The Complainants are Aldi GmbH & Co. KG of Mulheim an der Ruhr, Germany and Aldi Stores Limited of Warwickshire, United Kingdom of Great Britain and the Northern Ireland (“United Kingdom”), represented by Freeths LLP, United Kingdom.
The Respondent is Ronan Barrett of Belfast, United Kingdom. 2. The Domain Names and Registrar
The disputed domain names and are registered with Register.IT SPA (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2016. On November 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 3, 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 November 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2016. Due to the failure in the delivery of the written notice by fax, the Response due date was extended to December 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2016.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on December 19, 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 Complainant is a grocery retailing chain with more than 5000 stores around the world. The Complainant is the owner of several ALDI trademarks, including International Registration number 870876 of August 11, 2005 with designation European Union.
The disputed domain names were both registered on May 23, 2016 and are currently inactive. 5. Parties’ Contentions A. Complainant
The disputed domain names incorporate the ALDI trademark alongside the LIDL mark which enhances confusion as it suggests that the disputed domain names will host a website relating to goods sold by the Complainant or one of its key competitors.
The Complainant has not licensed or otherwise authorized the Respondent to use the ALDI trademark. The Respondent therefore has no right or legitimate interest in the disputed domain names, nor any rights in the Complainant’s trademarks, nor any association with the Complainant whatsoever. Furthermore, the Respondent has not conducted any prior business under the name ALDI in connection with the bona fide offering of goods or services.
It is inevitable that Internet users will be confused into believing that the disputed domain names have some form of association with the Complainant. By registering the disputed domain names, the Respondent therefore took advantage of the Complainant’s rights. Users are currently directed to a website hosting a notice that the IP address of the disputed domain names is no longer in use. The disputed domain names therefore disrupt the business of the Complainant as Internet users will become disappointed and frustrated and unfairly associate the disputed domain names with the Complainant, which will invariably affect both the business and reputation of the Complainant. There is also a distinct possibility that the disputed domain names were registered by the Respondent in order to offer them for sale to either the Complainant or to its competitor LIDL in the hope that the parties bid against each other to secure the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Both disputed domain names combine the well-known trademarks of the large grocery chains ALDI and LIDL, connected by the word “or”. The sequence of the trademarks is simply reversed in the two disputed domain names and .
In the view of UDRP Panels, the presence, in a particular disputed domain name, of the mark of a third party not joined in the proceeding does not by itself prevent a finding of confusing similarity (cf., e.g., Cummins Inc. v. Dennis Goebel,WIPO Case No. D2015-1064, ). In the present case, the addition of the third party trademark “LIDL” and the conjunction “or” does not, in the Panel’s view, sufficiently eliminate the general impression that the disputed domain names are associated in some way with the Complainant or used for some sort of co-operative venture between the Complainant and LIDL.
The Panel therefore concludes that the Complainant has fulfilled paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel notes that from the present record, it does not appear that the Respondent is commonly known by the domain names, or has any other basis for demonstrating any rights or legitimate interests in the disputed domain names. While one could imagine the disputed domain names being used to compare the products of ALDI and LIDL, there are no indications for such (potentially legitimate) use in the present case.
Since the Complainant has shown that the Respondent does not have rights or legitimate interests in the disputed domain names, the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Bad Faith Registration and Use
It is evident that the Complainant was aware of the Complainant’s famous trademark when it registered the disputed domain names.
The disputed domain names are currently directed to a website hosting a notice that the IP address of the disputed domain names is no longer in use.
According to the consensus view of UDRP Panelists, the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), section 3.2).
Considering that the Complainant has a well-known trademark and the Respondent has not filed any response to the Complaint, the Panel finds that the passive holding of the disputed domain names by the Respondent does not prevent a finding of bad faith registration and use.
The Complainant has thus also fulfilled paragraph 4(a)(iii) of the Policy. 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 domain names and be transferred to the Complainant.
The transfer of the disputed domain names shall be ordered without prejudice to any rights of the third party LIDL in the disputed domain names.
Tobias Zuberbühler
Sole Panelist
Date: January 13, 2017
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