The Complainants are Aldi GmbH & Co. KG of Mulheim an der Ruhr, Germany and Aldi Stores Limited of Atherstone, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Freeths LLP, United Kingdom.
The Respondent is Cja Jeansson of London, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with N, Inc. (N LLC) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2017. On January 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, 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 January 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2017.
The Center appointed Michael A.R. Bernasconi as the sole panelist in this matter on February 10, 2017. 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 following facts appear from the Complaint and its Annexes, which have not been contested by the Respondent.
The Complainants are Aldi GmbH & Co. KG and Aldi Stores Limited. Aldi GmbH & Co. KG is the registered proprietor of a number of well-known registered trademarks for marks comprising the ALDI name. Aldi Stores Limited is under common control with Aldi GmbH & Co. KG and is a licensee of the said trademark registrations. The Complainants and their connected companies are active in grocery retailing.
The Complainants own numerous registered trademarks for ALDI, including the following:
- trademark registration ALDI (trademark No. UK00002250300), dated March 30, 2001;
- trademark ALDI HOLIDAYS (trademark No. UK00002460745), dated March 28, 2008 ;
- trademark ALDI (trademark No. EU001954031), dated April 2, 2002;
- trademark ALDI TALK (trademark no. EU011181815), March 6, 2013.
(together, the “trademark”).
Furthermore, the Complainants own several domain names, inter alia:
-
The Domain Name was created on September 13, 2016. The Domain Name has not been used by the Respondent as it does not resolve to a website. 5. Parties’ Contentions A. Complainants
The Complainants state that they own a number of well-known registered trademarks for marks comprising the ALDI name. The Complainants further argue that together with their connected companies, they are recognized as international leaders in grocery retailing, by having inter alia 5,000 stores across the world. In addition, the Complainants claim that their trademark is currently the most recognized brand across all sectors in the United Kingdom. Further, the Complainants submit that their trademark is a name which is recognized internationally and protected by the trademarks of the Complainants. Finally, the Complainants claim that they also benefit from rights in passing off based on the substantial reputation and goodwill which the Complainants have in the trademark. The Domain Name is Identical and/or Confusingly Similar to the trademark of the Complainants
The Complainants claim that the Domain Name includes the Complainants’ famous name and trademark. In particular, the Complainants argue that the Domain Name incorporates the trademark ALDI alongside the acronym “UK” which enhances confusion as it suggests that the Domain Name will host a webpage relating to services which are sold by the Complainants in the United Kingdom, which is one of the Complainants key markets. On this basis, the Complainants submit that the mere appearance of the Respondent’s name on the publically accessible records relating to the Domain Name amounts to a misrepresentation which is likely to deceive the public into believing that the Domain Name is operated by either or both of the Complainants or a connected company.
Further, the Complainants argue that it is evident that Internet users will be confused into believing that the Domain Name is registered to, or at least operated, authorized or endorsed by the Complainants. Additionally, the Complainants submit that an inference is drawn that any website hosted at the Domain Name will be a website that is operated by or with the consent of the Complainants. In consequence, most individuals navigating to the Domain Name will be expecting to reach a website operated by, or at least associated with, the Complainants.
In conclusion, the Complainants argue that it is therefore apparent that use of the Complainants’ trademark ALDI takes unfair advantage of the Complainants’ rights by misleading users to believe that the Domain Name is connected with the Complainants, and that the overall construction of the Domain Name only serves to enhance confusion between the Domain Name and the Complainants. Respondent has no Rights or Legitimate Interests in the Domain Name
The Complainants submit that they have not licensed or otherwise authorized the Respondent to use the ALDI trademark. Consequently, the Complainants argue that Respondent has no right or legitimate interest in the Domain Name, nor any rights in the trademarks, or association with the Complainants whatsoever.
Additionally, the Complainants argue that Respondent has not conducted any prior business under the ALDI trademark in connection with the bona fide offering of goods or services. The Domain Name was registered and is being used in bad faith
The Complainants argue that the Domain Name makes use of the Complainants’ prior registered trademark ALDI, in direct contravention of the Complainants’ trademark rights. On this basis, the Complainants submit that it is inevitable that Internet users will be confused into believing that the Domain Name has some form of association with the Complainants. The registration of the Domain Name therefore took, according to the Complainants, unfair advantage of the Complainants’ rights. To conclude, on this basis alone, the Complainants consider the registration of the Domain Name to be in bad faith.
Additionally, the Complainants argue that the Domain Name has been (or is planning to be) intentionally used to attract Internet users, for commercial gain, to the Respondent’s website by creating a likelihood of confusion with the ALDI trademark, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website of the Respondent.
According to the Complainants, it is significant that the Domain Name incorporates the ALDI sign alongside the acronym “UK”, since this only serves to enhance confusion as to the source of the Domain Name and what kind of website will be hosted there. The Complainants further argue that although at present the Domain Name does not resolve to a website, the potential for use which disrupts the business activity of the Complainants remain. Furthermore, the Complainants submit that the Domain Name infers an association with ALDI and this was intentionally created by Respondent, in order to pick up web traffic from those users attempting to view a domain name which is associated with the Complainants.
The Complainants also argue that even on the chance that a consumer perceives something amiss before acting the distinctive character and reputation of the trademarks are harmed by association in any event. According to the Complainants, in all the circumstances there is a detrimental impact on the reputation and professional activities of the Complainants.
Finally, the Complainants argue that there is the distinct possibility that the Domain Name was registered in order that the Respondent might offer the same for sale to either the Complainants (or their competitors) at a price higher than the cost of registration and in the hope that the parties bid against each other to secure the Domain Name. Remedies Requested
The Complainants requests that the Domain Name be transferred to the lead Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel has thoroughly considered in its deliberations all of the evidence and arguments submitted by the Complainants, even if no specific or detailed reference has been made to some of arguments in the following discussion on the merits.
If the Complainants are to succeed, they must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainants are the owner and licensees, respectively, of several trademark registrations, containing, or comprised of the element ALDI. The Panel acknowledges that the ALDI trademarks are among well-known marks worldwide in the retail industry, and that the Complainants, together with their connected companies, are recognized as international leaders in grocery retailing.
The Domain Name is not identical with the Complainants’ trademarks. Therefore, the question is whether it is confusingly similar to them.
The Domain Name incorporates the Complainants’ distinctive ALDI trademark in its entirety. In addition, the acronym “UK” is added alongside with a hyphen. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the addition of merely generic, descriptive, or geographical wording to a trademark in a domain name is in general insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. In the view of the Panel, there are no reasons why this should be different in the present case. In particular, the Panel agrees with the finding of previous UDRP panels that the use of a trademark in its entirety together with a geographic term in a domain name creates a domain name that is confusingly similar to the trademark (see, e.g., Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768; Playboy Enterprises International Inc. v. Joao Melancia,WIPO Case No. D2006-1106; AT&T Corp. v. WorldclassM,WIPO Case No. D2000-0553; Six Continents Hotels, Inc. v. CredoNIC.com / Domain Name for Sale,WIPO Case No. D2005-0755; Six Continents Hotels, Inc. v. Midas Search Limited,WIPO Case No. D2004-0986; Six Continents Hotels, Inc, Inter-Continental Hotels Corporation. v. South East Asia Tours,WIPO Case No. D2004-0388).
In conclusion, the Panel finds that the Domain Name is confusingly similar to the Complainants’ trademark pursuant to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainants have provided a prima facie case under this element of the Policy showing that they have had no relationship with the Respondent and have not granted the Respondent any right to register and use its ALDI trademark. Therefore, in line with prior UDRP decisions, the burden of production on this element shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name (see, e.g., ALDI GmbH & Co. KG v. Sadettin Kucuk,WIPO Case No. D2014-0953; Swarovski Aktiengesellschaft v. blue crystal,WIPO Case No. D2012-0630; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Although properly notified by the Center, the Respondent failed to submit any response to the present proceeding. The Respondent thus fails to come forward with appropriate allegations or evidence. In consequence, and in accordance with the WIPO Overview 2.0, the Panel is of the view that the Complainants have satisfied the second element of the Policy (paragraph 4(a)(ii) of the UDRP). C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires a complainant to prove both registration and use in bad faith.
Regarding the registration in bad faith, the Panel notes that given the Complainants’ worldwide recognition, the Respondent was or should have been aware of the trademarks prior to registering the Domain Name (see ALDI GmbH & Co. KG v. Sadettin Kucuk, supra; Caesars World, Inc. v. Forum LLC., WIPO Case No. D2005-0517). Furthermore, the Panel agrees with the Complainants position that it is significant that the Domain Name incorporates the ALDI trademark alongside the acronym “UK”, since this only serves to enhance confusion as to the source of the Domain Name and what kind of website will be hosted there. Considering the overall circumstances, it is not possible for the Panel to conceive of a plausible circumstance in which the Respondent could legitimately use the Domain Name. In consequence, the Panel concludes that the Domain Name has been registered by the Respondent in bad faith (see, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Regarding the use in bad faith the Panel notes that the Domain Name has not been used by the Respondent as it does not resolve to a website. In this respect, the Complainants argued that the third element of paragraph 4(a) of the Policy is not limited to positive actions, but includes passive holding, therefore the Domain Name is being used in bad faith (see also ALDI GmbH & Co. KG v. Sadettin Kucuk, supra). This situation was addressed to many UDRP panels before and according to the WIPO Overview 2.0, non-use of the Domain Name can indeed be considered as use in bad faith as meant in paragraph 4(a)(iii) of the Policy, depending on the circumstances of the case. According to the WIPO Overview 2.0, 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.
In the case at hand, it is undisputed that the Complainants trademark has a strong reputation in many countries and the Respondent must have been aware of the trademark when registering the Domain Name. Furthermore, the Respondent has failed to reply to the Complaint, and thus failed to provide a response indicating any evidence of any good faith use of the Domain Name (e.g., ALDI GmbH & Co. KG v. Sadettin Kucuk, supra; Ferrari S.p.A. v. JK Marketing,WIPO Case No. D2001-1003). Finally, there are also strong indications that the Respondent conceals its identity to frustrate the proceeding, on the one hand, because it appears that the Respondent provided false contact information in the WhoIs record as evidenced by the inability of the courier company to deliver the Written Notice of the Complaint.
In conclusion, the Panel finds that the Domain Name was registered and is being used in bad faith, and that accordingly, the Complainants have satisfied the third element of the Policy (paragraph 4(a)(iii) of the UDRP). 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 Name be transferred to the Complainant Aldi GmbH & Co. KG.
Michael A.R. Bernasconi
Sole Panelist
Date: February 24, 2017
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