LIDL Stiftung & Co. KG v. Nisar Zafar et al.
Claim Number: FA1607001683791
Complainant: LIDL Stiftung & Co. KG of Neckarsulm, Germany.
Complainant Representative: HK2 Rechtsanwälte of Berlin, Germany.
Respondent: Nisar A Zafar of Riyadh, Saudi Arabia.
Nisar Ahmad Zafar of Riyadh, Saudi Arabia.
Nisar Ahmad Zafar of Riyadh, International, SA.
REGISTRIES and REGISTRARS
Registries: DotStore Inc.
Registrars: Go France Domains, LLC
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
Eleni Lappa, as Examiner.
Complainant submitted: July 14, 2016
Commencement: July 14, 2016
Response Date: July 15, 2016
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.
Complainant is a company with headquarters in Germany and is a member of the LIDL-Group, one of the biggest supermarket chains in Europe that also sells various products for home convenience, apparel, tools, etc. LIDL-Group operates stores all over Europe. Complainant is owner of a wide variety of trademarks “LIDL”, e.g. European Union Trademark No. 6460562 for classes 1, to 16, 18, 20, 21, 23 to 36, 39, 40 to 42; International Registration 748064 for classes 01 to 05, 07 to 09, 11, 13, 14, 16, 18, 21, 23 to 36, 39, 41, 42, etc.
Respondent is an entity based in Saudi Arabia that has offered no evidence or made no reference to any applicable prior rights he has to the name LIDL either on a local level (Saudi Arabia) or elsewhere in the world.
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
1. The registered domain name is identical or confusingly similar to a word or mark [URS/.usRS 220.127.116.11] for which the Complainant holds a valid national or regional registration and that is in current use
2. Registrant has no legitimate right or interest to the domain name [URS/.usRS 18.104.22.168]
3. [if URS] The domain name(s) was registered and is being used in bad faith [URS 22.214.171.124]
With regard to point 1:
- Complainant submits that, the distinctive part of the domain name in question <lidl.store> is identical to the various trademark registrations for the name LIDL it owns around the world as referenced in detail above and that these trademarks are quite well-known world-wide as Complainant’s activities encompass many countries in the world.
- Respondent submits that the domain name is a generic name available for purchase and it has nothing to do with complainant business or line of business. The website domestic use is not confusing to anyone as there is no such similar business in the registrant country of residence.
- This Panel finds that the domain name in question <lidl.store> is not generic as the trademark LIDL is quite well-known and in fact it is identical to prior rights owned by the Complainant and may give rise to confusion to the consuming public. Due to the global nature of the online presence of a domain name, the global exposure of brands and the mobility of present day consumers, the relevant consuming public, for determining the existence of the risk of confusion, may not be confined to one specific country based on the country of residence of the Respondent.
With regard to point 2:
- Complainant has submitted that due to its worldwide active trademark monitoring for its trademarks and company name LIDL, it would have known if Respondent had any prior rights regarding the name LIDL.
- Respondent has offered no evidence and has made no submissions or reference to the existence of any prior relevant rights in his name for the name LIDL.
- This Panel finds that the Complainant has valid, relevant prior rights to the trademark and company name LIDL and Respondent has no similar prior rights to the name LIDL.
With regard to point 3:
- Complainant asserts that Respondent knew or should have known of Complainant’s prior rights prior to registering the domain name in question <lidl.store> given the fact that Complainant’s prior rights to the name LIDL are well known and, by offering a screen capture of the domain name in question <lidl.store> that it was in fact used as domain name parking and was offered for sale to any interested party.
- Respondent argues that “there is no such intention of selling the domain name and no such attempt has been made for any commercial gains directly or indirectly with anyone. The domain name will be live for the domestic use in registrant country of residence and with no link or similarity with the complainant line of business.”
- This Panel finds that the domain name in question was registered in bad faith as the Complainant’s rights are globally known and the Respondent knew or should have known of the Complainant’s prior rights to the name LIDL. The Panel further finds that the domain name was used in bad faith as there is clear indication that it was offered for sale and the assertion of the Respondent that there was no intention to use it for commercial gain and/or that it was meant for “domestic” use only has no merit and is rejected.
Respondent has alleged that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods, by asserting that “the complainant should give documentary evidence of registrant recordable action recently or in the past for any misuse or any such attempt or any correspondent with anyone to mislead or divert any business. The domain name in question and by saying registrant has bad faith or intentions is actually accusing the registrant with something which never happened.”
This Panel finds that no abuse of proceeding or material falsehoods were brought forward by the Complainant and this is because the Complainant actually gave clear evidence and sufficient argumentations establishing: the fact that the domain name in question is confusingly similar to prior rights owned by the Complainant the fact that no rights or legitimate interest exist in the part of the Respondent and the bad faith of the registration and use of the domain name in question. Therefore this Panel rejects the above allegation of the Respondent as unsubstantiated and untrue.
After reviewing the parties’ 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 names be SUSPENDED for the duration of the registration.
Eleni Lappa, Examiner
Dated: July 15, 2016
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