WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LIDL Stiftung & Co. KG v. lomhar O’Sullivan
Case No. D2016-1396
1. The Parties
Complainant is LIDL Stiftung & Co. KG of Neckarsulm, Germany, represented by HK2 Rechtsanwälte, Germany.
Respondent is lomhar O’Sullivan of Cork, Ireland.
2. The Domain Name and Registrar
The disputed domain name <lidl.irish> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2016. On July 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on July 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2016. Respondent submitted an informal email to the Center on August 1, 2016. The Center notified the Parties of the commencement of the Panel appointment process on August 2, 2016.
The Center appointed Michael A. Albert as the sole panelist in this matter on August 11, 2016. 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
Complainant belongs to the Lidl Group (“Lidl”). Lidl is one of the biggest retailers in Europe. Lidl operates close to 10,000 retail stores all over Europe. Lidl stores are located in 26 countries. Lidl has announced that it will expand its business activities to more countries including the United States of America. Lidl operates more than 182 stores in Ireland.
Complainant owns the trademark LIDL and holds several national and international trademark registrations for that mark, including registration No. 152176 with the Irish Patents Office, registered on July 3, 1991 under classes 3, 5, 8, 11, 16, 18, 21, 28-33. Complainant has licensed other companies in the Lidl Group to use the mark. Lidl promotes its trademarks worldwide with innovative websites. A website directed to Internet users in Ireland is available at “www.lidl.ie”. Websites directed to customers in other countries are available at “www.lidl.com” and at the respective top-level domains corresponding to those countries, e.g. <lidl.de>, <lidl.co.uk>, <lidl.es>, and <lidl.it>.
The disputed domain name was created on July 22, 2015 and resolves to a website displaying the following text: “Lab for innovative distance learning.” The website seems to provide no genuine content beyond links to other projects.
5. Parties’ Contentions
Complainant alleges that the disputed domain name is confusingly similar to its LIDL marks because it consists of Complainant’s mark in its entirety, with the top level domain “.irish.”
LIDL is derived from the name of a co-founder of Lidl supermarkets and has no meaning in German or English. Therefore it is an inherently distinctive and strong trademark, which additionally has acquired an international reputation.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because Complainant has not given permission to Respondent for the use of the LIDL marks, nor has Respondent engaged in a bona fide offering of goods or services. Complainant contends that Respondent gave contradictory explanations as to why he registered the disputed domain name and that there is no indication that Respondent is actually offering or demonstrably preparing to offer services under the disputed domain name and/or under “Lab for Innovative Distance Learning”.
Finally, Complainant alleges that Respondent had at least constructive notice of the LIDL marks because of Complainant’s significant presence in Ireland, where it operates more than 182 Lidl stores. Complainant contends that Respondent registered the Domain Name primarily for the purpose of selling the Domain Name. Complainant contends that Respondent made an unsolicited offer to transfer the domain name to Complainant for an amount considerably higher than his out-of-pocket-costs directly related to the Domain Name, thereby demonstrating that Respondent registered the disputed domain name in bad faith.
Respondent did not file a formal response meeting the Policy requirements. It sent an email stating, in full, that “the domain lidl.irish is a legitimate site for teachers based in Ireland but welcomes others who might like to be involved in sharing learning initiates. Lab. for Innovative Distance Learning is a registered domain and is not in any way in conflict with ‘the complainant’.”
6. Discussion and Findings
A. Identical or Confusingly Similar
It is established that the top level domain such as “.com”, “.org”, or “.net” does not typically affect the domain name for the purpose of determining the identity or similarity of a domain name and a trademark (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Hugo Boss A.G. v. Abilio Castro, WIPO Case No. DTV2008-0001; Rodale, Inc. v. Cass Foster, WIPO Case No. DBIZ2002-00148; Carlsberg A/S v. Brand Live Television, WIPO Case No. DTV2008-0003).
The disputed domain name is thus identical to Complainant’s LIDL trademarks.
Even if the generic top-level-domain (“gTLD”) “.irish” were taken into account when determining similarity, the disputed domain name would still be confusingly similar as “irish” is an indicator of origin or location. Consequently Internet users will expect <lidl.irish> to be a domain name related to Lidl’s business activities in Ireland.
B. Rights or Legitimate Interests
1. Burden of proof
Prior UDRP decisions establish that Complainant is only required to make out an initial prima facie case that Respondent lacks rights or legitimate interests. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See Europay International S. A. v. Eurocard.com, WIPO Case No. D2000-0173; Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.
2. No bona fide offering of goods or services
There is no indication of Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
Respondent appears to have registered the disputed domain name primarily for the purpose of selling it to Complainant. He has made an unsolicited offer to Complainant to transfer the disputed domain name in exchange for an amount considerably higher than his out-of-pocket-costs directly related to the disputed domain name. He also gave contradictory explanations as to why he registered the disputed domain name. As alleged by Complainant and not rebutted by Respondent, in a telephone conversation in October 2015 Respondent claimed it referred to initials of his colleagues. Later, he switched his explanation to the alleged project “Lab for Innovative Distance Learning”.
Contradictory explanations for the choice of a domain name can be an indicator of the falseness of both assertions. Additionally, the fact that Respondent did not mention the alleged project “Lab for Innovative Distance Learning” at the beginning of the correspondence with Complainant suggests that this assertion is fictitious. Lastly, Respondent has not provided a clear, coherent, or comprehensible response to the Complaint and therefore has chosen not to come forward (despite knowledge of the dispute) with a plausible and justifiable explanation for the disputed domain name.
Although Respondent has created a website at “www.lidl.irish”, it provides no genuine content beyond links to other projects. In particular, the link “Join Us” leads to the website “www.emed.ie” and not to a registration form for the alleged project “Lab for Innovative Distance Learning” or any other content directly related to Respondent’s alleged project that uses the disputed initials. The website at “www.emed.ie” is an online handbook with policies and guidelines for emergency medicine clinicians, none of which has any apparent bearing on Respondent’s purported reasons for registering the disputed domain name.
Respondent also does not appear to be commonly known by the names comprised in the disputed domain name.
Accordingly, Complainant has met its burden of proof regarding the second element under the Policy.
C. Registered and Used in Bad Faith
As discussed above, Respondent made an unsolicited offer to sell the disputed domain name to Complainant. Taken together with Respondent’s implausible and inconsistent stories as to why he registered the disputed domain name, and the well-established reputation that Complainant enjoys for its house mark LIDL across Europe, including in Ireland, it is clear that Respondent registered the domain name in a bad-faith attempt to trade on Complainant’s name and reputation.
Complainant offered to reimburse Respondent for his out-of-pocket registration costs in the amount of EUR 200 in exchange for a transfer of the domain name. Respondent never stated that he had paid more than that to register the disputed domain name, but nonetheless demanded a larger sum.
Complainant’s use of its marks predates the registration of the disputed domain name by many years. Complainant’s marks are well known in Ireland, where it operates more than 182 stores under the LIDL mark. Respondent had actual and constructive knowledge of Complainant’s trademarks when acquiring the disputed domain name.
Where, as here, Respondent “knew or should have known” of Complainant’s mark prior to the registration of the domain name, bad faith may be found. See Federated Westem Properties, Inc. v. Mr. Faton Brezica aka “Its Me Haraqi” and “Its Me P r”, WIPO Case No. D2002-0083, Ferrari S.p.A v. Allen Ginsberg, WIPO Case No. D2002-0033.
Lack of any plausible actual or contemplated active use has, ever since the Telstra decision (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), been considered sufficient to support a finding of bad faith. Here, as a further indicator of bad faith, there is no evidence of any legitimate interest for Respondent’s use of the disputed domain name.
Accordingly, the Panel finds that Complainant has met its burden to show bad faith.
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.irish> be transferred to Complainant.
Michael A. Albert
Date: August 25, 2016