and the domain names. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words (cf. Dr. Grandel GmbH v. Drg Randel Inc., WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253).
Furthermore, it is also well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trade mark or service mark at issue.
Even though paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name, it is consensus view among UDRP panelists that the complainant has to make a prima facie case to fulfill the requirements of paragraph 4(c) of the Policy. The burden of proving that the respondent has rights or legitimate interests in the disputed domain name will then lie with the respondent.
The Complainant asserts that the Respondent has neither been granted a license nor any other permission to use the LIDL Marks and that it has no rights or legitimate interests regarding this name and has therefore fulfilled its obligations under paragraph 4(c) of the Policy. The Respondent has not denied these assertions in its communications but stated that he was and still is willing to transfer the domain names to the Complainant.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, although not exclusive, are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or acquired the 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 domain name; or
(ii) the respondent has registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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 its website or location.
The Complainant is one of the largest trading-groups in Germany and Europe with approx. 3,000 “Lidl” stores in Germany. The Panel is therefore satisfied that the Respondent registered the disputed domain names with full knowledge of the Complainant’s well-known LIDL Marks and therefore in bad faith under paragraph 4(a)(iii) of the Policy.
The Panel is also convinced that the Respondent used the disputed domain names in bad faith as it used them to forward Internet users to the website of Flexstrom GmbH, a direct competitor of the Complainant in the field of electricity supply. The Respondent tried to divert traffic intended for the Complainant’s website to a third party’s website by creating a likelihood of confusion with the Complainant’s well-known LIDL Marks for commercial gain. Such use and exploitation of trademarks is bad faith use of a domain name under paragraph 4(b)(iv) of the Policy.
This inference of bad faith use is supported by the fact that the Respondent used the websites at the disputed domain names as parking websites providing links to direct competitors of the Complainant. The Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for the purpose of earning click-through-revenues from Internet users searching for the Complainant’s website. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy (cf. L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623, with further references).
The Panel is therefore satisfied that the Respondent also used the disputed domain names in bad faith under paragraph 4(b)(iv) of the Policy.
Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <lidl-strom.com>, <lidlstrom.com>, <lidlstrompaket.com> and <lidl-strompaket.com> be transferred to the Complainant.
Dated: June 30, 2008