The Complainant is Aldi Stores Limited of Atherstone, Warwickshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), Aldi GmbH & Co. KG of Mulheim an der Ruhr, Germany, represented by Freeths LLP, United Kingdom.
The Respondent is Matt Bonner of Manchester, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with Webfusion Ltd trading as 123-reg (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2015. On May 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 4, 2015, the Registrar 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 May 7, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2015.
The Center appointed Mihaela Maravela as the sole panelist in this matter on June 3, 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.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent. See ALDI GmbH & Co. KG v. Wanzhongmedia/Wan Zhong/WhoisPrivacy Limited,WIPO Case No. D2013-1809. 4. Preliminary Matter: Complaint filed by two complainants
The Complaint was filed by Aldi Stores Limited and Aldi GmbH & Co. KG. According to the evidence in the file, Aldi GmbH & Co. KG is the owner of the trademark registrations relied upon in the Complaint. It appears from the Complaint that Aldi Stores Limited is under the common control of Aldi GmbH & Co. KG and is a licensee of the relevant trademark registrations. No evidence of such license was adduced by the Complainant. Although no documentary evidence was produced in this respect, the Panel accepts this statement which is certified in the Complaint to be accurate (for a similar finding see Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington,WIPO Case No. D2003-0796). It appears that both Complainants use the trademark ALDI.
Neither the Policy nor the Rules expressly provide for the possibility that a complaint is filed by more than one complainant. In this context and given the facts of the case, this Panel accepts the designation of Aldi Stores Limited as one of the Complainants in this case. See also Staples, Inc., Staples The Office Superstore, Inc., and Staples Contract and Commercial, Inc. v. SkyLabs Corporation and DL Enterprises,WIPO Case No. D2004-0220. Also, allowing both entities indicated in the Complaint to appear as Complainants is unlikely to cause prejudice to the Respondent. See also Schering-Plough Corporation, Schering Corporation şi afiliaţii şi subsidiarele lor v. Amaltea Impex SRL,WIPO Case No. DRO2009-0008). This Panel will further refer to both Complainants as the “Complainant”. 5. Factual Background
The Complainant Aldi GmbH owns a number of well-known registered marks comprising the ALDI name. Aldi Stores Limited is a company under common control of Aldi GmbH and a licensee of the ALDI trademarks. Aldi Stores Limited is the owner of substantial goodwill and reputation in the United Kingdom for retailing of groceries, clothing and other household goods. The Complainants and their connected companies are recognised as international leaders in grocery retailing. They have more than 5,000 stores across the world and are also active in Australia, Austria, Belgium, Denmark, France, Germany, Ireland, Luxembourg, the Netherlands, Poland, Portugal, Slovenia, Spain, Switzerland, and the United States of America.
The disputed domain name was registered in January 28, 2013, and is linked to a webpage where only the statement below is included:
“2014 Copyright. All Rights Reserved.
The Sponsored Listings displayed above are served automatically by a third party. Neither Parkingcrew nor the domain owner maintain any relationship with the advertisers. In case of trademark issues please contact the domain owner directly (contact information can be found in whois). Privacy Policy” 6. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name incorporates its registered trademark ALDI along with the word “tyres” and that given the wide scope of the Complainant’s business activities the addition of the word “tyres” only serves to enhance confusion. When used with ALDI, an internationally known retailer, an inference is drawn that the website will be showing tyres produced or sourced by Aldi. In conclusion, the Complainant contends that the disputed domain name is likely to be taken by most people as a reference to the Complainant’s business and as a consequence, most people using the disputed domain name in order to access a website will be expecting to reach a website belonging to or associated with the Complainant.
Moreover, according to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name since the Complainant has not licensed or otherwise authorized the Respondent to use the ALDI trademark. The Respondent has not conducted any prior business under the name ALDI in connection with a bona fide offering of goods or services. The disputed domain name currently resolves to a webpage which makes reference to the display of “Sponsored Listings”. Although the webpage does not feature any such sponsored links, the Complainant expresses its concern that such links have been featured on the webpage in the past, and could be featured on the webpage in the future, thereby generating income for the holder of the disputed domain name and in the process, taking unfair advantage of the ALDI name and trademarks.
In addition, the Complainant contends that the Respondent was aware of its trademarks prior to registering the disputed domain name and submits that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant or to a competitor of the Complainant for valuable consideration in excess of out-of-pocket expenses. The Complainant contends that the Respondent threatens to disrupt the Complainant’s business inter alia by preventing from reflecting the ALDI trademark in a corresponding domain name. The Respondent’s bad faith is further demonstrated by its inaction, that is, passive holding of the disputed domain name to the exclusion of the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 7. Discussion and Findings
“A Panel shall 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 15(a) of the Rules.)
Applied to this case, paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel must find that the Complainant has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark.
Here, the Complainant has demonstrated ownership of various ALDI registered trademarks, among which:
- United Kingdom Trademark Registration no. 00002250300 ALDI registered on October 26, 2000;
- Community Trade Mark Registration no. 001954031 ALDI, registered on April 2, 2002;
- Community Trade Mark Registration No. 002071728 ALDI, registered on April 14, 2005;
- Community Trade Mark Registration No. 002714459 ALDI, registered on September 5, 2003;
- Community Trade Mark Registration No. 003360914 ALDI, registered in June 2, 2010;
- Community Trade Mark Registration No. 003639408 ALDI, registered in April 19, 2005;
- Community Trade Mark Registration No. 006870943 ALDI, registered in October 19, 2009.
The Complainant provided evidence in support of the above. These trademark registrations predate the registration of the disputed domain name (January 28, 2013).
As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name to the trademark rights which have been proved.
The relevant part of the disputed domain name is “aldityres”, which appears to be a combination of two words: “aldi” and “tyres”. The first word is identical to the Complainant’s ALDI trademark, while the second word is a descriptive word for products which the Complainant might sell under its trademark. Under such circumstances, as held by other panels in similar situations, in this Panel’s view, the combination of the trademark and the word “tyres” does not distinguish the disputed domain name from the ALDI trademark. Rather, it makes it likely that Internet users would associate the disputed domain name with the Complainant and its services or products, and would have the impression that the disputed domain name is related to the Complainant. (See ALDI GmbH & Co. KG v. Emre Turizm Seyahat Ticaret Emlak A.S., Harun Demirci,WIPO Case No. D2014-0697).
In addition, it is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”) such as “.com”, is typically ignored when assessing identity or confusing similarity of a trademark and a domain name.
The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it 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 of WIPO Panel Views on Selected UDRP Questions, Second Edition (“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 prima facie 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 […]”.
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights. As such, the Complainant has established that it is the owner of the ALDI trademarks and claims that the Complainant has not licenced or otherwise authorised the Respondent to use the ALDI trademark. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “Aldi”. See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957.
By not submitting a Response, the Respondent has failed to invoke any circumstances, which could demonstrate any rights or legitimate interests in the disputed domain name. Furthermore, considering that the Respondent has not contested that the disputed domain name does not resolve to an active website created by the Respondent, there are no indications that the Respondent could demonstrate rights or legitimate interests in the disputed domain name. (See, e.g., Pizza Hut International, LLC v. Kim Beom Sung,WIPO Case No. DRO2002-0003).
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
To fulfill the third requirement of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
In order to assess whether the Respondent registered and uses the disputed domain name in bad faith, paragraph 4(b) of the Policy provides examples constituting evidence of bad faith.
While the examples are indicative (see Nova Banka v. Iris,WIPO Case No. D2003-0366), paragraph 4(b)(iv) of the Policy has direct bearing to the present case:
“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his website 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 said website location or of a product or service on that website location.”
As held by other panels, “the Complainant’s ALDI trademark is very well-known. The Complainant operates thousands of supermarkets under that business name and trademark. The term ALDI has no inherent meaning and is very distinctive. The reputation of the mark is not limited to one country but is widespread in Europe and also in the US and in Australia.” (See ALDI GmbH & Co. KG v. bestview GmbH netsolutions,WIPO Case No. D2011-1383). Under such circumstances, as regards the registration in bad faith, and given the evidence adduced by the Complainant and not refuted by the Respondent, this Panel is satisfied that the Respondent registered the disputed domain name with knowledge of the Complainant’s ALDI trademarks. On notoriety of the ALDI trademark see also ALDI GmbH & Co. KG v. Marius Mueller / Wuxi Yilian LLC,WIPO Case No. D2014-1391; ALDI GmbH & Co. KG v. (1) ALDIMARKET .COM Privacy Protect .org and (2) Rampe Purda,WIPO Case No. D2010-2114.
As regards the use, on the webpage to which the disputed domain name resolves only the following statement is included:
“2014 Copyright. All Rights Reserved.
The Sponsored Listings displayed above are served automatically by a third party. Neither Parkingcrew nor the domain owner maintain any relationship with the advertisers. In case of trademark issues please contact the domain owner directly (contact information can be found in whois). Privacy Policy”
It appears that the intention is that the webpage includes sponsored links where presumably Internet users could click on an advertisement which would take them to a webpage where services or products are offered.
The Panel notes, in line with other UDRP Panels, with regard to the above disclaimer, that such a disclaimer is not normally sufficient for a respondent to eschew responsibility for the bad-faith use of a domain name in circumstances such as these. Whether the sponsored listings displayed at the disputed domain name are in fact generated by a third-party is largely immaterial. As the registrant of record, it is ultimately the Respondent’s responsibility to ensure that the content at the disputed domain name does not make illegitimate use of the trademark rights of third-parties such as those of the Complainant. See WIPO Overview 2.0, paragraph 3.8.
In such circumstances, it can be inferred that the intention of the Respondent is to gain financially by making use of the disputed domain name in this way, or allow a third party to do so, by generating a misleading impression of some connection between the disputed domain name and the Complainant. See for a similar finding ALDI GmbH & Co. KG v. bestview GmbH netsolutions,WIPO Case No. D2011-1383.
In any event, in the absence of any reply from the Respondent that may provide further understanding of the Respondent’s actual control of the disputed domain name, if one were to consider the Respondent’s use of the disputed domain as passive holding this would not prevent a finding of bad faith. The requirement of the Policy of a domain name “being used in bad faith” is not limited to positive actions (See, e.g., Beiersdorf AG v. Web4comm Srl Romania, WIPO Case No. DRO2005-0002). In this particular case, the following actions are considered as use in bad faith:
- the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name;
- the Respondent has not contested any of the allegations made by the Complainant; and
- the Complainant trademark ALDI is well-known.
In light of these particular circumstances, the Panel concludes that the Respondent’s apparent passive holding of the disputed domain name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the disputed domain name “is being used in bad faith” by the Respondent.
Given the above circumstances, the Panel concludes that the disputed domain name was registered and used in bad faith. 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 Aldi GmbH & Co. KG.
Mihaela Maravela
Sole Panelist
Date: June 17, 2015
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