LIDL Stiftung & Co. KG v. Whois Agent, Whois Privacy Protection Service, Inc. / Jean‑pierre CHAVE
Case No. D2018-2149
1. The Parties
The Complainant is LIDL Stiftung & Co. KG of Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Whois Agent, Whois Privacy Protection Service, Inc of United States of America / Jean-pierre CHAVE of France.
2. The Domain Name and Registrar
The disputed domain name <lidl-groups.com> (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2018. On September 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 20, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 27, 2018, 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 September 27, 2018.
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 October 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2018.
The Center appointed Dawn Osborne as the sole panelist in this matter on November 5, 2018. 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 owns the trade mark LIDL, inter alia, European Union (“EU”) Trademark No. 001778679, registered on August 22, 2002. The Complainant owns the domain name <lidl.com>.
The Domain Name was registered on September 9, 2018, and has been used for fraudulent email scams.
5. Parties’ Contentions
The Complainant’s contentions can be summarised as follows:
The Complainant owns the trade mark LIDL registered, inter alia, in the EU since 2002. It owns the domain name <lidl.com>.
The Domain Name registered in 2018 contains the Complainant’s mark in its entirety adding only a dash, the generic word “groups” and the generic Top-Level Domain (“gTLD”) “.com” which do not prevent confusing similarity between the Domain Name and the Complainant’s mark.
The Respondent is not commonly known by the Domain Name or authorised by the Complainant to use the Complainant’s mark. The Domain Name does not resolve to an active site but has been used for fraudulent emails to solicit goods which are never paid for. This is not legitimate noncommercial fair use or a bona fide offering of goods and services. It is bad faith registration and use designed to confuse Internet users for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Name consists of the Complainant's LIDL mark (which is registered in the EU for a wide variety of goods with first use from 2002), a hyphen, the generic term “groups” and the gTLD “.com” which do not distinguish the Domain Name from the Complainant’s mark.
Previous UDRP panels have found confusing similarity when a respondent merely adds a hyphen and a generic term to a Complainant's mark. The Panel agrees that the addition of a hyphen and the generic term “groups” does not prevent confusing similarity between the Domain Name and the Complainant's trade mark pursuant to the Policy. Further the gTLD “.com” does not serve to distinguish the Domain Name from the Complainant’s mark.
Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s LIDL registered mark.
As such the Panel holds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name.
The Domain Name has been used in a fraudulent email scheme using the LIDL name. This is deceptive and confusing and amounts to passing off. As such it cannot amount to the bona fide offering of goods and services.
As such the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
C. Registration and Use in Bad Faith
Impersonating a complainant by use of the complainant’s mark in a fraudulent email scam is disruptive and evinces bad faith registration and use.
In the opinion of the Panel, the use made of the Domain Name in relation to a fraudulent email scam is confusing in that recipients of the emails will reasonably believe those emails are connected to or approved by the Complainant as the LIDL name is used. This mimicking by the Respondent of the Complainant shows that the Respondent was aware of the Complainant and its business and rights and constitutes passing off. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of electronic content on the Internet under Policy paragraph 4(b)(iv) in a manner disruptive to the Complainant’s business under Policy paragraph 4(b)(iii).
As such, the Panel believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(iii) and 4(b)(iv).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <lidl-groups.com> be transferred to the Complainant.
Dawn Osborne Sole Panelist Date: November 6, 2018
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