WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LIDL Stiftung & Co. KG v. Nikita Serov, Serovagency

Case No. D2021-0519

1. The Parties

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

The Respondent is Nikita Serov, Serovagency, Russian Federation.

2. The Domain Names and Registrar

The disputed domain names <juicerlidl.online>, <lidl-club.online>, <lidlclub.online>, <lidlkids.club>, <lidlshop.online>, <lidltester.club> (the “Disputed Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2021. On February 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 19, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 22, 2021 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, 2021.

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 March 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 29, 2021.

The Center appointed Ike Ehiribe as the sole panelist in this matter on April 20, 2021. 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 in this administrative proceedings is LIDL Stiftung & Co. KG, a German corporation with its principal office in Neckarsulm, Germany. The Complainant is said to belong to the LIDL-Group which is described as a famous global discount supermarket chain based in Germany. The Complainant is said to operate well over 10,000 stores with over 285,000 employees in stores to be found in more than 29 countries. The Complainant in addition offers other services such as travel services and mobile phone network services. The Complainant owns several national and International trademark registrations for the LIDL trademark as indicated in an annex attached to this Complaint, including International trademark No. 974355, registered on May 9, 2008. The Complainant also promotes its trademarks world wide through websites such as “www.lidl.de”, “www.lidl.com”, “www.lidl.uk”, “www.lidl.fr”, “www.lidl.it”, “www.lidl.com.hk”, “www.lidl.es”, “www.lidl.cn”, and “www.lidl.pl”. The trademark LIDL is further described as an inherently distinctive mark of strong international reputation but with no meaning in English, German, French or Dutch given that it is derived from the name of a co-founder of the Lidl supermarkets. The Complainant has further listed twelve other similar UDRP decisions in which it has successfully challenged other respondents for infringement of its trademark in cyberspace.

The Respondent is Nikita Serov, of Serovagency said to be based in the Russian Federation. According to the WhoIs database, the Respondent registered all six Disputed Domain Names with the same registrar being GoDaddy.com, LLC. The Respondent has registered the Disputed Domain Names on the following dates:

<lidltester.club>, registered on March 12, 2020,
<lidl-club.online> registered on April 16, 2020,
<lidlkids.club> registered April 17, 2020,
<lidlclub.online> registered on August 31, 2020,
<juicerlidl.online> registered on September 17, 2020; and
<lidlshop.online> registered on October 12, 2020.

The Disputed Domain Names merely resolve to blocked web page notices due to possible fraudulent activity or login pages.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Disputed Domain Names are identical or confusingly similar to the Complainant’s LIDL trademark; As with each Disputed Domain Name the Complainant’s relevant trademark is clearly recognizable. The Complainant further submits that the addition of other generic terms does not prevent a finding of confusing similarity following section 1.8. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Reliance is further placed on a previous UDRP decision in Lidl Stiftung & Co. KG v. SellDa GmbH, WIPO Case No. D2008-0724 where the Panelist held: “It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words.” With respect to <lidl-strom.com>, <lidlstrom.com>, <lidlstrompaket.com>and <lidl-strompaket.com>. With particular reference to the descriptive terms used by the Respondent; Namely, “club”, “shop”, “tester”, “kids” and “juicer”, the Complainant argues that the use of these terms suggest the Disputed Domain Names are connected to the Complainant as Internet users would expect websites of the Complainant or one of its affiliates under all of the Disputed Domain Names.

The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. To establish this requirement of the Policy, the Complainant submits that the Complainant is only required to make out an initial prima facie case that the Respondent lacks the rights or legitimate interests and thereafter it is for the Respondent to discharge the burden of demonstrating that it possesses the rights or legitimate interests in the Disputed Domain Names, following the decision in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. The Complainant further argues that the Respondent is not using the Disputed Domain Names in connection with a bona fide offering of goods and services nor has it made demonstrable preparations to do so. The Complainant in this regard further draws attention to the attached evidence that shows that some of the Disputed Domain Names resolve to blocked webpage notices due to detection of fraudulent activity or to login pages: none of these activities it is argued suggest a bona fide offering of goods and services. On the contrary, it is submitted that these activities suggest either passive holding or possibly fraudulent activities, following Monster Energy Company v Nikita Serov, serovagency, WIPO Case No. D2020-2265 with respect to <monster-energy.uno>. The Complainant submits further that the Disputed Domain Names cannot be used fairly by the Respondent because the Disputed Domain Names are obviously confusing and diverting given that the Disputed Domain Names also consist of a trademark and an additional term which effectively impersonates or suggests sponsorship or endorsement by the trademark owner. In support of this contention the Complainant relies on section 2.5.1 of the WIPO Overview 3.0. See also Lidl Stiftung & Co. KG v. Ravshan Nabiev, WIPO Case No. D2020-3108 concerning the domain name <mylidl.space>. Finally, in this regard the Complainant submits that the Respondent is not commonly known by the Disputed Domain Names and neither did the Complainant grant the Respondent permission to use the LIDL trademark in combination with terms such as the Respondent has done.

As regards the question of bad faith registration and use, the Complainant refers to numerous previous UDRP decisions which confirm that the Respondent has engaged in the past in abusive domain name registration targeting a variety of other famous trademarks as indicated in a reverse WhoIs Lookup report attached as annex 7 to the Complaint. The Complainant therefore, advances the point that a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain registration following (WIPO Overview 3.0, section 3.1.2). The Complainant contends further that the mere registration of a domain name that is identical or confusingly similar (particularly domain names incorporating trademark and a descriptive term) to a famous trademark by an unaffiliated entity can by itself create a presumption of bad faith pursuant to paragraph 4(b)(iv) of the Policy following (section 3.1.4, WIPO Overview 3.0.). The Complainant submits further that the Respondent knew or should have known of the registration and use of the Complainant’s trademark prior to registration of the Disputed Domain Names; considering that the registration of the Disputed Domain Names post dates by decades, the Complainant’s use of its trademarks and business activities as a very famous discount supermarket chain. In support of this contention the Complainant states that the reputation of the Complainant has already been recognised in several UDRP decisions including in a recent decision in Lidl Stiftung & Co. KG v. Contact Privacy Inc. Customer 1245982556/ lidl France, WIPO Case No. D2020-1095.

Still on the question of bad faith use and registration the Complainant states that the non-use of a disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding, following (WIPO Overview 3.0., section 3.3). See also Telestra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 where it was held that the registration of domain names corresponding to a famous trademark can be considered bad faith registration and use in cases of inactive use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions, in the circumstances, the Panel shall draw such adverse inferences from the failure of the Respondent to reply as it considers appropriate.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed in the administrative proceeding the Complainant must prove that:

i) the Disputed Domain Names are identical and confusingly similar to the trademark or service mark of the Complainant;

ii) the Respondent has no rights or legitimate interest in respect of the Disputed Domain Names; and

iii) the Disputed Domain Names have been registered and are being used in bad faith.

As expressly stated in the Policy the Complainant must establish the existence of each of these three elements in any administrative proceeding.

A. Identical or Confusingly Similar

This Panel finds and accepts that the Complainant is a well-known discount supermarket chain that owns several registrations for the trademark LIDL and operating in well over 29 countries. The Panel finds without any hesitation that on a visual examination of the Disputed Domain Names, <lidl-club.online>, <lidlshop.online>, <juicerlidl.online>, <lidlkids.club>, <lidlclub.online>, and <lidltester.club>, the Disputed Domain Names are undoubtedly confusing similar to the Complainant’s LIDL trademark. The Disputed Domain Names clearly incorporate entirely the Complainant’s trademark. The Panel accepts that the mere addition of terms such as “club”, “shop”, “juicer”, “kids”, “tester” and in one instance a hyphen to the Disputed Domain Names does absolutely nothing to prevent a finding of confusing similarity. See in support of this finding the decision in Lidl Stiftung & Co. KG v. SellDa GmbH, supra, regarding the domain names <lidl-strom.com>, <lidlstrom.com>, <lidlstrompaket.com>, and <lidl-strompaket.com>. In further support of the finding see the detailed discussion on the test for confusing similarity as appears in sections 1.7 and 1.8 of the WIPO Overview 3.0.

Furthermore the gTLD “.online” and “.club” are viewed as a standard registration requirement and as such are disregarded under the first element confusing similarity test.

Therefore, the Panel is satisfied that the Complainant has established that the Disputed Domain Names are all confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Panel is equally satisfied that the Respondent has no rights or legitimate interests in the Disputed Domain Names within the ambit of paragraphs 4(a)(ii) and 4(c) of the Policy. The Respondent who is duty bound to provide evidence of such rights and interests following Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, and Do The Hustle, LLC v. Tropic Web, supra has failed to forward any evidence of engaging in any actual bona fide offering of goods and services nor a legitimate noncommercial or fair use of the Disputed Domain Names. As argued on behalf of the Complainant the Disputed Domain Names merely resolve to blocked web page notices due to possible fraudulent activity or login pages accordingly such activity cannot be indicative of a bona fide offering of goods and services but is rather indicative of passive holding or possibly fraudulent activities. See Monster Energy Company v. Nikita Serov, serovagency, supra. See also section 2.5.1. of the WIPO Overview 3.0. In addition, the Panel finds that there is no evidence of any permission, authority or licence that justifies the Respondent’s use of any of the Disputed Domain Names to incorporate the Complainant’s trademark in a combination that includes the terms such as “club”, “shop”, “tester”, “kids” or “juicer”.

In the circumstances, the Panel finds that the Complainant has established that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names as specified in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

On the question of bad faith registration and use, the Panel has taken a number of undisputed factors into account to conclude that the Respondent registered the Disputed Domain Names in bad faith with the obvious intention of exploiting the Complainant’s established reputation and goodwill in the LIDL trademark.

In the first instance, the Panel finds that it is inconceivable that the Respondent was unaware of the Complainant’s trademark, and reputation in the discount supermarket industry when it decided to register not one, but the six, Disputed Domain Names on diverse dates between March 12, 2020 and October 12, 2020 all incorporating entirely, the Complainant’s trademark. As the Complainant argues, the Complainant’s use of its trademark and business activities as a very famous discount supermarket chain predates the registration of the Disputed Domain Names by decades.

Secondly, the Panel finds that the Respondent registered the Disputed Domain Names with the sole purpose of exploiting the Complainant’s reputation in the discount supermarket industry, in this regard the Complainant has drawn attention to the Respondent’s pattern of bad faith conduct as demonstrated in repeated abusive domain name registrations targeting other famous trademarks. For instance see Monster Energy Company v. Nikita Serov, serovagency, WIPO Case No. D2020-2265 and Monster Energy Company v. Nikita Serov, Serovangecy, WIPO Case No. D2020-2054. The Panel refers to and relies also on the decision in Lidl Stiftung & Co. KG v. Contact Privacy Inc. Customer 1245982556/ lidl France, supra, where the panel held as follows: “Regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark LIDL in the field of global discount supermarkets is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain name, <services-lidl.com>, because it is confusingly similar to the Complainant’s trademark.”

Thirdly, as submitted by the Complainant, the Panel finds that passive holding of the Disputed Domain Names does not in any way prevent a finding of bad faith registration and use following: Telstra Corporation Limited v. Nuclear Marshmallows, supra, where the panel found and held that: “the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.” See also section 3.3. of the WIPO Overview 3.0 confirming the consensus view that passive holding does not prevent a finding of bad faith registration and use.

Fourthly, as indicated in paragraph 5.5 above, the Panel has drawn adverse inferences from the failure of the Respondent to reply to the submissions of the Complainant in these proceedings and or previous correspondence from the Complainant.

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 Names <juicerlidl.online>, <lidl-club.online>, <lidlclub.online>, <lidlkids.club>, <lidlshop.online> and <lidltester.club> be transferred to the Complainant.

Ike Ehiribe
Sole Panelist
Date: May 5, 2021