WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LIDL Stiftung & Co. KG v. Whois Agent, Whois Privacy Protection Service, Inc / Michael Agostini
Case No. D2016-1642
1. The Parties
The Complainant is LIDL Stiftung & Co. KG of Neckarsulm, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Whois Agent, Whois Privacy Protection Service, Inc of Kirkland, Washington, United States of America (“US”) / Michael Agostini of Miami Beach, Florida, US.
2. The Domain Names and Registrars
The first disputed domain name <lidll-viaggi.com> is registered with eNom, Inc.
The second disputed domain name <lidl-viaggi.net> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2016. On August 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the first disputed domain name. On August 12, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name and contact information in the Complaint which differed from the first named Respondent, a privacy service and comprised registrant and contact information about the second-named Respondent, an individual. The Center sent an email communication to the Complainant on August 16, 2016, providing the details 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 August 19, 2016, and requested to add the second disputed domain name. On August 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the second disputed domain name. On August 24, 2016, the Registrar 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 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 August 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2016. The Center received two email communications from a person whose name matched the name of the Respondent on September 1 and September 6, 2016. No formal response was submitted. Accordingly, the Center notified the Respondent’s default on September 15, 2016.
The Center appointed Antony Gold as the sole panelist in this matter on September 29, 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
The Complainant is a member of Lidl-Group. Lidl-Group is one of the largest retail chains in Europe and operates almost 10,000 stores in multiple jurisdictions. The Complainant owns numerous national and international trade mark registrations for LIDL. These include, by way of example only, European Union trade mark number 1778679 for LIDL registered on August 22, 2002 in 31 separate classes. Members of Lidl-Group also offer travel services which, in Italy are provided through a website at “www.lidl-viaggi.it”. “Viaggi” is an Italian word for “travels”.
The first disputed domain name was registered on February 1, 2016. It presently redirects to the official Lidl website of the Complainant’s affiliate at “www.lidl-viaggi-it”. The second disputed domain name was registered on January 29, 2016. It does not presently point to any website.
5. Parties’ Contentions
The Complainant asserts that both the first and second disputed domain names are confusingly similar to trade marks in which it has rights. It provides details of its many LIDL trade marks and points out that the first disputed domain name comprises a misspelling of those trade marks, by the addition of an extra “l”, followed by a hyphen and then the word “viaggi”, being Italian for “travels”. The Complainant says that neither the addition of an extra “l” to its well-known LIDL trade mark nor the addition of a term descriptive (in Italian) of the services the Complainant’s affiliate provides serve to prevent the first disputed domain name from being confusingly similar to the Complainant’s LIDL mark. Additionally, it points out that the first disputed domain name is very similar to the domain name used by its affiliate website at “www.lidl-viaggi.it”.
The Complainant says that the issues relating to the second disputed domain name are essentially the same save that the first part of that domain name comprises an accurate spelling of the Complainant’s LIDL mark rather than a deliberate misspelling.
The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It says that, once it has made out a prima facie case in this respect, the burden of demonstrating rights or legitimate interests shifts to the Respondent. In support of this contention it refers to a number of earlier panel decisions and the summary provided relevant to this issue in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
So far as the first disputed domain name is concerned, the Complainant say that simply redirecting it to the website of the Complainant’s affiliate does not constitute use in connection with a bona fide offering of goods and services, not least because the Respondent is not offering any services through the Complainant’s website and the Complainant has not agreed to any such use. It points out that the Respondent is not commonly known by any of the words “Lidl”, “Lidll” or “Lidll-viaggi” not is it in any way linked to the Complainant or allowed to use its trade marks. Moreover, using the first disputed domain name to redirect Internet users to the website of the Complainant’s affiliate is not noncommercial or fair use.
Save that the second disputed domain name does not point to an active website, the Complainant’s submissions in relation to it are essentially the same.
Lastly, the Complainant says that the disputed domain names were registered and are being used in bad faith. As LIDL is a made-up word with no known meaning, which would not have been registered by chance, this establishes, the Complainant says, that the Respondent will have had actual knowledge of both the Complainant and the travel business of its Italian affiliate when registering the disputed domain names. It says also that the Respondent clearly knew of the Complainant and its business because the disputed domain names comprise a name substantially the same as its LIDL mark (albeit misspelt) which is coupled with an Italian word for travel, this being descriptive of the travel services provided by one of the Complainant’s affiliates.
So far as the first disputed domain name is concerned, the Complainant says that the failure of the Respondent to respond to its cease and desist letter coupled with the use of a privacy service to shield the true identity of the beneficial owner gives rise to an inference of bad faith use and registration. It refers to the decision in Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753, in support of this submission. The Complainant says also that since the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, it has been recognized that passive holding of domain names corresponding to famous trade marks can be considered bad faith registration in cases of inactive use. It says that simply pointing the first disputed domain name to the website of its affiliate should properly be regarded as inactive use of the type addressed in Telstra and that the fact that the second disputed domain name does not point to any website at all is plainly inactive use. The Complainant says that there is no conceivable plausible or active use which could be made of the disputed domain names which could avoid infringing the Complainant’s trade marks.
The Complainant further submits that the personal Respondent has engaged in a pattern of conduct to prevent the Complainant from reflecting its LIDL trade mark in a corresponding domain name and it refers in addition to other domain names relating to well-known third-party brands which the personal Respondent appears to have registered.
The Complainant adds that typosquatting, of the type evidenced in the first disputed domain name, itself constitutes registration and use in bad faith. It refers to the decision in National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011 and the panel’s definition of typosquatting, namely “Typosquatting, however, is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith”.
The Respondent did not reply to the Complainant’s contentions. The Panel notes that a person whose name matches the name of the Respondent sent two emails to the Center from an email address not linked to the disputed domain names indicating that while it owns two domain names associated with the brand, it had permission from the brand owner. The person further indicated that it did not register the disputed domain names and has nothing to do with the disputed domain names.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to serve a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant’s European Union trade mark number 1778679 for LIDL registered on August 22, 2002 in 31 separate classes is, in itself, sufficient for the Complainant to demonstrate that it has trade mark rights in LIDL.
When assessing the degree of similarity between a disputed domain name and a complainant’s trade mark it is established practice to generally disregard the generic Top Level Domain (“gTLD”) suffix (in these proceedings “.com” and “.net”). In the first disputed domain name, “lidll” comprises a slight misspelling of the Complainant’s mark. The presence of an additional “l” at the end of the mark does not serve to render the word dissimilar to the Complainant’s mark. Moreover coupling “Lidll” with a word, “viaggi”, which, in Italian, is descriptive of services the Complainant’s affiliate provides in the field of travel, does not avoid a finding of confusing similarity. The same reasoning applies in respect of the second disputed domain name save that the first element of the domain name is identical to the Complainant’s trade mark rather than similar to it.
Accordingly, the Panel finds that the disputed domain names are confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name, namely that:
(i) before any notice of the dispute, it can show use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) it can show that (as an individual, business, or other organisation) it has been commonly known by the domain name, even if no trade mark or service mark rights have been acquired; or
(iii) it can demonstrate a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
How these provisions are usually applied in practice is explained in the WIPO Overview 2.0. This says that the consensus view of panelists is that, “whilst the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
None of the grounds set out at 4(c) of the Policy would appear to be remotely applicable to the current facts and the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has failed to respond either to this Complaint or to a cease and desist letter sent on behalf of the Complainant in April 2016, prior to the filing of this Complaint. It has thereby declined to take the opportunities available to it to provide evidence which might suggest that it has a right or legitimate interest in the disputed domain names, whether on the specific grounds set out at paragraph 4(c) of the Policy or on any other basis.
Accordingly, the Panel finds that the Respondent does not have any legitimate interests in with respect to the disputed domain names.
C. Registered and Used in Bad Faith
The Panel accepts the Complainant’s submissions that its LIDL trade marks were well-known as at the date of registration of the first and second disputed domain names in February and January 2016 respectively. The coupling of domain names which incorporate the Complainant’s trade mark with a name descriptive of services offered by the Complainant points strongly to the Respondent’s awareness of the Complainant as at the time of registration and reinforces the likelihood of Internet users associating the disputed domain names with the Complainant. The registration of the disputed domain names point to an intention by the Respondent to benefit from the Complainant’s repute.
The underlying facts with respect to the inactive second disputed domain name are similar to the position addressed in Telstra Corporation Limited v. Nuclear Marshmallows, supra. In that case the panel had regard to a number of criteria in making a finding that passive holding could amount to bad faith use, including that the complainant’s trademark had a strong reputation and was widely known, the respondent had provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name, the respondent had taken active steps to conceal its true identity and it had actively provided, and failed to correct, false contact details, in breach of its registration agreement. Taking account of all those factors it had not been possible for the panel to conceive of any plausible actual or contemplated active use of the domain name by the respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the complainant’s rights under trademark law
Here, the Respondent has not filed any response to the Complainant’s contentions, has used a privacy service to hide its identity and the Panel cannot envisage any use that may be legitimate.
Use of the first disputed domain name to point the website of the Complainant’s affiliate is not passive holding of the type addressed in Telstra. But whether the disputed domain name is inactive, as in Telstra, or points to a parking page containing sponsored links (as in Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273, for example) or points to a website of the Complainant’s affiliate, as in these proceedings, the underlying issue is essentially the same. In each case a respondent’s actions or inactivity do not dispel a finding that use by the respondent is either nil or token and that it is not possible to conceive of an actual use that would not infringe the complainant’s trade mark rights.
Rather, by pointing the disputed domain name to the Complainant’s affiliate’s website, the Respondent likely sought to misrepresent itself as an entity affiliated with the Complainant. Against this backdrop, the Respondent’s passive holding of a second domain name does not prevent a bad faith finding.
The Panel accordingly finds that the disputed domain names were registered and used in bad faith. It is therefore unnecessary to consider the Complainant’s additional submissions.
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 names, <lidll-viaggi.com> and <lidl-viaggi.net> be transferred to the Complainant.
Date: October 13, 2016