WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION ALDI GmbH & Co. KG. v. Dariusz Hilinski Case No. D2008-1261 1. The Parties
The Complainant is ALDI GmbH & Co. KG. of Mulheim, Germany, represented by Rechtsanwälte Schmidt, von der Osten & Huber, Germany.
The Respondent is Dariusz Hilinski of Warszawa, Poland. 2. The Domain Name and Registrar
The disputed domain name is registered with Az.pl, Inc 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2008. On August 19, 2008, the Center transmitted by email to Az.pl, Inc. a request for registrar verification in connection with the disputed domain name. On August 20, 2008, Az.pl, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2008. On September 10, 2008, the Complainant's Representative requested by email to the Center that the administrative proceeding be suspended to pursue settlement with the Respondent. Accordingly, on September 10, 2008 the Center notified a suspension of the Administrative Proceeding until October 10, 2008. On October 8, 2008, the Complainant's Representative requested by email an extension to the suspension of the Administrative Proceeding. Accordingly, on October 9, 2008 the Center notified an extension of the suspension of the Administrative Proceeding until November 10, 2008. On November 4, 2008, the Complainant's Representative requested by email that the administrative proceeding be re-instituted. Accordingly, on November 4, 2008, the Center notified the re-institution of proceedings and informed the Parties that the new due date for Response was November 15, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 17, 2008.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on November 26, 2008. 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 is a member of the ALDI Group of companies which is an international leader in grocery retailing having over 5,000 stores worldwide. The Group has a significant presence in Europe, with 380 stores in Belgium, 680 stores in France, 230 stores in Denmark, 4,100 stores in Germany, 300 stores in United Kingdom of Great Britain and Northern Ireland, 400 stores in the Netherlands and 130 stores in Spain; together with unspecified numbers in Ireland, Luxembourg, Poland and Portugal. Worldwide, the Complainant maintains more than 100 stores in Australia and 800 stores in more than 26 states in the United States of America. In Germany three out of four households buy goods at the Complainant's stores. The Complainant uses the domain name for its Internet presence.
The Complainant has been using its ALDI trademark in Germany and elsewhere since 1946 and is the owner of an extensive portfolio of registered trademarks including European Community Trade Mark no. 001954031 for the word mark ALDI, registered on April 2, 2002 for goods and services in classes 35 and 38; European Community Trade Mark no. 002071728 for the word mark ALDI, registered on April 14, 2005 for goods and services in classes 3, 4, 7, 9, 16, 24, 25, 29, 30, 31, 32, 33, 34 and 36; European Community Trade Mark no. 003639408 for the word mark ALDI, registered on April 19, 2005 for goods and services in classes 36, 39, 41, and 43; and European Community Trade Mark no. 002714459 for the word mark ALDI, registered on September 5, 2003 for goods and services in classes 35 and 36.
The Respondent registered the disputed domain name on January 23, 2008. 5. Parties' Contentions A. Complainant
The disputed domain name is confusingly similar to the trademark and the business name in which the Complainant has rights.
The disputed domain name is highly similar to the Complainant's trademark ALDI. The only difference is the addition of the generic term “market” that fails to give to the domain name any distinctiveness in relation to Complainant's marks, since the Complainant runs grocery stores. The disputed domain name incorporates the entirety of the ALDI trademark and is clearly designed to invoke it. The addition of the generic expression “market” would likely draw Internet users to the conclusion that the disputed domain name relates to the Complainant's trademark and may give the impression to them that the disputed domain name and website at issue are associated with official Internet sales departments of the Complainant.
The ALDI word was created by the Complainant in conjunction with its business and, through both the trademark registration and public usage the name has become unequivocally associated with the Complainant and its business activities. The Respondent is in no way associated with the Complainant's business and does not, either through his own name or through any associated company name, have any rights or legitimate interest in that name. The Respondent has never corresponded with the Complainant with respect to the use of the Complainant's corporate name or marks and the Respondent's name does not incorporate the disputed domain name.
The use that the Respondent makes of the disputed domain name, which resolves to websites that offer information and sponsored links to other websites, does not reveal legitimate noncommercial use but an attempt to derive benefit from the close resemblance between the disputed domain name and the trademark and goodwill of the Complainant. The disputed domain name is only used by the Respondent to lead consumers to other websites offering online various products and/or services to consumers or is used in order to make money out of advertising.
The Complainant has built up a substantial reputation in its trademark ALDI, particularly in the grocery field. The Complainant uses domain names like , and . In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcends national borders. It is not conceivable that the Respondent would not have had actual notice of the Complainant's trademark rights at the time of the registration of the disputed domain name. It must be considered that the Respondent “grabbed” a famous and well reputed domain name in order to attract Internet users to the Respondent's website or other online locations by creating a likelihood of confusion with the Complainant's mark.
The disputed domain name has been registered and used by the Respondent in bad faith. The website at the disputed domain name hosts sponsored links leading to other websites which are offering to sell various products and services to consumers. This demonstrates that the disputed domain name is used by the Respondent in order to generate money on every click made on the sponsored links. By using the disputed domain name in a such way, the Respondent is intentionally attempting to attract for financial gain, Internet users to the associated website or other online locations by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the registrant's websites or locations or of a product or service on the Respondent's websites or location.
The disputed domain has also been offered for sale on its own website as well at S. This constitutes bad faith pursuant to paragraph 4(b)(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Given the Complainant's extensive portfolio of registered trademarks covering a variety of jurisdictions, the Panel finds that the Complainant has established rights in its ALDI trademark. However, the disputed domain name is not identical to this trademark in that it reproduces the mark together with a generic and descriptive word, namely “market”.
The Complainant submits that its ALDI trademark is very distinctive and widely known and the Panel accepts this. In the Panel's view, the dominant component of the disputed domain name is the ALDI trademark which is incorporated in its entirety. The Panel considers that the Respondent's addition of a descriptive word such as “market” to this mark within the disputed domain name does not serve to distinguish the domain name from the mark. The Panel is fortified in this view by the fact that the word “market” is also descriptive of a significant part of the Complainant's business, namely the operation of grocery stores or supermarkets. As is customary in disputes under the Policy, the generic top level domain “.com” may be disregarded for the purpose of paragraph 4(a)(i). On this basis, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant is required under paragraph 4(a)(ii) of the Policy to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in a disputed domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent did not respond to the Complaint, and as such it did not submit any evidence demonstrating rights or legitimate interests in the disputed domain name. The Complainant asserts that the Respondent has no such rights or legitimate interests and submits that the Respondent is not associated with the Complainant's business in any way. The Complainant further submits that the disputed domain name has been registered by the Respondent in an attempt to derive benefit from the close resemblance between the disputed domain name and the trademark and goodwill of the Complainant. The Complainant has produced a screenshot of the primary web page associated with the disputed domain name together with a screenshot of a web page inviting offers for the disputed domain name which is linked to from the primary web page. It is clear to the Panel from these that the Respondent has used the disputed domain name for a website which provides sponsored links to various online products and services in order to receive advertising revenue and has simultaneously offered the disputed domain name for sale.
Having considered the screenshots, the Panel concludes that it most likely that the Respondent either was receiving or intended to receive “pay per click” revenue from the web page associated with the disputed domain name. The Respondent also sought offers for the purchase of the disputed domain name on the primary website and on a separate linked website and was thus intent on its ultimate sale. These are clearly commercial uses but neither represents a bona fide offering of goods or services, given that in the Panel's view they trade directly upon the fame of the Complainant's trademark. The use of the disputed domain name in such a manner cannot, in the Panel's mind, give rise to any conceivable rights or legitimate interests on the part of the Respondent.
In these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant is required under paragraph 4(a)(iii) of the Policy to prove that the Respondent has registered and used the disputed domain name in bad faith.
In the present case, the Complainant's submissions demonstrate to the Panel's satisfaction that it is more than likely that the Respondent intentionally selected the Complainant's trademark for incorporation within the disputed domain name together with a generic term descriptive of the Complainant's business. The Panel notes that the Respondent went on to use the disputed domain name for a website connected to a “pay per click” parking service and also offered it for sale. In the Panel's view, these circumstances taken together are indicative of registration and use in bad faith, given that they involve deliberate targeting of the Complainant's trademark both at the point of registration and in the subsequent use of the disputed domain name.
The Panel is satisfied that, in terms of paragraph 4(b)(iv) of the Policy, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.
The Panel is also satisfied that, in terms of paragraph 4(b)(i) of the Policy, there are circumstances present indicating that the Respondent registered the disputed domain name for the purpose of selling it to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the disputed domain name. It cannot however be determined with certainty whether a sale of the disputed domain name was the Respondent's primary purpose, given that the Respondent may initially have intended to generate revenue from the pay per click advertising service, with a sale of the disputed domain name as a secondary consideration.
The Respondent failed to file a Response which might have brought evidence of any good faith activity or further details of the Respondent's intent to the Panel's attention and in any event the Panel cannot conceive of any potential or likely good faith activity on the part of the Respondent concerning the disputed domain name.
Accordingly, the Panel finds that the Respondent registered and used the disputed domain name in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
Andrew D. S. Lothian
Sole Panelist
Dated: December 10, 2008
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