The Complainant is Aldi Stores Limited of Warwickshire, Germany and Aldi GmbH & Co. KG of Mulheim an der Ruhr, Germany, represented by Freeths LLP, United Kingdom.
The Respondent is Jeancharles Rollin, Ecoclav Inc. of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). 2. The Domain Name and Registrar
The Disputed Domain Name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2016. On April 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 7, 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 April 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2016.
The Center appointed Alexandre Nappey as the sole panelist in this matter on May 17, 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. 4. Factual Background
The Complainants are (1)/ Aldi GmbH which owns a number of well-known registered marks comprising the ALDI name, and (2)/ Aldi Stores Limited, a subsidiary 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.
Complainants 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 has been registered on December 18, 2015. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions could be summarized as follows:
The disputed domain name incorporates the Complainant’s ALDI trademark in its entirety. “special” is a dictionary word which cannot distinguish the disputed domain name from the Complainant’s ALDI trademark. On the contrary the word “special” reminds of “Aldi Special buys”under which the Complainants make some weekly special offers to their customers in store. 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 “special” renders the Disputed Domain Name confusingly similar to the ALDI trademark.
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 Respondent chose to incorporate the ALDI trademark as the only distinctive word of the Disputed Domain Name. The Respondent has intentionally attempted to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation, and endorsement of the Respondent’s website. The distinctive character and reputation of the ALDI trademarks are harmed by association. The bad faith of the Respondent is demonstrated by its passive holding of the domain name to the exclusion of the Complainants. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Notwithstanding the default of Respondent, it remains up to Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.
Having consideration to the parties’ contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel’s findings on each of the above mentioned elements are the following. A. Identical or Confusingly Similar
The Complainants’ trademark registrations for ALDI establish the Complainant’s trademark rights for purposes of this proceeding.
The disputed domain name incorporates the entirety of the ALDI trademarks. In addition, the disputed domain name consists three elements of “-”, “special” and “.com”. “Special” is merely a dictionary word and cannot distinguish the Disputed Domain Name and the Complainant’s ALDI trademark. As stated by the Complainant, “special” refers to a service offered by the Complainant to its customers in store on a weekly basis. Therefore the combination of this word with the Complainants’ trademark strengthens the reference to the Complainant.
Similarly, previous decisions under the Policy have found confusing similarity where a disputed domain name contains a complainant’s trademark with the word “special”.
See Lacoste Alligator S.A. v. Priscilla, Ranesha, Angel, Jane, Victor, Olivier, Carl, Darren, Angela, Jonathan, Michell, Oiu, Matthew, Pamela, Selima, Angela, John, Sally, Susanna, WIPO Case No. D2010-0988.
The ALDI element is still immediately recognizable as the Complainant’s trademark. In the Panel’s view, the addition of a descriptive term does not mitigate the likelihood of confusion between the Disputed Domain Name and the Complainant’s ALDI trademark.
Accordingly, the Panel finds that the Disputed Domain Name is identical o confusingly similar to marks in which Complainant has rights.
The Complainant therefore has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainants have provided evidence that they did not license or otherwise authorize the Respondent to use their trademarks ALDI. Also, the Respondent does not appear to be commonly known by the Disputed Domain Name and it is evidently not making a legitimate noncommercial or fair use of it.
The Complainants have established a prima facie case of lack of rights and legitimate interests and there has been no rebuttal from the Respondent. Nothing in the case file gives reason to believe that the Respondent has any rights or legitimate interests in respect of the Disputed Domain Name.
The Panel concludes that the Respondent has no rights or legitimate interests in the Disputed Domain Name in accordance with paragraph 4(c)(i) of the UDRP. C. Registered and Used in Bad Faith
Based on the evidence submitted by the Complainant, the Panel accepts that the ALDI trademark is well-known.
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). On this basis and considering that the Respondent was aware of the Complainants’ trademark while he registered the Disputed Domain Name in issue, the Panel finds that the Disputed Domain Name has been registered in bad faith.
Further, by holding its registration of the Disputed Domain Name the Respondent has also prevented the Complainants from reflecting their well-known trademarks ALDI for goods or services under the generic Top-Level Domain (“gTLD) “.com”.
The Panel finds that the Respondent has registered the Disputed Domain Name in bad faith and that the Respondent is also, by passively holding it under circumstances, as indicated in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, using it in bad faith, all within the meaning of paragraph 4(b)(iv) and 4(a)(iii) of the Policy.
In light of the above, the Panel confirms that the conditions for transfer of the Disputed Domain Name to the Complainants are satisfied. 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 Name be transferred to the Complainant.
Alexandre Nappey
Sole Panelist
Date: June 2, 2016
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