The well-known German retailer Lidl won a domain name dispute before the WIPO Arbitration and Mediation Center.
The case concerns a registered domain name for lidl-de.website by an individual. The domain hadn’t been used before the arbitration procedure with exception of a period when there was a website offering a survey dedicated to Lidl and redirecting to third parties websites.
The German company initiated a complaint wanting transfer of the domain to the company because of bad faith registration. In order for such a procedure to be successful the following cumulative factors are necessary:
(i) the Domain Name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Lidl submitted many early registered trademarks such as:
– German registration No. 2006134 for LIDL registered on 11 November, 1991;
– German registration No. 30009606 for LIDL registered on 9 March, 2000;
– European Union registration No. 001779784 for
registered on 12 November, 2001;
– European Union registration No. 001778679 for LIDL registered on 22 August, 2002;
– European Union registration No. 013192752 for
registered on 27 February, 2015;
– International registration No. 748064 for LIDL registered on 26 July, 2000;
– International registration No. 974355 for LIDL registered on 9 May, 2008;
In addition, the company added a family of registered domain names that include lidl.
WIPO concluded that the domain name in dispute is confusingly similar to the earlier trademarks because they are included in the domain entirely. The rest of the domain elements .de and .website are generic and descriptive and are not able to create a difference.
According to Arbitrage, the domain registrant has no legitimate interest to use it because it associates with the business and geographical origin of Lidl as a company.
The domain was registered in bad faith because the registrant was aware of Lidl’s business taking advantage of its reputation.