Lidl Stiftung & Co. KG v. My Domain Provider et al.
Claim Number: FA2010001917188
Complainant: Lidl Stiftung & Co. KG of Neckarsulm, Germany.
Complainant Representative: HK2 Rechtsanwälte of Berlin, Germany.
Respondent: Privacy Protect / My Domain Provider of Zwolle, International, Netherlands.
REGISTRY and REGISTRAR
Registry: DotWebsite Inc.
Registrar: Realtime Register B.V.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.
Alan L. Limbury, as Examiner.
Complaint submitted: October 16, 2020
Commencement: October 16, 2020
Default Date: November 2, 2020
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended:
[URS 1.2.6.1] The registered domain name is identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
Determined: Finding for Complainant
Complainant is the owner of European Community Trademark No. 006460562 LIDL in several international classes, registered on October 20, 2008. Complainant registered the LIDL mark with the Trademark Clearinghouse on 23 September 2019. This establishes that the mark is in current use.
The disputed domain name <lidl-shop.website> is confusingly similar to Complainant’s LIDL mark since it contains the mark in its entirety and the addition of “-shop” does nothing to distinguish the domain name from the mark. The gTLD “.website” may be disregarded when considering this element.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Complainant
Complainant asserts that it has not authorized Respondent to use its LIDL mark nor to register the domain name and is not affiliated with Respondent. Respondent is not commonly known by the domain name.
The Examiner finds that the disputed domain name is not being used for bona fide offering goods or services since it resolves to a “domain not yet active” default website. Complainant’s trademark has been very well known for many years before the disputed domain name was registered. As a whole (i.e. including the gTLD “.website”) the disputed domain name <lidl-shop.website> creates the misleading impression that the domain name is designed to lead to Complainant’s website. These circumstances establish that the Registrant does not have a legitimate right or interest to the <lidl-shop.website> domain name.
[URS 1.2.6.3] The domain name was registered and is being used in bad faith.
Determined: Finding for Complainant
The Examiner finds that Respondent must have had knowledge of Complainant´s trademark when registering the domain name and did so in bad faith in order to masquerade as Complainant. As in the leading UDRP case on passive use, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of Complainant’s rights under trademark law.Therefore the disputed domain name was registered and is being used in bad faith.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence. The Examiner hereby Orders the following domain name be SUSPENDED for the duration of the registration:
<lidl-shop.website>.
Alan L. Limbury, Examiner
Dated: November 03, 2020
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