The Complainant is ALDI GmbH & Co. KG of Mülheim, Germany, represented by Rechtsanwälte Schmidt, von der Osten & Huber, Germany.
The Respondent is zhou xiaolei of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2014. On June 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 9, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 13, 2014 providing the Registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on the same day.
On June 13, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. The Complainant requested English be the language of the proceeding on the same day. Several email communications were received from the Respondent between June 14 and June 18, 2014 indicating the registration of the Disputed Domain Name was verified by the Registrar and that the Registrar did not inform the Respondent that there was any problem with the Disputed Domain Name at the time of registration. The Center acknowledged receipt of these email communications and reminded the Respondent of the due date for submission of language request. Nevertheless, the Respondent did not make any comment on or object to the language requested by the Complainant by the specified due date.
The Center verified that the Complaint together with the amended 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 in both Chinese and English, and the proceeding commenced on June 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2014. A couple of email communications were received from the Respondent between June 19 and June 20, 2014. The Respondent asked what the problem was with the Disputed Domain Name and what the content of the Complaint was. The Center replied to these email communications and reminded the Respondent (in both Chinese and English) of the due date for submission of a Response. The Respondent did not file a formal Response by the specified due date. On July 10, 2014, the Center informed the parties that it would now proceed with the panel appointment.
On July 10 and July 11, 2014, the Respondent indicated that due to the language issue, it was not able to file a Response. On July 11, 2014, the Center acknowledged receipt of these email communications and informed the Respondent that it did not receive any comment from it regarding the language of the proceeding by the specified due date. The Center also reminded the Respondent that:
“On June 19, 2014, the Center notified the Complaint to you in both Chinese and English, indicating:
‘Given the provided submissions and circumstances of this case, the Center has decided to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
In accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of proceedings. Having provided both parties with an opportunity to comment, any subsequent communications received by the Center from the parties regarding the language issue will be a matter for consideration at the discretion of the Panel (on appointment). The Panel may choose to write a decision in either language, or request translation of either party's submissions.’”
The Center appointed Peter J. Dernbach as the sole panelist in this matter on July 14, 2014. 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.
On July 15, 2014, the Respondent sent two informal emails to the Center. The Respondent confirmed that it had received the Complaint, but the Respondent indicated that it does not accept the claim that the Disputed Domain Name infringes on any of the Complainant’s rights. The Respondent further claimed that the registration of the Disputed Domain Name does not contain the intention of infringement, and the content of the disputed website has nothing to do with supermarkets. The Center acknowledged receipt of the Respondent’s emails on July 15, 2014 and informed the Respondent that “[p]aragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of Supplemental Filings (including further statements or documents) received from either Party. Accordingly, the Panel will be informed of the Center's receipt of this Supplemental Filing. It will be in the sole discretion of the Panel to determine whether to consider and/or admit the Supplemental Filing in rendering its decision, and whether to order further procedural steps, if any”. 4. Factual Background
The Complainant is a member of ALDI Group, an international grocery retailing company. The Complainant and the ALDI Group owns more than 9,500 stores across the world. The Complainant is the trademark owner of ALDI, inter alia:
(1)>ALDI, Chinese trademark, Registration No. 3747775 in class 36, registered on April 21, 2009.
2) 阿尔迪 ALDI (ALDI in Chinese characters & ALDI), Chinese trademark, Registration No. 10128541 in class 36, registered on January 7, 2013.
3) ALDI, Community trademark (CTM), Registration No. 001954031 in classes 35 and 38, registered on April 2, 2002.
According to the Registrar’s verification, the Respondent is zhou xiaolei. The Disputed Domain Name was registered on February 20, 2014. 5. Preliminary Procedural Issues A. Language of the Proceeding
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The Rules allow the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states: “in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (See paragraph 4.3 of WIPO Overview 2.0).
The Complainant requests the language of the proceeding to be English. The Registration Agreement for the Disputed Domain Name is in Chinese. The Respondent and the Registrar are located in China. However, given to the following factors, the Panel decides that the language of the proceeding shall be English.
1) The Complainant has provided screenshots of the disputed website. Although the disputed website contains mostly text in the Chinese language, it also contains some text in the English language, such as “ALDI Group”, “Valid For”, “Type of Visa”, “Duration of Stay”, “Resident of Investment” etc.
2) According to the screenshots of the disputed website, the Respondent uses the company name “ALDI International Limited” at the home page of the website. Apparently, the business scope of the Respondent’s company includes immigration, foreign education, overseas investment consultancy etc., which are related to international and cross-border affairs and likely to require the ability to understand English.
3) The Center has notified the parties of the potential language issue in both Chinese and English on June 13, 2014. The Respondent replied to the Center’s notification on June 14 and 18, 2014 in English regarding the domain name dispute. The Respondent did not make any comment on or object to the language requested by the Complainant before the specified deadline indicated in the Center’s June 13, 2014 notification.
Given these facts, the Panel finds that the Complainant has proved that it is more likely than not that the Respondent has sufficient familiarity with English. The English used by the Respondent at the disputed website and in its letters demonstrates its ability to understand and communicate in English. On the other hand, the Complainant has stated that it is not able to communicate in Chinese and therefore, if the Complainant were required to submit all documents in Chinese, the proceeding will be unduly delayed and the Complainant would have to incur substantial expenses for translation. Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel decides, under paragraph 11 of the Rules, that (i) English shall be the language of the proceeding in this case, but (ii) in the interest of providing both parties with a fair and expeditious resolution of this domain name dispute, the Panel will review the Respondent’s emails in Chinese and English and determine what consideration, if any, to give them in resolving this matter, as discussed below. B. Respondent’s Supplemental Filings
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 June 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for the Response was July 9, 2014. The Center received three email communications from the Respondent between June 19 and June 20, 2014. The Respondent asked what the problem was with the Disputed Domain Name and about the content of the Complaint. The Center replied to these email communications and reminded the Respondent of the due date for submission of a Response. The Center also reminded the Respondent (in Chinese and English) that the Respondent can refer to the Center’s notification on June 19, 2014, which provides the information of the Model Response and filing guidelines made available on the Center’s website (/amc/en/domains/respondent/index.html). The Respondent did not file a formal Response by the specified due date. On July 10, 2014, the Center informed the parties that it would now proceed with the panel appointment.
After the due date for the Respondent to submit its Response had passed, the Respondent sent several emails to the Center on July 10 and July 11, 2014, indicating that due to the language issue, it was not able to file a Response. On July 11, 2014, the Center acknowledged receipt of these email communications and informed the Respondent that it did not receive any comments from it regarding the language of the proceeding by the specified due date.
On July 15, 2014, the Respondent sent two emails to the Center. The Respondent confirmed that it has received the Complaint, but does not accept the claim that the Disputed Domain Name infringes the Complainant’s rights. The Respondent further claimed that the registration of the Disputed Domain Name does not contain the intention of infringement, and the content of the disputed website has nothing to do with supermarkets. The Center acknowledged receipt of the Respondent’s Supplemental Filings on July 15, 2014 and informed the Respondent that “[p]aragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of Supplemental Filings (including further statements or documents) received from either Party. Accordingly, the Panel will be informed of the Center's receipt of this Supplemental Filing. It will be in the sole discretion of the Panel to determine whether to consider and/or admit the Supplemental Filing in rendering its decision, and whether to order further procedural steps, if any”.
Having regard to all the circumstances, including the verification of contacts between the Center and the Respondent, the clear notification in both Chinese and English to the Respondent of its options and timeframe for the provision of a Response, and the communicative facility shown by the Respondent in its email communications of June 18, 19 and 20, 2014, the Panel concludes that it was the Respondent’s considered decision not to respond formally or within the required deadline to the Complaint. Accordingly, the Panel proceeds on the basis that no formal Response has been filed. Nevertheless, the Panel will take into account the contents of the Respondent’s email communications of July 15, 2014 in rendering its Decision. 6. Parties’ Contentions A. Complainant
The Complainant’s contentions could be summarized as follows:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Disputed Domain Name incorporates the Complainant’s ALDI trademark in its entirety. “Intl” is a common abbreviation for the generic word “international”, which cannot distinguish the Disputed Domain Name from the Complainant’s ALDI trademark. The suffix of the Disputed Domain Name “.com” is non-distinctive because it is required for the registration of the domain name. The Complainant’s ALDI trademark is the only distinctive element of the Disputed Domain Name. The Respondent’s unauthorized use of the ALDI trademark with the mere addition of the non-distinctive word element “intl” renders the Disputed Domain Name confusingly similar to the ALDI trademark.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The “Aldi” word was created by the Complainant in conjunction with its business. Through both the trademark registration and long-term usage, the ALDI trademark has become well-known to the public. The Respondent is not related to the Complainant in any way. There is no relationship between the Complainant and the Respondent. The Respondent is not licensed, permitted or entitled to other rights by which the Respondent could register, own or use any domain name incorporating the Complainant’s ALDI trademark.
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
The Complainant began using the ALDI trademark in 1946 and has built up a substantial reputation in its ALDI trademark, particularly in the field of grocery retailing, but also in real estate and travel arrangement. Because of the fame of the ALDI trademark, the Respondent cannot credibly claim to have been unaware of the existence of the Complainant’s trademark and reputation before registering the Disputed Domain Name. The Respondent chose to incorporate the ALDI trademark as the only distinctive word of the Disputed Domain Name. The Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s well-known ALDI trademark. Therefore, the Respondent has registered and used the Disputed Domain Name in bad faith. B. Respondent
No Response was filed by the Respondent. However, after the due date to file a Response, the Respondent sent several emails to the Center between July 10, 2014 and July 15, 2014. In the Respondent’s July 15, 2014 email, the Respondent confirmed that it has received the Complaint, but does not accept the domain name infringement claim. The Respondent further claimed that the registration of the Disputed Domain Name does not contain the intention of infringement, and the content of the disputed website has nothing to do with supermarkets. The Respondent has not, however, filed a formal Response to the Complaint or provided any additional allegations or evidence to refute the Complainant’s contentions. 7. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]” The Complainant has established that it is the owner of the ALDI trademark.
The threshold test for confusing similarity under paragraph 4(a)(i) of the Policy involves a comparison between the trademark and the domain name itself to determine the likelihood of confusion by Internet users. The trademark at issue generally needs to be recognizable as such within the domain name, and the addition of common, dictionary, descriptive or negative terms are typically not regarded as sufficient to prevent threshold confusion by Internet users (see paragraph 1.2 of WIPO Overview 2.0).
The Disputed Domain Name incorporates the ALDI trademark in its entirety. In addition to the Complainant’s ALDI trademark, the Disputed Domain Name consists three elements of “-”, “intl” and “.com”. “Intl” is the abbreviation of the English word “international”, which is a generic word and cannot distinguish the Disputed Domain Name and the Complainant's ALDI trademark. “-” is a punctuation mark and cannot distinguish the Disputed Domain Name and the Complaint’s ALDI trademark either. As for the applicable top-level suffix such as “.com” in the Disputed Domain Name, it cannot distinguish the Disputed Domain Name from the Complainant’s ALDI trademark in the instant case, either. The ALDI element is still immediately recognizable as the Complainant’s trademark. In the Panel’s view, the addition of a descriptive and generic term does not mitigate the likelihood of confusion between the Disputed Domain Name and the Complainant’s ALDI trademark. (J. Choo Limited v. Weng Huangteng,WIPO Case No. D2010-0126; J. Choo Limited v. Hui Wang aka Wang Hui,WIPO Case No. D2010-0534).
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and the condition of paragraph 4(a)(i) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interest in respect of the [disputed] domain name[.]”
Paragraph 4(c) of the Policy sets out the following several circumstances “[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent’s] rights or legitimate interests to the [disputed] domain name for the purposes of Paragraph 4(a)(ii) [of the Policy]:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, which states: “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such primafacie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]”.
The Complainant has established that it is the owner of the ALDI trademark and claims that the Respondent is not connected with nor affiliated to the Complainant nor is the Respondent authorized to use the ALDI trademark to register the Disputed Domain Name or any other variations.
According to the Registrar’s verification, the name of the Respondent is zhou xiaolei, which has no apparent connection to the ALDI trademark. There is no evidence indicating that the Respondent is commonly known by the Disputed Domain Name or the name of “Aldi”. The Complaint also provides screenshots from the website under the Disputed Domain Name, which establish that the disputed website is apparently used to promote the Respondent’s services, which is a commercial use.
The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.
The Respondent did not submit any formal Response to the Complaint. Although the Respondent has sent several emails to the Center before and after the specified deadline (July 9, 2014) to submit the Response, the Respondent did not submit any allegation or evidence establishing that it has rights or legitimate interests in the Disputed Domain Name or that the Disputed Domain Name is used in connection with a bona fide offering of goods or services or for noncommercial or fair use. Therefore, there is no allegation or evidence from the Respondent indicating any rights or legitimate interests as demonstrated in paragraph 4(c) of the Policy.
Meanwhile, the Respondent does not accurately and prominently disclose its relationship with the Complainant. The Respondent uses the company name as “ALDI International Limited” at the homepage of the disputed website, which increases the likelihood of confusion for Internet users.
Having considered the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the disputed] domain name has been registered and is being used in bad faith.”
Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
The Complainant’s ALDI trademark has been registered in many countries around the world, including China and it has been registered long before the registration of the Disputed Domain Name (February 20, 2014). The Complainant is an international grocery retailing company and currently owns approximately 247 stores in Spain. The screenshots of the disputed website shows that the Respondent appears to provide consultancy services in the field of immigration to Spain. On the disputed website, the Respondent claims that its company owns a team and office in Spain to provide professional consultancy services.
The Respondent chose the ALDI trademark as the only distinctive part of the Disputed Domain Name. In the Respondent’s July 15, 2014 email to the Center, it claims that its registration of the Disputed Domain Name has no intention of infringement. However, no allegation or evidence suggesting that the Respondent selected ALDI trademark as used in the Disputed Domain Name for any reason other than the reputation of the Complainant’s trademark. Therefore, it is more likely than not that the Respondent knew the Complainant’s ALDI trademark when registering the Disputed Domain Name. In the circumstances, the Panel finds that the Disputed Domain Name has been registered in bad faith.
In its July 15, 2014 email to the Center, the Respondent indicates that the content of the disputed website has no connection with supermarkets, which is the Complainant’s main business scope. However, the Respondent does not only use the company name “ALDI International Limited” at the homepage of the disputed website, but also uses the name “ALDI”, “ALDI Group” or “ALDI-INTL” to introduce what appears to be its company and its immigration, overseas study and investment consultancy services. There is no indication that accurately and prominently discloses the Respondent’s relationship with the Complainant. These features make the website under the Disputed Domain Name appear to be affiliated or endorsed by the Complainant. The Panel is therefore of the opinion that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion.
Having considered the above, the Panel finds that the Disputed Domain Name has been registered and being used in bad faith, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy. 8. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainant.
Peter J. Dernbach
Sole Panelist
Date: July 28, 2014
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