WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lidl Stiftung & Co. KG v. Whois Privacy / Wan Zhong, Wanzhongmedia

Case No. D2016-1284

1. The Parties

The Complainant is Lidl Stiftung & Co. KG, Neckarsulm, Germany, represented by HK2 Rechtsanwälte, Germany.

The Respondent is Whois Privacy, Munsbach, Luxembourg / Wan Zhong, Wanzhongmedia, Shen Zhen City, China.

2. The Domain Name and Registrar

The Disputed Domain Name <lidl-viaggi.com> is registered with EuroDNS S.A. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2016. On June 24, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 28, 2016, 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 Complainant on June 29, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 4, 2016.

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 Respondent of the Complaint, and the proceedings commenced on July 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 27, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 28, 2016.

The Center appointed Richard Page as the sole panelist in this matter on August 5, 2016. 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

Complainant is one of the biggest supermarket chains in Europe. Complainant operates close to 10,000 stores all over Europe. Currently its stores can be found in 26 countries, including the United States of America. Complainant offers various other services, e.g., a mobile phone network called “Lidl connect” and travel services. Travel services have been offered since 2006.

Complainant is the owner of numerous trademark registrations of LIDL in Europe, the United States of America and throughout the world (the “LIDL Mark”) including European Union Trademark no. 001778679 LIDL, registered on August 22, 2002. Complainant also has numerous domain name registrations, such as <lidl.com>, <lidl.de>, <lide.co.uk>, <lidl.es> and <lidl.ie>. Complainant also runs several websites under domain names that consist of “Lidl” in connection with a descriptive term of the relevant service. For example, Complainant and affiliated enterprises offer online booking of travel under the domain names <lidl-reisen.de> (“reisen” being German for “travel”) and <lidl-viaggi.it> (“viaggi” being Italian for “travel”).

“Lidl” is derived from the name of a co-founder of Lidl supermarkets and has no meaning in German or English.

The Disputed Domain Name was registered on October 9, 2009, and resolves to a parking page displaying sponsored links to goods and services in competition with those of Complainant, and offering the Disputed Domain Name for sale.

5. Parties’ Contentions

A. Complainant

Complainant alleges that it has valid and subsisting rights in the LIDL Mark and that the LIDL Mark has no intrinsic or descriptive meaning, therefore making it a strong trademark.

Complainant contends that the Disputed Domain Name is confusingly similar to the LIDL Mark, because it contains the entirety of the distinctive element “lidl” of the LIDL Mark, with the addition of “viaggi”, meaning travel. Complainant further contends that the addition of descriptive terms to a trademark does not avoid a finding of confusing similarity. Complainant further contends that the Disputed Domain Name relates to Complainant’s travel services and that Complainant offers travel services for the Italian market under the domain name <lidl-viaggi.it>.

Complainant asserts that Respondent has no rights or legitimate interests in the Disputed Domain Name. Complainant further asserts that Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods or services. Respondent only offers the Disputed Domain Name for sale and displays performance advertising linked to competitors’ offers in order to generate revenues. The website to which the Disputed Domain Name resolves has sponsored links or pay-per-click advertising. Complainant further asserts that the operation of a link farm parking page does not establish rights or legitimate interests.

Complainant alleges that Respondent is not commonly known as “Lidl” and is using a privacy service to mask its identity. Complainant further alleges that it monitors all “Lidl” related marks or domain names and is not aware of Respondent or any other entity commonly identified as “Lidl”.

Complainant avers that Respondent used the Disputed Domain Name to display a parking page that invites Internet users to buy the Disputed Domain Name and displayed advertisement links. Such use excludes non-commercial or fair use.

Complainant argues that Respondent registered the Disputed Domain Name for the purpose of selling it to another person, evidenced by the website under the Dispute Domain Name displaying a notice that: “The domain lidl-viaggi.com is for sale …” and inviting interested persons to buy the Disputed Domain Name. The Disputed Domain Name is offered for sale on the website “www.sedo.com” for USD 328.

Complainant further argues that Respondent is intentionally diverting Internet users to its website by creating a likelihood of confusion with the LIDL Mark and the domain names used by Complainant and its affiliated enterprises in connection with the offering of travel services. Respondent is acting for commercial gain.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Respondent is not obliged to participate in a domain name dispute proceeding, but if it fails to do so, asserted facts that are not unreasonable would be taken as true and Respondent would be subject to the inferences that flow naturally from the information provided by Complainant (see Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441).

Even though Respondent has failed to file a response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify whether the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,

(ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,

(iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant contends that it has numerous registrations of the LIDL Mark and that its trademark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the LIDL Mark.

UDRP panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the LIDL Mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

Respondent has not contested the assertions by Complainant that it has valid registrations of the LIDL Mark. Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the LIDL Mark.

The Panel notes that the entirety of the primary element “Lidl” from the LIDL Mark is in the Disputed Domain Name. As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety typically is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. SeeRapidshare AG and Christian Schmid v. Majeed Randi, WIPO Case No. D2010-1089.

The addition of other terms in the Disputed Domain Name does not affect a finding that the Disputed Domain Name is identical or confusingly similar to the LIDL Mark. The Panel finds that the Italian word “viaggi” meaning travel is descriptive of services offered by Complainant.

The addition of the generic Top-Level Domain (“gTLD”) “.com” within the Disputed Domain Name, does not dispel any confusing similarity between the Disputed Domain Name and the LIDL Mark.

Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the LIDL Mark pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii).

Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, a respondent carries the burden of producing evidence of its rights or legitimate interests in the disputed domain name. Where a respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant has alleged: (1) Respondent had sponsored links on a pay-per-click basis on a link farm page which is not a bona fide use; (2) Respondent was not commonly known as “Lidl” and is using a privacy service to mask its identity; and (3) Respondent offered the Disputed Domain Name for sale and displayed links to other pages which shows commercial intent.

The Panel finds that Complainant has sustained its burden of making a prima facie case that the Respondent lacks rights to or legitimate interests in the Disputed Domain Name. Respondent has not responded in this proceeding.

Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four non-exclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(a)(iii) of the Policy:

(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or

(ii) you [Respondent] have 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 you [Respondent] have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your [Respondent’s] website or location or of a product.

Complainant further argues that Respondent is intentionally diverting Internet users for commercial gain to its website by creating a likelihood of confusion with the LIDL Mark and the domain names used by Complainant and its affiliated enterprises in connection with the offering of travel services. Respondent is acting for commercial gain.

Respondent has not contested these allegations of Complainant.

Therefore, the Panel finds that Respondent has violated paragraphs 4(b)(i) and (iv) of the Policy and that Complainant has satisfied the elements of paragraph 4(a)(iii) of the Policy.

7. Decision

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 <lidl-viaggi.com> be transferred to Complainant.

Richard W. Page
Sole Panelist
Date: August 10, 2016