WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LIDL Stiftung & Co. KG v. Domain Administrator, Modern Empire Internet Ltd.
Case No. D2018-0523
1. The Parties
Complainant is LIDL Stiftung & Co. KG of Neckarsulm, Germany, represented by HK2 Rechtsanwälte, Germany.
Respondent is Domain Administrator, Modern Empire Internet Ltd. of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <lild.com> (the "Domain Name") is registered with Sea Wasp, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 8, 2018. On March 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 8, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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" 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 March 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 5, 2018.
The Center appointed Dinant T. L. Oosterbaan as the sole panelist in this matter on April 10, 2018. 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 belongs to the Lidl-Group, a global discount supermarket chain based in Germany. Complainant operates more than 10,000 stores all over Europe and the United States of America with approximately 315,000 employees. Currently its stores can be found in 28 countries.
According to the evidence submitted by Complainant, Complainant has obtained multiple registrations for the trademark LIDL, including:
- German trademark LIDL number 2006134, registered on November 11, 1991;
- European Union Trade Mark LIDL number 001778679, filed on July 27, 2000 and registered on August 22, 2002;
- International trademark LIDL number 531768, registered on May 20, 1988.
In addition Complainant has multiple domain names and websites containing the LIDL mark, in particular websites under "www.lidl.com". A website directed to Internet users in Hong Kong (the domicile of Respondent) is available under "www.lidl.com.hk".
The Domain Name <lild.com> was registered on May 22, 2002. The Domain Name previously redirected to the Complainant's German website "www.lidl.de" via several ad-servers. After filing of the Complaint, the Domain Name redirects to various websites including a pay-per-click website. The German and International trademark registrations were issued prior to the registration of the Domain Name.
5. Parties' Contentions
According to Complainant the Domain Name is confusingly similar to the trademarks LIDL of Complainant. The Domain Name consists of a common, obvious and intentional misspelling of the trademark LIDL and contains sufficiently recognizable aspects of Complainant's trademarks. The letters "l" and "d" are inversed. The Domain Name relates to Complainant's trademark, insinuating that the Domain Name belongs to an entity of the Lidl-Group. Therefore Internet users will expect a website of Complainant under the Domain Name.
Complainant submits that Respondent has no rights or legitimate interests in respect of the Domain Name. The website under the Domain Name does not resolve to a website of Respondent, but redirects (via several ad-servers and placing cookies) users to the website "www.lidl.de", which belongs to and is operated by a company of the Lidl-Group. Utilizing the Domain Name to redirect users to the website under "www.lidl.de" is neither noncommercial nor fair use. In addition Complainant asserts that Respondent did not obtain any authorization by Complainant or any other company of the Lidl-Group to use Complainant's trademarks. There is no actual bona fide offering of goods or services under the Domain Name and there is no indication of Respondent's 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. To the contrary, Respondent uses the Domain Name to redirect users to Complainant's website. He therefore does not offer goods or services at all. Complainant finally submits that Respondent is not commonly known by the names comprised in the Domain Name. Respondent is not commonly known by "lidl" or "lild" but by "Modern Empire Internet Ltd." There is no indication that any person or entity of this name is in whatever way permitted to use Complainant's trademarks.
Complainant submits that the Domain Name was registered and is being used in bad faith. According to Complainant the mere registration of the Domain Name that is identical or confusingly similar (particularly domain names comprising typos) to the famous or widely-known LIDL trademark by an unaffiliated entity can by itself create a presumption of bad faith. By registering and using a typo of Complainant's trademark as Domain Name and redirecting users to Complainant's German website, Respondent has (and still does) intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location. Respondent seeks to cause confusion for his own commercial benefit since by registering a Domain Name confusingly similar to Complainant's trademarks he attracts users (traffic) to his website and therefore makes it more valuable when selling. Moreover, when redirecting users to Complainant's website via several ad-servers, Respondent also sets cookies. It is very likely that Respondent benefits financially from this. Respondent lacks any rights to and has no legitimate interests in the Domain Name. Respondent redirects the Domain Name to Complainant's own website and in this way retains control over the redirection, thus creating a real or implied ongoing threat to Complainant. Furthermore there is no conceivable good faith use of the Domain Name.
According to Complainant in the present case the circumstances (i.e., very strong reputation of the trademark LIDL worldwide since decades) indicate that Respondent had actual knowledge of Complainant's trademark LIDL when registering the Domain Name. Without prior knowledge of Complainant's trademarks, the registration of the Domain Name would not make any sense, since "lild" is no word in German, English or Chinese. This assumption is confirmed by Respondent redirecting users to Complainant's website, thus confirming, that he is aware of the connection to Complainant and its trademarks.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
Paragraph 4(a) of the Policy requires that the complainant proves each of the following three elements to obtain an order that the disputed domain name should be transferred or cancelled:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the 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 has been registered and is being used in bad faith.
The Panel will proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in this proceeding.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must first of all establish rights in a trademark or service mark and secondly that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant has established that it is the owner of trademark registrations for LIDL.
The Domain Name consists of the obvious and intentional misspelling of the LIDL trademark as the letters "l" and "d" of the trademark are inversed in the Domain Name. This obvious misspelling in the Domain Name, also referred to as typosquatting, is insufficient to avoid a finding of confusing similarity.
The Panel finds that Complainant has proven that the Domain Name is confusingly similar to Complainant's LIDL trademark and paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
In the opinion of the Panel, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Complainant has not licensed or otherwise permitted Respondent to use any of its LIDL trademarks or to register the Domain Name incorporating its marks. Respondent is not making a legitimate noncommercial or fair use of the Domain Names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant. Based on the undisputed submission and evidence provided by Complainant, Respondent only uses the Domain Names in order to redirect Internet users via several ad-servers to one of Complainant's websites. The Panel notes that the Domain Name is also used to resolve to a pay-per-click parking website which contains links not only to websites of Complainant but also to different categories which contain links to competitors of Complainant. Such redirection and use cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. In addition, the website does not accurately and prominently disclose the relationship between Respondent and Complainant as the holder of the well-known LIDL trademarks, in particular as there has never been any business relationship between Complainant and Respondent. Respondent is also not commonly known by the Domain Name nor has it acquired any trademark rights.
No Response to the Complaint was filed and Respondent has not rebutted Complainant's prima facie case.
Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name and paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Name has been registered and is being used in bad faith. The trademarks of Complainant have been existing for a long time and are well-known. The Panel notes that Complainant's registrations of its German and International trademarks predate the registration date of the Domain Name. Respondent knew or should have known that the Domain Name is an obvious and intentional misspelling of Complainant's LIDL trademarks.
The Panel notes that the Domain Name previously redirected Internet users to the website "www.lidl.de" and currently redirects to various third-party websites including a pay-per-click parking website which contains links not only to websites of Complainant but also to different categories which contain links to competitors of Complainant, which indicates, in the circumstances of this case, that Respondent registered and uses the Domain Name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
The Panel also notes that Respondent has been found to have registered and used domain names in bad faith in multiple other cases under the Policy, which suggests a pattern of such conduct on the part of Respondent (see Brunswick Corporation, Brunswick Bowling & Billiards Corporation v. Modern Empire Internet Ltd., WIPO Case No. D2012-1694; Redcats USA, L.P. v. Modern Empire Internet Ltd., WIPO Case No. D2007-1668; Forest Laboratories, Inc. v. Modern Empire Internet Ltd., WIPO Case No. D2007-0974; Joseph Patelson Music House, Ltd. v. Modern Empire Internet Ltd., WIPO Case No. D2007-0723; The University of Windsor v. Modern Empire Internet Limited, WIPO Case No. D2006-1238; Army and Air Force Exchange Service (AAFES) v. Modern Empire Internet Ltd., WIPO Case No. D2006-0510; Vicman Software, Inc. and Sazhin, Victor Victorovich v. Modern Empire Internet Limited, WIPO Case No. D2006-0205; Swarovski A.G v. Modern Empire Internet Ltd., WIPO Case No. D2006-0148; NBTY, Inc. v. Modern Empire Internet Ltd., WIPO Case No. D2005-0832; Weld Racing, Inc. v. Modern Empire Internet Limited, WIPO Case No. D2005-0305 and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Finally, the Panel's finding is not affected by any delay in filing the Complaint between 2002 (the registration date of the Domain Name) and March 2018. Remedies under the UDRP Policy are injunctive and aim to avoid ongoing or future confusion as to the source of communications, goods or services, also in view of the fact that the German and International LIDL trademarks of Complainant were already registered well before the registration date of the Domain Name. See section 4.17 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") that a delay in bringing a complaint does not bar a complainant from filing a case under the UDRP: "Panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits. Panels have noted that the UDRP remedy is injunctive rather than compensatory, and that a principal concern is to halt ongoing or avoid future abuse/damage, not to provide equitable relief."
The Panel finds that Complainant has proven that the Domain Name has been registered and is being used in bad faith and paragraph 4(a)(iii) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <lild.com> be transferred to Complainant.
Dinant T. L. Oosterbaan
Date: April 19, 2018