WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LIDL Stiftung & Co. KG v. beats

Case No. D2020-2659

1. The Parties

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

The Respondent is beats, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <lidll.com> is registered with Megazone Corp., dba HOSTING.KR (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2020. On October 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 14, 2020, 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.

On October 15, 2020, the Center transmitted an email in Korean and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on October 16, 2020. The Respondent did not comment on the language of the proceeding.

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 the Respondent of the Complaint, and the proceedings commenced on October 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2020.

The Center appointed Andrew J. Park as the sole panelist in this matter on November 25, 2020. 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, LIDL Stiftung & CO. KG is an international discount supermarket chain that was founded in Germany in 1973 and belonged to the LIDL-Group. During the 1990s, the Complainant began opening stores outside of Germany and within a few years, it had stores all across Europe. Now, it operates over 10,000 stores with over 285,000 employees across Europe and the United States of America. The Complainant also offers various additional services such as a mobile network and travel services.

The Complainant owns various national and International trademark registrations for “Lidl”, including registrations covering the Republic of Korea. The LIDL-Group promotes the Complainant’s trademarks worldwide with websites under the domain names <lidl.com>, <lidl.de>, <lidl.fr>, <lidl.es> and <lidl.com.hk>.

The disputed domain name <lidll.com> was registered by the Respondent on August 8, 2014.

The disputed domain name does not resolve to an active website, but to a default parking page hosted by “www.sedo.com” displaying product categories that are not connected to third-party links.

As noted above, the Complainant, following the filing of the Complaint with the Center, requested for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding and did not submit its response to the Complaint.

5. Parties’ Contentions

A. Complainant

1. The Complainant, following the filing of the Complaint with the Center, requested that the language of proceedings be English, providing four main reasons.

(a) The Complainant is a German company and its official language is German, therefore, the Complainant and its representative have no familiarity with the Korean language.

(b) Both the name of the Respondent and the given email address indicate the Respondent’s knowledge of the English language as both consist of English terms written in Latin characters. The disputed domain name <lidll.com> is also written in Latin characters.

(c) Proceeding in Korean and requiring the Complainant to translate the Complaint and all other supporting documents into Korean will impose a burden on the Complainant and delay the procedure.

(d) English is a neutral language, affording no particular benefit to either party.

2. The Complainant contends that the disputed domain name should be transferred to the Complainant because:

(a) the disputed domain name <lidll.com> is identical and confusingly similar to the Complainant’s trademark “Lidl” in which the Complainant has rights. The Complainant’s trademark “LIDL” is derived from the name of a co-founder of Lidl Supermarkets and has no meaning in English or German. It is an inherently distinctive mark and of strong international reputation. The disputed domain name <lidll.com> consists of a common, obvious and intentional misspelling of the Complainant’s trademark “Lidl” and contains sufficiently recognizable aspects of the Complainant’s trademark. The mere addition of another “l” to the mark “Lidl” does not serve to render the word dissimilar to the Complainant’s mark, rather it is a clear act of typo-squatting. Also, the addition of the specific top level of a domain such as “.com”, “.org”, “.tv”, or “.net” does not affect the domain name for purpose of determining the identity or similarity of a domain name and a trademark.

(b) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant claims that the Respondent lacks any right or legitimate interest in the disputed domain name because:

i) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and,

ii) there is no indication of the Respondent’s use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services. The disputed domain name does not resolve to an active website but just a parking page.

iii) In addition, the Respondent is not commonly known by the disputed domain name. The Complainant or any other company of the LIDL-Group has never granted permission to the Respondent to use its trademark. The Complainant is monitoring its trademarks “Lidl” and would be aware if there were any relevant trademark or trade name right of third parties.

(c) the disputed domain name was registered and is being used in bad faith. The Complainant claims that:

i) the Respondent has acquired and registered the disputed domain name in bad faith primarily for the purpose of selling, renting, or otherwise transferring the domain registration to the owner of the trademark or service mark or to a competitor of the Complainant, for a valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name. A search conducted on October 10, 2020 on “www.sedo.com” reveals that the Respondent is publicly offering the disputed domain name for sale in a way that Internet users can make an offer for the disputed domain name. The minimum offer set by the Respondent amounts to USD300.00. Also, the fact that the disputed domain name is a typo of the Complainant’s trademark is, itself, evidence that the Respondent knew or should have known of the registration and use of the Complainant’s trademark prior to the registration of the disputed domain name, which indicates that the Respondent intentionally registered the disputed domain name which is identical or confusingly similar to the Complainant that is a famous and widely known trademark owner. This creates a presumption of bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

ii) the Respondent is using the disputed domain name in bad faith. There is no conceivable legitimate interest for the use of the disputed domain name and there is no plausible, actual, or contemplated active use of the disputed domain name by the Respondent. As such, it can be considered to be a passive holding of the disputed domain name by the Respondent. Passive holding infers bad faith registration and use since the Complainant’s trademark is very distinctive and has a strong reputation, and also because the Respondent conceals its identity, and the domain name cannot be used in good faith.

iii) the Respondent has engaged in a pattern of registering trademark-abusive domain names. It has been found to have registered and used such domain names in bad faith in multiple other cases under the Policy, which suggests a pattern of such conduct on the part of the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of the Proceeding

The Registration Agreement for the disputed domain name is in Korean. Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the proceeding shall be the language of the Registration Agreement, i.e., Korean, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraphs 10 and 11(a) of the Rules. In coming to this decision, the Panel has taken the following into account:

1) The Complaint has been submitted in English and it would cause undue delay and expense if the Complainant were required to translate the Complaint and other documents into Korean;

2) The Panel is proficient in both English and Korean, capable of reviewing all the documents and materials in both languages and giving full consideration to the Parties’ respective arguments; and

3) The Complainant and the Respondent use different languages, and neither of them likely understands the language of the other party. The Complainant is located in Germany while the Respondent is from the Republic of Korea. Therefore, English would be a fair language for both Parties.

In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English and the Respondent’s communications in Korean; (2) consider any relevant materials in Korean; and (3) issue a decision in English.

B. Identical or Confusingly Similar

This element consists of two parts: first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.

The Panel finds that the Complainant has established registered rights in the trademark LIDL and that the disputed domain name is nearly identical to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety, and the addition of an extra “l” at the end of the word “lidl” to form the disputed domain name does not create any measurable level of distinction. Further, the use of the gTLD extension “.com” may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (see Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182).

Further, the Panel notes that Section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. The Panel finds that the disputed domain name <lidll.com> is an obvious misspelling of the Complainant’s trademark as it adds one more letter “l” to the Complainant’s trademark but is otherwise identical to the Complainant’s trademark. This act is commonly referred to as “typosquatting” and creates a virtually identical or confusingly similar mark to the Complainant’s trademark.

For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark.

C. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

Here, the Panel finds that the Complainant has made out a prima facie case.

The Panel finds that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. The Respondent has shown no actual intention to use the disputed domain name since it registered the disputed domain name in 2014. The disputed domain name resolved to a website offering pay-per-click (“PPC”) links. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name. Also, there is no evidence that the Respondent has an intention to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel’s view is that these facts may be taken as true in the circumstances of this case and in view of the use of the disputed domain name.

Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:

(i) circumstances indicating that the respondent has registered or 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.

The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraph 4(b)(i) by registering the disputed domain name in order to sell the disputed domain name to the public or the Complainant in an amount in excess of the Respondent’s costs related to the disputed domain name.

As stated previously, the Respondent did not file any response to the Complaint, failing thereby to rebut the Complainant’s allegations of the Respondent’s bad faith registration and use of the disputed domain name.

Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).

The Panel finds that the Complainant has registered the trademark, LIDL in 1991 and has been using as its trademark for more than 30 years. The website which the disputed domain name resolved to has been inactive since its initial registration and there is no evidence whatsoever that the Respondent is currently using or is commonly known by, has used or has been commonly known under, or has a bona fide intent to use or be commonly known under the disputed domain name.

In addition, as stated above, the Panel finds that the disputed domain name consists of an obvious misspelling of the Complainant’s trademark and is therefore a typosquatting variation of the Complainant’s distinctive trademark, all of which serves as further evidence of the Respondent’s bad faith registration and use of the disputed domain name.

Accordingly, the evidence, which is not rebutted by the Respondent, shows that the Respondent has sought to take unfair advantage of the similarity between the disputed domain name and the Complainant’s trademark in violation of paragraph 4(b) of the Policy. As the conduct described above falls squarely within paragraph 4(b)(i) of the Policy, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii).

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 <lidll.com> be transferred to the Complainant.

Andrew J. Park
Sole Panelist
Date: December 9, 2020