The Complainant is ALDI GmbH & Co. KG of Mülheim, Germany, represented by Schmidt, Von der Osten & Huber, Germany.
The Respondent is Chris Huff of Nokomis, Illinois, United States of America (“United States”); N, of Westchester, California, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2015. On April 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2015, the Registrar transmitted by email to the Center its verification response
(a) it is the Registrar for the disputed domain name; and
(b) disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.
Accordingly, the Center sent an email communication to the Complainant on April 20, 2015 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 April 22, 2015.
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, and the proceedings commenced on April 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2015. The Response was filed with the Center on May 13, 2015.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 28, 2015. 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 part of the ALDI group of companies which has over 9,500 grocery stores worldwide. According to the Complainant, it has some 4,320 stores in Germany, 1,200 stores in the United States, 919 stores in France, more than 400 stores in each of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), Belgium, the Netherlands and Austria, 272 stores in Australia and numerous stores in many other countries.
The Complainant has been using its trademark, ALDI, since 1946. The Complaint includes evidence of a number of registered trademarks for ALDI or which incorporate ALDI. For present purposes, it is sufficient to note only a few:
(a) Community Trademark Nos 001954031 (registered in 2002), 002714459 (registered in 2003), 002071728 and 003639408 (both registered in 2005) for ALDI in respect of a range of goods and services in International Classes 3, 4, 7, 9, 16, 24, 25, 29, 30, 31, 32, 33, 34, 35, 36, 38, 39, 41 and 43; and
(b) German Trademark No. DE 1039910 for ALDI and device (registered in 1982) for a range of goods in International Classes 9 and 16.
The Complainant has also submitted evidence of the market recognition of ALDI. It is unnecessary to go into details about that as the Respondent accepts that the Complainant’s trademark is internationally recognized.
According to the Registrar, the Respondent registered the disputed domain name on January 1, 2012. That is consistent with material on the website which the disputed domain name resolves to, where it is stated that the Respondent registered the disputed domain name over three years ago.
Before the Complaint was filed, the disputed domain name resolved to a website which featured a banner on the top of the home page “I ♥︎ [the ALDI device depicted in Trademark No. DE 1039910]”. There were three images below this. Each of which appears to be the same photograph of a beach scene at sunset with the words “I LOVE ALDI!” superimposed over it. There would appear to have been one single “post”, made in March 2015. In it, the Respondent professes to wanting to start a site that shows how great a store Aldi is. The post goes on to report that he had noticed an increase in traffic to his site a week or two previously. Apparently, it went from virtually zero to close to 100 visitors a day. Further investigation revealed that there had been a “fan” site at , but which had recently closed down following contact by the Complainant.
After the Complaint was filed, the website was amended to include a disclaimer of any affiliation with the Complainant’s stores. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for ALDI referred to in section 4 above.
The disputed domain name differs from the Complainant’s trademark by the addition of “I”, “love” and the generic Top Level Domain, “.com”. The latter of which may, of course, be disregarded as a functional element of the domain name system: Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc.,WIPO Case No. D2001-0252.
The Respondent does not dispute either the Complainant’s ownership of the trademark, ALDI, or its international reputation in that trademark. Consistently with the number of stores the Complainant has in the United States, this would appear to include recognition that the Complainant has such a reputation in ALDI in the United States. Rather, he contends that the addition of the words “I Love” in front of the ALDI trademark removes any real potential for deception or confusion. The Panel considers that this mistakes the nature of the inquiry at this stage.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. Viewed as a whole, the string “ilovealdi” plainly calls to mind some connection or relation with the Complainant. The word “aldi” is an invented or fanciful term, distinctive of the Complainant’s stores, goods and services. The words “I” and “love” are just ordinary descriptive English words which combine to make a common, every day English expression. Such a combination is often used by trademark owners and marketers to promote their brands. It could also be used by someone who wished to operate a “fan” site, but such a use works because it identifies the trade source which is the object of the, in this case, love. See e.g. Ferrero S.p.A. v. Dante Ferrarini,WIPO Case No. D2006-1163 () and Inter-IKEA Systems B.V. v. Henric Lagerquist / Loopia Webbhotel AB,WIPO Case No. DNU2009-0003 (). Consistently with the approach outlined above, the “fan” nature of the usage, if that be the case, may be relevant under other elements of the Policy .
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and the burden of production will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent's name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name. In the present circumstances, these are sufficient to establish the required prima facie case.
As indicated above, the Respondent claims that he does have rights or legitimate interests in the disputed domain name as he says he registered it for the noncommercial purpose of providing an outlet to express his love for the great ALDI brand and a forum for other like, minded appreciators of ALDI.
The nature of the Respondent’s website has been described in Section 4 above. The Panel accepts that such a use may qualify as demonstrating rights or legitimate interests under paragraph 4(c)(iii) if that is its genuine purpose. There are three problems with the Respondent’s claim in this case.
First, although the Respondent registered the disputed domain name over three years ago, the website does not in fact appear to have been used in any substantive way at all. So far as can be ascertained from the website itself, there is only one single post on it. That was posted in the month before the Complaint was filed and only after the Respondent discovered the Complainant had challenged a “similar”, site operating in the United Kingdom. The Respondent notes in that post that up till then, his website was essentially inactive. The Respondent admitted that he essentially did nothing other than register the disputed domain name to implement his claimed purpose. He has not provided an explanation for all those years of inactivity.
Secondly, in the post on his website, the Respondent mentions that he has a number of other websites. It was these that presumably were attracting most of his attention. The Respondent, however, does not disclose the nature of those other websites. So, the Panel is left in the dark about whether they are commercial sites, fan sites for other passions of the Respondent or what. Given the inactive nature of his site and the third matter discussed below, the Respondent needed to address what these other websites are frankly and fully.
Thirdly, in the concluding paragraphs of the post on his website, the Respondent stated:
“If I were Aldi, I would have hired that guy. I would have sanctioned his website and helped him to promote my business even more.
“So, Aldi, if you’re reading this, I’d love to work for you. I still love you. And think a website such as this will help, not hurt, your business.
“This could be the beginning of a beautiful friendship.”
The Panel is troubled, however, by the Respondent’s plea that he would “love to work” for Aldi. That can be read as suggesting, in the context of domain name registration, a commercial or ulterior motive. Taken together with the Respondent’s failure to identify the nature of his other websites and, especially, to explain why his site was not in fact being used for the claimed purpose despite the passage of more than three years, the Panel considers the Respondent’s purported justification should not be accepted. Accordingly, the Respondent has not rebutted the prima facie case established by the Complainant. Therefore, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
In this case, the Complainant contends that the Respondent registered the disputed domain name to attract Internet users to his website for commercial gain through the potential for confusion arising from the use of the Complainant’s trademark. In addition to the international renown of its trademark, the Complainant points to a registration and log-in facility on the Respondent’s website which the Complainant alleges allows the Respondent some capacity to engage in data harvesting or extracting important or useful information from Internet users in the mistaken belief they were dealing with the Complainant. The Respondent says this registration feature is just part of the standard package provided by the website designer, which the Respondent did not intentionally choose. The Respondent also says the collection of such data helps promote community and discussion in line with his claimed purpose. The Complainant also contends that the registration of the disputed domain name by the Respondent disrupts the Complainant’s business by precluding it from registering the disputed domain name.
It is not in dispute that the Respondent was well aware of the Complainant and its trademark before he registered the disputed domain name. Indeed, that must necessarily follow from his claimed purpose in registering it.
As noted above, the Respondent has positively advanced as justification for his registration and use of the disputed domain name his claim that he wished to operate a forum to express appreciation for the Complainant and its business. On the record in this case, that claim has not been made out. That failure turned in part on the commercial nature of the Respondent’s expression of interest in “working” for the Complainant and the Respondent’s coyness over the nature of his other websites. Given that failure and the strong international reputation of the Complainant in its trademark (as recognized by the Respondent), it is difficult to envisage how the Respondent could legitimately use the disputed domain name. Accordingly, the Panel finds that the Respondent registered the disputed domain name in bad faith. In addition, although some very minimal use of the disputed domain name has been made, the retention of the disputed domain name in these circumstances constitutes use in bad faith in line with the principle in Telstra Corporation Limited v Nuclear Marshmallows,WIPO Case No. D2000-0003 that passive “use” can constitute use in bad faith under the Policy. 6. 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.
Warwick A. Rothnie
Sole Panelist
Date: June 11, 2015
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