WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lidl Stiftung & Co. KG (Lidl International), SNC Lidl (Lidl France) v. Registration Private, Domains By Proxy / Emanuel Rassi
Case No. D2018-1600
1. The Parties
The Complainants are Lidl Stiftung & Co. KG (Lidl International) of Neckarsulm, Germany, and SNC Lidl (Lidl France) of Strasbourg, France, represented by Addax Avocats, France.
The Respondent is Registration Private, Domains By Proxy of Scottsdale, Arizona, United States of America (“United States”) / Emanuel Rassi of Paris, France.
2. The Domain Name and Registrar
The disputed domain name <lidl-67.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2018. On July 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 16, 2018, 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 the Complainants on July 24, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on August 6, 2018.
The Center verified that the Complaint together with the amended 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 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2018.
The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on September 14, 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
Lidl group operates hundreds of supermarkets all over Europe. It has subsidiaries in several European countries, all of them being named Lidl along with the indication of the country where it is operating. Examples: Lidl France, Lidl Italia, Lidl UK. The mother company is named Lidl International.
Lidl International owns several national, European and international trademark registrations containing the word “LIDL”, such as the following:
- European Union word trademark LIDL no. 001778679, registered on September 20, 2002;
- European Union figurative trademark No. 001779784, registered on November 12, 2001.
Lidl France runs supermarkets in France and has a registered license right to use the European trademarks LIDL no. 001778679 and no. 001779784 owned by Lidl International.
The Complainants own several domain names containing the word “LIDL”, among which:
- <lidl.com> was registered on February 20, 2000;
- <lidl.net> was registered on April 17, 2009;
- <lidl.fr> was registered on July 21, 1998.
The disputed domain name is <lidl-67.com>, registered on May 15, 2018. Mr. Emanuel Rassi is the owner of this domain name. The disputed domain name does not redirect to an active website. The Respondent has set up email servers for the disputed domain name. The Respondent can send emails through the email address “@67lidl.com”. The Respondent sent emails pretending that he is working as a manager at Lidl, using the Complainant’s address in France. These emails are sent to French and foreign suppliers, to persuade them that Lidl France is interested in purchasing their products, in order to obtain the delivery of important quantities of goods without paying anything.
5. Parties’ Contentions
The Complainants contend that the disputed domain name <lidl-67.com> reproduces the European Union LIDL trademarks.No. 001778679 and No. 001779874.
The Complainants are currently facing a well-organized fraud which consists of misleading food suppliers through contact made by persons via emails and/or phone calls pretending they are Lidl executives. In order to look credible, they use domain names including the LIDL trademarks, like the disputed domain name, to create email addresses which incorporate them.
This practice is used by the fraudsters to send messages to suppliers located in the European Union and make them believe they are really dealing with Lidl. Their goal is to place purchase order and obtain the delivery of goods to places which are not in Lidl’s facilities. Once they get the products, they disappear without paying anything to the suppliers.
The Respondent presents himself as a manager of Lidl France to obtain the delivery of important quantities of goods without paying anything.
The Complainants contend that the disputed domain name <lidl-67.com> is confusingly similar to their trademarks, by reproducing the distinctive element “LIDL”. They claim that the addition of the number 67 “reinforces this likelihood of confusion between the domain name and the trademarks” because 67 refers to the French department Bas-Rhin, where the headquarters of Lidl France are located.
Consequently, Internet users therefore believe that the Respondent is at least economically linked to the Complainants.
In addition, there is no business relationship between the Complainants and the Respondent. The latter has no license or any right to use the Complainant’s trademarks. The Complainants have never authorized the Respondent to register a domain name reproducing the name Lidl. The Respondent does not make a fair use of the disputed domain name.
The Complainants contend that the LIDL trademarks are well known in France and in Europe by consumers and food suppliers. There is no doubt that the Respondent knew these trademarks when he registered the disputed domain name <lidl-67.com>.
The intended purpose is to appear credible to the suppliers and be able to order large quantities of products, without making advanced payment.
The Complainants are, in the same way as the suppliers, victims of these misleading actions, which affect their trademarks, but also their commercial image and credit.
In view of these elements, there is no doubt that the disputed domain name was registered and is used in bad faith by the Respondent.
The Complainants asked for the transfer of the disputed domain name to Lidl Stiftung & Co. KG, which is the LIDL trademarks’ owner.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainants to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights.
The Complainants have submitted evidence of their registered LIDL trademark rights.
The disputed domain name is composed of the Complainants’ LIDL trademark, followed by a dash and the number 67. This number refers to the number of the French department “Bas-Rhin”, where the headquarters of Lidl France are located.
The Respondent signs its fraudulent emails pretending that he is a manager at Lidl France, and using the address of Lidl France in Strasbourg (referenced by use of the number 67).
The Panel finds that the disputed domain name <lidl-67.com> is confusingly similar to the Complainants’ LIDL trademarks.
The conditions of paragraph 4(a)(i) of the Policy have therefore been satisfied.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
The Respondent did not respond to the Complaint. Consequently, it did not provide any evidence or allege any circumstance to establish that he has rights or legitimate interests in the disputed domain name.
The Respondent has not been licensed or authorized to use the LIDL trademarks or to register the disputed domain name.
The Respondent does not make a fair or noncommercial use of the disputed domain name. On the contrary, the Respondent has set up email servers for the disputed domain name and he has sent emails through the email address “[…]@67lidl.com” with intent for a commercial gain, sending misleading emails to the Complainants’ suppliers.
In the circumstances of this case, the Panel finds that the Complainants have established a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain name, which the Respondent has not rebutted. The conditions of paragraph 4(a)(ii) of the Policy have therefore been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a Panel to be evidence of bad faith registration and use of a domain name. It provides that:
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that the respondent has registered or the respondent has 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 your 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 the respondent’s website or location.”
Given the well-known character of the LIDL trademarks, the Panel finds that the Respondent could not ignore the Complainants’ rights in the LIDL trademarks when he registered the disputed domain name. In this regard, the addition of the number “67” which designates the French department where the French subsidiary of the Complainants has its headquarters proves that the Respondent has registered the domain name primarily for the purpose of disrupting the Complainants’ activities, to his own and sole benefit.
The Complainants have provided evidence that the Respondent has set up email servers for the disputed domain name and has used these addresses to impersonate the French company LIDL FRANCE and send fraudulent emails to the Complainant’s suppliers.
The Panel finds that the disputed domain name was registered in bad faith with the Complainants in mind, to disrupt the Complainants’ activities, for commercial gain, by creating a likelihood of confusion with the Complainants’ LIDL email addresses and trademarks. Thus, the disputed domain name is being used in bad faith.
Given the foregoing, the Panel determines that, according to paragraph 4(b)(iv) of the Policy, 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 Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
For all the above reasons, the Panel is of the opinion that the Complaint satisfies the requirements of paragraph 4(a)(iii) that the disputed domain name was registered and is being used in bad faith by the Respondent.
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-67.com>, be transferred to the Complainant, Lidl Stiftung & Co. KG (Lidl International).
Date: September 27, 2018