The Complainants are Aldi Stores Limited of Warwickshire, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), a company incorporated under the laws of the United Kingdom, and Aldi GmbH & Co. KG of Mulheim an der Ruhr, Germany, a company registered under the laws of Germany, (collectively, the "Complainant"),1 represented by Freeths LLP, United Kingdom.
The Respondent is Greg Saunderson of East Yorkshire, United Kingdom, self-represented. 2. The Domain Names and Registrar
The disputed domain names and (the "Disputed Domain Names") are registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 10, 2016. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 10, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2016. The Center received email communications from the Respondent on February 19 and 23, 2016. Further to the Complainant's request on February 26, 2016, the proceeding was suspended until March 30, 2016. On March 24, 2016, the Complainant submitted its reinstitution request and the Center informed the Respondent that the due date for Response was April 3, 2016. The Respondent did not submit a Response.
The Center appointed Lynda M. Braun as the sole panelist in this matter on April 12, 2016. 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.
The Panel has determined that the language of the proceeding is English. 4. Factual Background
The Complainant owns and operates a chain of retail grocery stores that are engaged in the sale of a wide range of grocery products and other merchandise. The Complainant was incorporated in 1988 and was formerly known as Aldi Limited. With more than 5,000 stores worldwide, including in the United Kingdom, Australia, Austria, Belgium, Denmark, France, Germany, Ireland, Luxembourg, the Netherlands, Poland, Portugal, Slovenia, Spain, Switzerland, and the United States, the Complainant is recognized as an international leader in grocery retailing.
The Complainant owns numerous trademarks for the word mark ALDI, either standing alone or used with accompanying words, in the United Kingdom and the European Union (collectively, the "ALDI Mark"). The Complainant's trademarks were filed as early as the year 2000.
The Complainant registered the domain name in 1996 and has used it continuously since that time to promote its goods and services through its official website at "www.".
The Respondent registered the Disputed Domain Names on August 6, 2015. The Disputed Domain Names resolve to a parking page hosted by the Registrar that contains sponsored third party links.2
Although not part of this proceeding, the Respondent registered three other domain names that incorporate and are confusingly similar to the Complainant's ALDI Mark: , and .
Prior to submitting the Complaint, the Complainant's representative sent a letter to the Respondent, informing the Respondent of the Complainant's trademark rights in the ALDI Mark. The Respondent did not respond to that letter. 5. Parties' Contentions A. Complainant
The Complainant contends that:
- The Disputed Domain Names are confusingly similar to the trademarks in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
- The Disputed Domain Names were registered and are being used in bad faith.
The Complainant seeks the transfer of the Disputed Domain Names from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Names transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) The Disputed Domain Names are 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 Names; and
(iii) The Disputed Domain Names were registered and are being used in bad faith. A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, are the Disputed Domain Names identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the ALDI Mark based on both longstanding use as well as its numerous trademark registrations. The Disputed Domain Name consists of the ALDI Mark followed by the descriptive word "direct", connected by a hyphen, and followed by the generic Top-Level Domain ("gTLD") ".com". The Disputed Domain Name consists of the ALDI Mark followed by the descriptive word "direct", and followed by the gTLD ".com".
Numerous UDRP decisions have reiterated that the addition of a descriptive or generic word to a trademark is insufficient to avoid confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795; Hoffman-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923; Nintendo of America, Inc. v. Fernando Sascha Gutierrez,WIPO Case No. D2009-0434; Weight Watchers International, Inc. v. Kevin Anthony,WIPO Case No. D2011-2067.
Further, although the Disputed Domain Name contains a hyphen between the ALDI Mark and the word "direct", this is irrelevant for purposes of the Policy, because the presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. See Fort Knox National Company v. Ekaterina Phillipova,WIPO Case No. D2004-0281 ("[T]his Panel believes that the expression true-pay is similar to the trademark TRUEPAY.").
Finally, the addition of a gTLD such as ".com" in a domain name may be technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant's prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its ALDI Mark. There is no evidence that the Respondent is commonly known by the Disputed Domain Names, nor does the Complainant have any type of business relationship with the Respondent. Moreover, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names.
The Disputed Domain Names resolve to a parking page hosted by the Registrar, which contains sponsored pay-per-click third party links. While there is nothing per se illegitimate in using a domain name parking service, linking a domain name to such a service with a trademark owner's name in mind in the hope and expectation that Internet users searching for information about the business activities of the trademark owner will be directed to the parking page is a different matter. Such activity does not provide a legitimate interest in that domain name under the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith
The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith registration and use of the Disputed Domain Names pursuant to paragraph 4(a)(iii) of the Policy.
First, the registration of a domain name that is confusingly similar to a registered trademark by an entity that has no relationship to that mark may be sufficient evidence of opportunistic bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith). Based on the circumstances here, the Respondent registered and used the Disputed Domain Names in bad faith in an attempt to create a likelihood of confusion with the Complainant's ALDI Mark.
Second, the Respondent's action of registering the Disputed Domain Names evidences a clear intent to disrupt the Complainant's business by attracting Internet users to the Disputed Domain Names and website to which they resolve by creating a likelihood of confusion with the Complainant's ALDI Mark as to the source, sponsorship, affiliation or endorsement of the Respondent's web page. The Respondent's registration and use of the Disputed Domain Names indicate that such registration and use had been done for the specific purpose of trading on the name and reputation of the Complainant and its ALDI Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "M",WIPO Case No. D2000-0847 ("[t]he only plausible explanation for Respondent's actions appears to be an intentional effort to trade upon the fame of Complainant's name and mark for commercial gain" and "[t]hat purpose is a violation of the Policy").
Third, the Respondent knew or should have known of the Complainant's rights in its widely-used ALDI Mark when registering the Disputed Domain Names. The Respondent registered the Disputed Domain Names years after the Complainant obtained its numerous trademark registrations for the ALDI Mark. It therefore strains credulity to believe that the Respondent had not known of the Complainant or its ALDI Mark when registering the Disputed Domain Names. See Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763 (a finding of bad faith may be made where Respondent "knew or should have known" of the registration and/or use of the trademark prior to registering the domain name).
Fourth, that the Disputed Domain Names currently resolve to a parking page, akin to being passively held, does not prevent a finding of bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Finally, the fact that the Respondent registered three additional domain names that incorporate and are confusingly similar to the ALDI Mark is further evidence of the Respondent's bad faith under the Policy.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant. 7. 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 Names be transferred to the Complainant.
Lynda M. Braun
Sole Panelist
Date: April 17, 2016
1 Aldi GmbH & Co. KG is the owner and licensor of the ALDI trademark registrations referenced below. Aldi Stores Limited is a licensee of these trademarks and the two companies are under common control.
2 The Complainant claims that when it filed the Complaint, the Disputed Domain Names resolved to a web page containing other content. The Complainant further alleges that after the Complainant's representative sent a letter to the Respondent informing the Respondent of the Complainant's rights in the ALDI Mark, the content was removed and was replaced with the parking page hosted by the Registrar that exists as of the writing of this decision.
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