WIPO Arbitration and Mediation Center
DMINISTRATIVE PANEL DECISION
Lidl Stiftung & Co. KG v. Artem Dmitrenko
Case No. D2021-3699
1. The Parties
The Complainant is Lidl Stiftung & Co. KG, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Artem Dmitrenko, Ukraine.
2. The Domain Names and Registrar
The disputed domain names <ldl-de.space>, <ldl-promo.space>, <ldlpromotion-de.site>, and <ldl-promotion-de.space> (the “Domain Names”) are registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2021. On November 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 9, 2021, the Registrar transmitted by email to the Center its verification response disclosing Respondent and contact information for the Domain Names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 15, 2021, providing the Respondent 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 November 19, 2021.
On November 15, 2021, the Center sent an email in English and Russian to the Parties regarding the language of the proceeding. The Complainant submitted its request and arguments that English be the language of the proceeding on November 16, 2021. The Respondent did not comment on the language of the proceeding.
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 November 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 14, 2021. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on January 5, 2022.
The Center appointed Olga Zalomiy as the sole panelist in this matter on January 18, 2022. 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 owns several trademark registrations for the LIDL trademark, such as:
-European Union Trade Mark registration No. 001778679 for the word mark LIDL registered on August 22, 2021;
-International Trademark registration No. 748064 for the word mark LIDL registered on July 26, 2000;
-International Trademark registration No. 974355 for the word mark LIDL registered on May 9, 2008.
The Domain Names were registered on July 28, 2021. The Domain Names used to direct to identical websites in the German language prominently displaying the Complainant’s LIDL trademark and inviting users to participate in a survey purportedly designed to understand consumer satisfaction with the LIDL brand and offered a chance to win a valuable prize as an inducement to the survey participation. Upon completion of the survey, Internet users were redirected to third party sites requesting the submission of personal contact information. Currently, the Domain Names do not resolve to active websites.
5. Parties’ Contentions
The Complainant alleges that it owns various national and international trademark registrations LIDL. The Complainant contends that the Domain Names are confusingly similar to the trademarks LIDL of the Complainant because all Domain Names consist of an intentional misspelling of the Complainant’s trademarks LIDL, omitting the letter “i”. The Complainant submits that all of the Domain Names resolved to an identical website in the German language targeting the Complainant’s trademarks and business. The Complainant claims that the generic Top-Level domain (the “gTLD”) such as “.space” does not affect the finding of confusing similarity between the Domain Names and the Complainant’s trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Names because of the following:
-the Respondent is not affiliated or in a business relationship with the Complainant or another member of the LIDL-Group;
- the Respondent is not commonly known by “Lidl” or “ldl” or “promo” or “promotion” or “de”;
- the Respondent has not been authorized by the Complainant to use the Complainant´s trademarks.
- the Respondent has not acquired any trademarks or other rights comprising the string “Lidl”;
-the Respondent is not making a legitimate noncommercial or fair use of the Domain Names;
- the Respondent is not using the Domain Names in connection with bona fide offering of goods or services.
The Complainant argues that the Respondent registered and used the Domain Names in bad faith. The Complainant alleges that the Respondent knew or should have known of the Complainants trademarks because the Complainant’s business activities as a global discount supermarket chain predate the Domain Names’ registrations by decades. The Complainant contends that the mere registration of the Domain Names comprising typos of its trademarks creates presumption of bad faith. The Complainant submits that the Respondent’s registration of multiple Domain Names consisting of an intentional misspelling of the Complainant’s trademarks and identical web content of the websites connected to the Domain Names to target the Complainant’s trademarks and business is another evidence of bad faith use and registration.
The Respondent did not reply to the Complainant’s contentions.
6.1. Language of the Proceeding
Under paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the registration agreement, unless the parties agree to use a different language, or the registration agreement provides otherwise. The Panel has the right to determine the language of the administrative proceeding based on the circumstances of the case.
Because the language of the Registration Agreement for the Domain Names is Russian, the default language of the administrative proceeding should be Russian. However, the Complainant requested that English be the language of the administrative proceeding because of the following reasons: (i) the Domain Names are in Latin script and not in Cyrillic script; (ii) two of the Domain Names contain the English words “promo” and “promotion”; (iii) the Complainant, which is a German entity, is unable to communicate in Russian. The Respondent is located in Ukraine and not in Russia. English would therefore be the fair and neutral language for the proceedings and the decision.
Previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. “Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, […] (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint”. See section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel finds as (i) the Center notified the Respondent of the proceeding in both English and Russian, but the Respondent failed to respond to such notice and invitation to file a response in the proceeding; (ii) the Complainant is not conversant with the Russian language and would have to incur significant additional cost in the proceeding, if it were required to proceed in the Russian language; (iii) the Respondent appears to understand English because two of the Domain Names comprised of English words “promo” and “promotion”. Therefore, conducting the proceeding in English will not be unfair to either of the Parties.
6.2. Discussion and Findings
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to each of the Domain Names:
(i) the Domain Names are 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 Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the UDRP, the Complainant must prove that the Domain Names are identical or confusingly similar to the trademark or service mark in which the Complainant has rights.
The submitted evidence shows that the Complainant owns several trademark registrations for the LIDL trademark. Pursuant to section 1.2.1 of the WIPO Overview 3.0, this satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.
“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.” 1 “In specific limited instances, while not a replacement as such for the typical side-by-side comparison, where a panel would benefit from affirmation as to confusing similarity with the complainant’s mark, the broader case context such as website content trading off the complainant’s reputation, or a pattern of multiple respondent domain names targeting the complainant’s mark within the same proceeding, may support a finding of confusing similarity”.2 It is well-established that the applicable gTLD should be disregarded under the confusingly similarity test as a standard registration requirement.
Here, the Domain Names consist of the word “ldl” and the combination of the words “promo”, “promotion”, the geographical indication “de”, a hyphen and the gTLDs “.space” or “.site”. The only difference between the Complainant’s registered trademark and the word “ldl” in the Domain Names is the omission of the letter “i”. It is more likely than not that the word “ldl” is a misspelling of the well-known LIDL 3 trademark because the content of the websites connected to the Domain Names shows that the Respondent attempted to trade of the Complainant’s reputation and because the Respondent registered four Domain Names, thus creating a pattern of multiple Respondent Domain Names targeting the Complainant’s mark. The addition of the words “promo”, “promotion” and the geographical indication “de” in the Domain Names, do not prevent confusing similarity to the LIDL trademark. The gTLDs “.space” and “.site” are disregarded as a standard registration requirement.
The Complainant has satisfied the first element of the UDRP.
B. Rights or Legitimate Interests
To succeed under the second UDRP element, the Complainant must make out a prima facie case in respect of the lack of rights or legitimate interests of the Respondent.
To demonstrate rights or legitimate interests in a domain name, non-exclusive respondent defenses under the UDRP, paragraph 4(c) include the following:
(i) before any notice 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 (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent 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 evidence on file shows that the Complainant has not licensed or permitted the Respondent to use the Complainant’s LIDL trademark in Domain Names, or for any other purpose. There is no evidence that the Respondent has ever been commonly known by the Domain Names. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Names.
The Respondent is also not using the Domain Names in connection with a bona fide offering of goods or services because the Domain Names were used by the Respondent to host identical websites that appeared to be used for phishing of users’ personal information. The websites, displaying the Complainant’s LIDL trademark, invited users to participate in a customer survey purportedly designed to understand consumer satisfaction with the LIDL brand and offered a chance to win a valuable prize as an inducement. However, following the completion of the survey, Internet users are redirected to third party sites collecting personal contact information. Prior panels have held that the use of a domain name for illegal activity, such as phishing, “can never confer rights or legitimate interests on a respondent” 4.
The Panel finds that the Complainant has made out the prima facie case and the burden of producing evidence demonstrating it has rights or legitimate interests in the Domain Names has shifted to the Respondent. Since the Respondent failed to present any rebutting evidence, the Complainant is deemed to have satisfied the second element of the UDRP.
C. Registered and Used in Bad Faith
Under the third UDRP element, the Complainant is required to prove that the Domain Names were registered and are being used in bad faith.
It is well-established, that “the mere registration of a domain name that is identical or confusingly similar (particularly domain name comprising typos […]) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.” 5 The evidence on file shows that the Complainant’s trademark is widely known, therefore the Respondent’s unauthorized registration of the Domain Name that is confusingly similar to the Complainant’s trademark may be indicative of bad faith.
In addition, the evidence demonstrates the Respondent’s intention to attract Internet users to its website at the Domain Names by creating a likelihood of confusion with the Complainant’s trademark LIDL, and thus creating confusion as to the source, sponsorship, affiliation, or endorsement of the Domain Names. The sole purpose appears to have been to cause damage to Internet users by inducing them to reveal personal information. Such behavior demonstrates the Respondent’s bad faith, both in registering and using the Domain Names.
Finally, non-use of a domain name would not prevent finding of bad faith under certain circumstances. 6 The following circumstances have been considered “relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, … and (iv) the implausibility of any good faith use to which the domain name may be put”.7 All of those circumstances are present in this case. The Complainant’s mark is well-known. The Respondent failed to submit a response or to provide any evidence of actual or contemplated good-faith use of the Domain Names. Any good faith use of the Domain Names is implausible.
Therefore, the Panel finds that the Domain Names were registered and are being used in bad faith. The third element of the UDRP has been proved.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <ldl-de.space>, <ldl-promo.space>, <ldlpromotion-de.site>, and <ldl-promotion-de.space> be transferred to the Complainant.
Date: February 1, 2022