WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LIDL Stiftung & Co. KG v. Alessandro Ceci
Case No. D2019-0410
1. The Parties
The Complainant is LIDL Stiftung & Co. KG of Neckarsulm, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Alessandro Ceci of Rome, Italy.
2. The Domain Name and Registrar
The disputed domain name <lidlitalia.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2019. On February 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. The same day, 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 Complainant on February 25, 2019, providing the registrant 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 February 25, 2019.
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 March 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 27, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 28, 2019.
The Center appointed Daniel Kraus as the sole panelist in this matter on April 9, 2019. 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 belongs to the Lidl group, a global discount supermarket chain based in Germany. The Complainant operates more than 10,000 supermarkets all over Europe and the United States of America. It has subsidiaries in 28 European countries, including 600 in Italy.
The Complainant owns several national, European Union and international trademark registrations containing the word “lidl”, such as the following:
- International word trademark LIDL No. 585719, registered on December 12, 1991;
- European Union word trademark LIDL No. 001778679, registered on August 22, 2002;
- European Union figurative trademark No. 001779784, registered on November 12, 2001.
The Complainant promotes its trademarks worldwide with numerous websites, including websites directed to users in specific countries, amongst which <lidl.com>, <lidl.net> or <lidl.fr>.
A website directed to users in Italy is available under <lidl.it>.
The disputed domain name is <lidlitalia.com>, registered on October 15, 2018. According to information received from the Registrar, Alessandro Ceci is the owner of this domain name. The disputed domain name does not redirect to an active website. The Respondent uses the disputed domain name in an email address “email@example.com” to send fraudulent emails to third parties in which he impersonates a sales manager at Lidl Italia Srl. With these emails, the Respondent misleadingly creates the impression that Lidl Italia Srl is interested in business relations with the addressee of the emails. The Respondent then orders goods fraudulently benefiting of the Complainants reputation, and never pays for those goods. Such frauds have already been the object of similar cases, such as Lidl Stiftung & Co. KG (Lidl International) and SNC Lidl (Lidl France) v. Emanuel Rassi, WIPO Case No. D2018-1600, in which large sums have already been involved.
5. Parties’ Contentions
The Complainant first contends that the disputed domain name <lidlitalia.com> includes its above‑mentioned trademarks and is confusingly similar to its trademarks, by reproducing the entire trademark, LIDL. The addition of the geographical indication “italia” does not prevent a finding of confusing similarity and insinuates that the domain name belongs to an entity of the Lidl group in Italy. Consequently, Internet users therefore believe that the Respondent is at least economically linked to the Complainant.
The Complainant further establishes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. On the contrary, the Complainant is currently facing a well-organized fraud as described above, which consists of misleading suppliers through contact made by persons via emails 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 that incorporate them.
This practice is used by the fraudsters to send messages to suppliers and make them believe they are really dealing with Lidl. Their goal is to place purchase orders and obtain the delivery of goods without paying the suppliers. In this particular case, the Respondent presents himself as a manager of Lidl Italia Srl to obtain the delivery of quantities of octopuses without paying anything.
There is no business relationship between the Complainant and the Respondent. The latter has no license or any right to use the Complainant’s trademarks. The Complainant has 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. On the contrary: he has willingly created a risk of confusion by using the Complainant’s trademark in its email address based on the disputed domain name.
In view of these elements, there is no doubt that the disputed domain name was registered and is being used in bad faith by the Respondent.
The Complainant asks for the transfer of the disputed domain name to LIDL Stiftung & Co. KG.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant submitted evidence of its registered LIDL trademark rights.
The disputed domain name is composed of the Complainant’s LIDL trademark, followed by “italia”, where the trademark is clearly recognizable.
The Panel finds that the disputed domain name <lidlitalia.com> is confusingly similar to the Complainant’s 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, he 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 “firstname.lastname@example.org” with intent for a commercial gain, sending misleading emails to the Complainant’s suppliers.
In the circumstances of this case, the Panel finds that the Complainant has 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 the following:
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 its website or other online 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 Complainant’s rights in the LIDL trademarks when he registered the disputed domain name. In this regard, the addition of the reference to Italy proves that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the Complainant’s activities, to his own and sole benefit.
The Complainant provided evidence that the Respondent has set up email servers for the disputed domain name and has used these addresses to impersonate the Italian subsidiary of the Lidl Group and send fraudulent emails to the Complainant’s suppliers.
The Panel finds that the disputed domain name was registered in bad faith with the Complainant in mind, to benefit from its reputation and undertake phishing activities for commercial gain, by creating a likelihood of confusion with the Complainant’s LIDL trademarks and email addresses. 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 disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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 <lidlitalia.com> be transferred to the Complainant.
Date: April 19, 2019