WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lidl Stiftung & Co. KG v. Konstantinos Zournas
Case No. D2008-0975
1. The Parties
The Complainant is Lidl Stiftung & Co. KG, Neckarsulm, Germany, represented by Harmsen Utescher, Germany.
The Respondent is Konstantinos Zournas, Patras, Greece, appearing pro se.
2. The Domain Name and Registrar
The disputed domain name <lidl.info> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2008. On June 27, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On July 2, 2008, Moniker Online Services, LLC 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2008. The Response was filed with the Center on July 24, 2008.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on August 5, 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 the Rules, paragraph 7.
4. Factual Background
According to the Complainant, it operates more than 7000 discount stores under the name and mark LIDL in 21 European countries. It is well-known and has annual turnover on the scale of about 40 billion Euros. The Complainant owns numerous registered trademarks for the mark LIDL with some priorities dating back to 1991, has used the name and mark for 70 years, and has trademarks registered in Greece, the domicile of the Respondent. The name and mark LIDL is also used by companies affiliated to the Complainant, including Lidl Hellas & Cia O. E., in Greece.
The Complainant does business on a number of Internet sites with domain names comprising “lidl” in combination with a country code or other directory designation.
According to the Respondent, he is a web developer based in Greece. His relevant business is to register and trade in domain names, including ones that become available through non-renewal. Many of them comprise surnames. According to a WhoIs document submitted by the Complainant, the Respondent owns over 8700 other domain names. The disputed domain name <lidl.info> was apparently registered by the Respondent on October 19, 2006.
5. Parties' Contentions
The Complainant contends that it is a major and well known company operating stores particularly in Germany and elsewhere in Europe, including Greece. Its business has received international exposure through, for example, International Business Times and Financial Times Germany. Documentary evidence was appended.
The Complainant contends that it has used the name and mark LIDL for more than 70 years. It owns trademarks including:
German trademark 305 67 731 LIDL with a priority of November 16, 2005;
German trademark 2 006 134 LIDL with a priority of July 3, 1991;
Community trademark 004 746 327 LIDL with a priority of November 17, 2005; Community trademark 001 778 679 LIDL with a priority of July 27, 2000;
Trademark GR (Greece) 129587 LIDL with priority of June 10, 1996;
Trademark GR 123809 LIDL with priority of April 6, 1995;
Trademark GR 129588 LIDL of June 10, 1996;
Trademark GR 107171 LIDL with priority of January 3, 1992;
Trademark GR 107172 LIDL with priority of January 3, 1992.
Documentary evidence was appended.
The designation LIDL is also used by affiliates including Lidl Hellas & Cia O. E.
The Complainant contends that it does business over the Internet through domain names including <lidl.de>, <lidl.com>, <lidl.es>, <lidl.co.uk>, <lidl.fr>, <lidl.pt>, and <lidl.gr>. Documentary evidence was appended.
It is contended that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The domain name incorporates the Complainant's trademark in its entirety with the addition of the gTLD “.info”.
The Complainant declares that the Respondent has no rights or legitimate interests in the disputed domain name or the name “Lidl”. The Respondent has no connection with and is not a licensee of the Complainant and has not been authorised to apply for or use the domain name.
The Complainant states that it sent a warning letter to the Respondent on February 15, 2008. In reply, the Respondent said that “Lidl” is a common last name, but did not claim to have any rights in the name.
The Complainant contends that “Lidl” is not a common last name, especially not in Greece. It is a fantasy term and not one that traders would choose unless seeking to create an impression of an association with the Complainant. The disputed domain name was not registered by the Respondent for any bona fide reason. It has not been used in connection with an Internet site for the bona fide offering of goods and services. The Respondent does not trade under this name and is not commonly known by it.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The case of Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226, is advanced as a basis for a finding that actual knowledge of a complainant's trademark at the time of registration of a domain name is sufficient for an inference of bad faith. The Respondent must have known of the Complainant's trademark because it is used in Greece and elsewhere. The Complainant has about 7,200 LIDL stores in Europe and the trademark is widely-known. It is contended that the Respondent registered the domain name because of the name's association with the Complainant, constituting bad faith.
The Complainant contends that the domain name is openly for sale on Sedo and was registered primarily for the purpose of selling, renting or otherwise transferring it at a profitable price. Furthermore, the Respondent owns more than 8,700 domain names and is dealing in them commercially, this being a clear indication that the registration and use of the disputed domain name are in bad faith.
The Complainant submits that any attempt to use the disputed domain name <lidl.info> actively would lead to a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the related website among Internet users. They would be led to believe the site was associated with the Complainant. Competitors could buy the domain name and damage the Complainant, or the Complainant might feel the need to buy the domain name.
By way of remedy, the Complainant requests the transfer of the disputed domain name.
The Respondent denies the Complaint. His contentions are lengthy and interwoven as to background matters and the responses to the three main requirements of the Policy covered by paragraphs 4(a) (i) - (iii). A large number of citations of previous cases in different jurisdictions are also submitted.
The Respondent says he is a Greece-based web developer who acquires domain names with intent to develop them. He develops themed search portals among other Internet development projects. He uses <lidl.info> in connection with third-party paid search advertising, and it is used as an ancestry portal, offering links to various ancestry websites.
The Respondent does not contest the claim of effective identity between the domain name and the Complainant's trademark.
In the matter of rights and legitimate interests in the disputed domain name, the Respondent contends that he does have a legitimate interest. He registers domain names that become available through expiry, but only if they incorporate common and descriptive terms to which he believes no single party has exclusive rights. He submits that generic names and abbreviations can be used in good faith in areas unrelated to a Complainant's trademark class (Cyclone Courier Company Ltd and Mr. Seb Clark, Nominet Case No. DRS 1629).
The Respondent contends that his business of buying and selling domain names, in and of itself, is legitimate and that similar findings have been made in numerous unrelated domain name disputes (citations provided). Furthermore, his business of collecting money from advertisers in return for the direction of traffic to them by way of links, known as click-through, is similarly legitimate and has been held to be so in previous cases (citations provided). For his business, in respect of a given domain name to be not legitimate, more would be required.
The Respondent contends that the disputed domain name comprises a surname possessed by some people, particularly in Europe, any of whom would potentially be legitimate buyers and users of the domain name. He produces in evidence the names of about four companies with “Lidl” incorporated into their names and also an organisation named “Ladies Independent Design League”.
The Respondent contends that the disputed domain name has been set up as a portal to the topic of ancestry. Visitors to the website are referred to sources of information on ancestry, showing that the domain name is in use in connection with a bona fide offering of goods or services (paragraph 4(c)(i) of the Policy). He also contends that offering the domain name for sale in normal trade from a stock of thousands (absent bad faith) is fair use and is without intent to divert consumers misleadingly for commercial gain or to tarnish the Complainant's trademark (paragraph 4(c)(iii) of the Policy).
In the matter of alleged bad faith, the Respondent's contentions amount to a denial on all grounds (paragraph 4(b) of the Policy). He says he has not targeted the Complainant, who in any case does not have sole claim on the name “Lidl” (paragraph 4(b)(i) of the Policy). He has not attempted to block the Complainant, who holds a number of “lidl” domain names, from registering the disputed domain name (paragraph 4(b)(ii) of the Policy). He is not a competitor of the Complainant and has not attempted to disrupt its activities (paragraph 4(b)(iii) of the Policy). Furthermore, the Respondent says that his click-through activity for generating revenue is legitimate and is conducted without there being anything on his website that could confuse users into thinking it has the endorsement of the Complainant (paragraph 4(b)(iv) of the Policy).
The Respondent requests that the Complaint be denied.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy, and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Complainant has provided documentary evidence of its ownership of and rights in LIDL trademarks registered in several European countries.
The disputed domain name is <lidl.info>. Since the gTLD suffix “.info” or an equivalent is inherently a part of a domain name, it is customarily disregarded in the consideration of confusing similarity. The remainder of the domain name is merely “lidl”, which clearly is identical to the Complainant's trademark LIDL, capital letters also being of no significance for Internet purposes in the circumstances. The Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant is required to prove that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant certifies that it has no relationship with the Respondent and has not in any way authorised him to use the trademark LIDL. The Complainant has not authorised the Respondent to apply for the disputed domain name. On the contrary, the Complainant sent a cease and desist letter in this matter to the Respondent on February 15, 2008.
The Complainant says that the name “Lidl” is uncommon, especially in Greece, and is in the realm of fantasy, such that it would not legitimately be chosen except for its association with the Complainant.
In anticipation of any Response in the terms of paragraph 4(c) of the Policy, the Complainant asserts that registration of the domain name was not for a bona fide purpose, that it has not been used for the bona fide offering of goods and services, and that the Respondent is not commonly known by a name similar to the domain name.
The Complainant, by setting out the foregoing, has presented a prima facie case to the effect that the Respondent has no rights or legitimate interests in the disputed domain name (however, the claim that “Lidl” is a fantasy word is not accepted by the Panel).
It is open to the Respondent to refute the prima facie case as provided for in paragraph 4(c) of the Policy, which states in part,
Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your [the Respondent's] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
From the detailed Response, the following may be extracted as intending to advance the Respondent's claim to rights or legitimate interests in the domain name. The Respondent has (before notice of the dispute) brought the domain name into use as a website. A screenshot is provided in evidence, about which the Respondent says, “Also one can clearly see that the content of this website consists of ‘Ancestry' links”.
That is superficially so. There are 10 links on the screenshot provided by the Respondent, of which 7 are to ancestry sites, one is biblical, one is possibly a travel agent, and one is unclear. The linked sites themselves are seemingly bona fide and apparently offer goods or services.
The Complainant's screenshot of the website “www.lidl.info” is in German and was made on February 13, 2008 (shortly before the date of the cease and desist letter to the Respondent). It offers links of quite a different kind, including for example “LIDL Online” (<lidl.de>), which is owned by the Complainant; other shops; and “Sexy Frauen” (the Panel waives its right under paragraph 11(b) of the Rules to require translation into the language of the proceedings). In the exercise of its powers under paragraph 10(a) of the Rules to examine the website (The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064), the Panel finds there are reasons for this difference. The links provided on “www.lidl.info” are “sponsored links”, placed there by arrangement with the specialist hosting and advertising service. The viewer of the site can select from 16 different geographical viewerships or languages, many of which offer a different set of links. Permuted with this option is a wide selection of categories of links with themes such as “jobs”, “adult”, “loans” and notably “shoppping”. Each of these may display links that are themselves directories. Furthermore, the links offered are evidently targeted according to the geographical location of the viewer's computer connection such that a viewer in any country is pointed partly towards local advertisers, and links appear to change with time.
Thus, the Respondent's website subscribes to a sophisticated and automated system, giving access to a vast resource of advertising links targeted in real time to the interests, location, and language of Internet users worldwide, whose impulse to view any link triggers the payment of a fee from the advertiser to the Respondent. The Respondent acknowledges as much since a pay-per-click business, in itself, is not necessarily illegitimate.
The website provides no service to pursuers of ancestry or of anything else except to refer them elsewhere, where they might have arrived more quickly without visiting the Respondent's website. This revenue-focused activity is found not to constitute qualifying usage “in connection with a bona fide offering of goods or services” within the meaning of paragraph 4(c)(i) of the Policy.
Paragraph 4(c)(ii) of the Policy has not been invoked by the Respondent.
In the terms of paragraph 4(c)(iii) of the Policy, the Respondent claims that neither a click-through business nor a trade in domain names is of itself illegitimate, and the Panel accepts the general truth of this assertion. Qualifying use under this paragraph, however, for it to be fair, must be “without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”. That requirement is so interwoven with the bad faith provisions of paragraph 4(b) of the Policy that the latter will be explored first.
C. Registered and Used in Bad Faith
The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
It will be productive to consider paragraph 4(b)(iv) above.
The Respondent's general modus is accepted as capable of legitimacy. Trade in domain names and the collection of revenue through click-through referral are generally regarded as bona fide businesses unless there are circumstances to the contrary.
The key circumstance here is that the Respondent has chosen to exploit the domain name <lidl.info>. He says that he “only registers domains which incorporate common and descriptive terms to which [he] believes no single party has exclusive rights. The primary interest in this domain should be readily and objectively apparent and has nothing to do with any potential trademark value”. The Respondent is a professional in this sphere with something like 8,700 domain names. It may reasonably be inferred that, before paying money for a domain name (or before deciding to keep it), he checks it out in keeping with his stated principles of avoiding encroachment upon rights or trademarks. This would also be necessary for purposes of resale valuation and to judge the relative expectation of receiving the hits that sustain click-through business.
On the balance of probabilities, the Respondent must have known (and ought to have known) in broad terms of the Complainant's fame and business as the operator of thousands of stores in Europe. The Complainant says it has stores in Greece and has a Greek language website at “www.lidl.gr”. To be fair, the Respondent nowhere unequivocally denies he knew this, but states more cautiously, for example: “Respondent acquired lidl.info because it incorporated the common last name Lidl, which it believed was valuable as a last name domain and that it believed no party had exclusive rights to”; and later: “there is no evidence that Respondent registered the domain <lidl.info> with Complainant in mind. The reason Respondent registered the domain name <lidl.info> is because the domain name corresponds to a last name”.
In the Respondent's evidence, Family Search has turned up 62 “Lidl” surnames in a limited period of history, but it is not productive to discuss numbers or how common the name is. Apart from sources of data being sketchy and of secondary nature or self-selected, there cannot be a line that delineates common from distinctive or any other adjective. Those with the surname “Lidl” are a valid market for the corresponding domain name (paragraph 4(c)(ii) of the Policy), but it is the use to which it is put, not simple possession, that helps to determine legitimacy.
The Respondent quotes numerous citations that are not necessarily contentious but are not wholly applicable to the present facts either. For example, registration of expired domain names is legitimate (Vernons Pools Limited. v. Vertical Axis, Inc., WIPO Case No. D2003-0041) – but subsequent use is the basis of this dispute. Dealing in domain names and collection of advertising revenue are legitimate (Media General Communications, Inc. v. Rarenames WebReg, WIPO Case No. D2006-0964) – but only “in the absence of evidence suggesting name selection because of correspondence to a trade mark”. In Ancien Restaurant Chartier v. Tucows.com Co, WIPO Case No. D2008-0272, “the Panel accepts that the Respondent does not use the surnames it acquires because of their value as trademarks” – but the trademark value is in issue in the present case. Also, “ . . . no one can be prevented from registering non-trademarked common words” (Builder's Best, Inc. v. Yoshiki Okada, WIPO Case No. D2004-0748) – but non-trademarked common words are not in issue.
Where fine points are in issue, split decisions are not unheard of. As the majority decision stated in F. Hoffmann-La Roche AG v. Domain Admin Tucows.com Co., WIPO Case No. D2006-1488, “[r]egistration of a domain name with knowledge that it consists of another's trademark, even a famous trademark, is not in itself sufficient to establish bad faith for the purposes of the Policy. There must also be an intention to trade on the trademark significance of the sign registered as a domain name. In many cases, it is obvious that there can be no other explanation or that the purported justification is nothing more than a pretext”.
On the specific facts of the present case, the Panel finds it inescapable that the Respondent knew of the trademark significance of LIDL and he has harnessed it to a sophisticated money-making operation. As the Panelist stated in Media General, supra, “... paragraph 2 of the Policy implicitly requires some good-faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy”. The Respondent claims correctly that the Complainant does not have exclusive rights over the surname “Lidl”, but such rights need not be exclusive “in every possible context” (see Media General, which also goes on to say, “The fact that the Complainant's mark is an easily discovered, US-registered trademark of exactly the kind frequently trademarked by the owners of US broadcast stations leads the Panel to conclude that the US-based Respondent, when registering the domain name, acted in disregard of the rights of third parties and therefore in bad faith. In the circumstances of this case, if the Respondent did not know of the Complainant's mark, it should have known”).
The Panel finds on the balance of probabilities that the Respondent's registration and use of the domain name is in bad faith within the meaning of paragraph 4(b)(iv) of the Policy and that he has no rights or legitimate interests in the terms of paragraph 4(c)(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 name <lidl.info> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Dated: August 19, 2008