Lidl Stiftung & Co. KG v. Thomas Kolongowski
Claim Number: FA2012001923835
Complainant is Lidl Stiftung & Co. KG (“Complainant”), represented by Philip Koch of HK2 Rechtsanwälte, Germany. Respondent is Thomas Kolongowski (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lidll.us>, registered with Google LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 4, 2020; the Forum received payment on December 4, 2020.
On December 7, 2020, Google LLC confirmed by e-mail to the Forum that the <lidll.us> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 9, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 29, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@lidll.us. Also, on December 9, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 4, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Operating under the name and mark LIDL, Complainant is a global discount supermarket chain with thousands of stores worldwide.
Complainant holds a registration for the LIDL trademark and service mark which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,461,179, registered January 7, 2014.
Respondent registered the domain name <lidll.us> on June 2, 2020.
The domain name is confusingly similar to Complainant’s LIDL mark.
Respondent has not been commonly known by the domain name.
Complainant has not authorized Respondent to use the LIDL mark in any way.
Respondent fails to make a bona fide offering of goods or services by means of the domain name or a noncommercial or fair use of it.
Instead, Respondent fails to make any active use of the domain name.
Respondent lacks both rights to and legitimate interests in the domain name.
The domain name is an instance of typo-squatting.
Respondent knew of Complainant’s rights in the LIDL mark when it registered the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered or is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered or is being used by Respondent in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [...] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the LIDL trademark and service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum August 4, 2017):
Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <lidll.us> domain name is both substantively identical and confusingly similar to Complainant’s LIDL trademark and service mark. The domain name incorporates the mark in its entirety, with only the addition of an extraneous additional letter “l,” which leaves the body of the domain name phonetically identical to Complainant’s mark, plus the country code Top Level Domain (“ccTLD”) “.us.” Many panels have found that the addition of a ccTLD or other TLD to the mark of another in forming a domain name is irrelevant in determining the question of identity or confusing similarity under Policy ¶ 4(a)(i). See, for example, Blue Cross and Blue Shield Assoc. v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018):
A TLD (whether a gTLD, … or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.
See also TripAdvisor, LLC / Smarter Travel Media LLC / Jetsetter, Inc. v. RAKSHITA MERCANTILE PRIVATE LIMITED, FA 1623459 (Forum July 17, 2015):
Adding a single letter is not enough to prevent a domain name from being confusingly similar to a mark.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <lidll.us> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iv), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that there is nothing in the record before us suggesting that Respondent is the owner or beneficiary of a trademark or service mark that is identical to the <lidll.us> domain name. We conclude, therefore, that Respondent cannot lay claim to rights to or legitimate interests in the domain name under the terms of Policy ¶ 4(c)(i). See, for example, Pepsico, Inc. v. Becky, FA 117014 (Forum September 3, 2002), finding that, because there was no evidence showing that a UDRP respondent owned a trademark or service mark reflecting a specific domain name, it could not claim rights to or legitimate interests in that domain name under Policy ¶ 4(c)(i).
We next observe that Complainant asserts, without any objection from Respondent, that, although the <lidll.us> domain name was first registered on June 2, 2020, Respondent still makes no active use of it, nor even demonstrable preparations to use it (a practice called “passive holding”). Because Respondent makes no use of the domain name, it cannot be said to use it in connection with a bona fide offering of goods or services within the contemplation of Policy ¶ 4(c)(ii). See, for example, Morgan Stanley v. Francis Mccarthy / Baltec Marine LLC, FA 1785347 (Forum June 8, 2018):
Inactive holding of a domain name does not qualify as a bona fide offering of goods or services ….
We turn then to Complainant’s contention, which Respondent does not deny, that Respondent has not been commonly known by the <lidll.us> domain name. In this connection we note that the pertinent WHOIS information identifies the registrant of the domain name only as “Thomas Kolongowski,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(iii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018), finding that a respondent was not commonly known by a domain name incorporating the mark of a UDRP complainant where the relevant WHOIS record identified that respondent only as “Bhawana Chandel,” which did not resemble the domain name there in issue.
Finally, under this head of the Policy, because Respondent evidently has not made any active use of the disputed domain name from the time of its initial registration to the present, we cannot conclude that Respondent is now making a legitimate noncommercial or fair use of it within the meaning of Policy ¶ 4(c)(iv).
The Panel therefore finds that Complainant has amply satisfied the proof requirements of Policy ¶ 4(a)(ii).
It remains only for us to consider the question whether Respondent has registered or is using the challenged <lidll.us> domain name in bad faith. We take the two prongs of this question in order.
We have already found that Respondent does not conduct any commercial business or non-commercial activity by means of the domain name, and this appears to have been true for the entire period of its existence. We also note that it seems scarcely possible to conceive of any legitimate use to which Respondent might put a domain name the substance of which consists entirely of the registered mark of another. It is likewise difficult, if not impossible, to imagine that Respondent was unaware of this fact when it registered the domain name. Finally, in this connection, we have found that Respondent has no rights to or legitimate interests in the domain name. In light of all of these considerations, we are compelled to conclude that Respondent has registered the contested domain name in bad faith. See, for example, Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-003 (WIPO February 18, 2000):
Has the Complainant proved that the domain name "has been registered in bad faith" by the Respondent? … Respondent does not conduct any legitimate commercial or non-commercial business activity .... [Moreover] it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name …. It is also not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration. These findings, together with the finding … that the Respondent has no rights or interests in the domain name, lead the Administrative Panel to conclude that the domain name … has been registered by the Respondent in bad faith.
We are also convinced by the evidence in the record before us that Respondent knew of Complainant and its rights in the LIDL mark when it registered the <lidll.us> domain name. This further demonstrates Respondent’s bad faith in registering it. See, for example, AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum December 24, 2018):
The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration … under Policy ¶ 4(a)(iii).
As to whether the <lidll.us> domain name has also been used in bad faith, it was long ago established that, in appropriate circumstances, the utter failure of a registrant to make any active use of a domain name may be taken as proof of its use of that domain name in bad faith. See, for example, Telstra Corp., supra:
[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.
The evidence before us demonstrates that the challenged domain name has remained passively held from the moment of its initial registration, and this in the absence of any evidence even of preparations for its eventual use. Taken together with the considerations set out above, this persuades us that Respondent is using the domain name in bad faith. Again, see Telstra Corp., supra. See also CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum February 14, 2018):
Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the usTLD Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain name <lidll.us> be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 8, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page