The Complainants are Aldi GmbH & Co. KG (“Aldi GmbH”) of Mulheim an der Ruhr, Germany and Aldi Stores Limited (“Aldi Ltd.”) of Warwickshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Freeths LLP, United Kingdom.
The Respondent is Muhammad Anjum of Reading, United Kingdom. 2. The Domain Names and Registrar
The disputed domain names and (the “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, 2017. On February 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 13, 2017, 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 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2017. On March 12, 2017, the Respondent requested an extension of the Response due date. In accordance with the Rules, paragraph 5(b), the Response due date was extended to March 17, 2017. The Center did not receive any further communication from the Respondent. The Center notified the Parties on March 20, 2017, that it will proceed to appointment of the Panel.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on March 28, 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 Complainant Aldi GmbH owns a number of registered trade marks comprising the Aldi name, including inter alia:
- United Kingdom trade mark registration no. 002250300 registered on March 30, 2001;
- European Union trade mark registration no. 001954031 registered on April 2, 2002;
- European Union trade mark registration no. 002071728 registered on April 14, 2005;
hereafter collectively referred to as the “Trade Marks”.
The Complainant Aldi Ltd. was incorporated on November 25, 1988, and is a licensee under the Trade Marks.
The Complainants and their connected companies 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 Domain Names were registered on November 6, 2016. According to the evidence submitted by the Complainants, the Domain Names resolve to parking pages containing pay-per-click links, including at least one link to a website of a competitor of the Complainants. 5. Parties’ Contentions A. Complainants
The Complainants submit that the Domain Names include the Trade Marks and that the mere appearance of the Respondent’s name on the publicly accessible records relating to the Domain Names amounts to a misrepresentation which is likely to deceive the public into believing that the Domain Names are operated by the Complainants. In addition, according to the Complainants, inclusion of the Trade Marks will have the result that Internet users are confused into believing that the Domain Names are registered to, or at least operated, authorised or endorsed by the Complainants and that any website hosted at the Domain Names is a website that is operated by or with the consent of the Complainants. In addition, the Complainants allege, the inclusion of the Trade Marks alongside the non-distinctive words “get” and “ask” respectively, enhances confusion as it suggests that the Domain Names will host a website relating to items sold by the Complainants and/or a website where consumers can ask questions of the Complainants.
The Complainants state that the Respondent has no rights in the Trade Marks or an association with the Complainants and the Complainants have not licensed or otherwise authorised the Respondent to use the Trade Marks, while the Respondent has not conducted any prior business under the name “Aldi” in connection with a bona fide offering of goods or services.
According to the Complainants, the Respondent therefore has no rights or legitimate interests in the Domain Names, nor any rights in the Trade Marks, or association with the Complainants whatsoever.
The Complainants point out that the rights in the Trade Marks, registered since 2001, predate the Respondent’s registration of the Domain Names, which were both registered on November 6, 2016.
The Complainants allege that due to the use of the Trade Marks in the Domain Names, it is inevitable that Internet users will be confused into believing that the Domain Names have some form of association with the Complainants. Additionally, the Complainants submit that the Domain Names have been (or are 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 Trade Marks, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website of the Respondent.
The Complainants further submit that the Domain Names infer an association with the Trade Marks and that this was intentionally created by the Respondent, in order to pick up web traffic from those users attempting to view a website which is associated with the Complainants, which would amount to bad faith registration and use of the Domain Names. Instead, the Complainants state, users are currently directed to a holding page hosting sponsored links, thereby disrupting the business of the Complainants as users will, according to the Complainants, become disappointed and frustrated and unfairly associate the Domain Names with the Complainants, which will invariably affect both the business and reputation of the Complainants.
Additionally or alternatively, the Complainants submit that there is the distinct possibility that the Domain Names were registered in order that the Respondent might offer the same for sale to either the Complainants at a price higher than the cost of registration and in the hope that the Parties bid against each other to secure the Domain Names. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainants have shown that they have registered rights in the Trade Marks as proprietor and licensee respectively. The Domain Names are confusingly similar to the Trade Marks as they incorporate the Trade Marks in their entirety. The addition of the dictionary words “get” and “ask” does not avoid the confusing similarity between the Domain Names and the Trade Marks (see also WIPO Overview of WIPO Panel views on selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9). The generic Top-Level Domain (“gTLD”) “.com” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 2.0, paragraph 1.2).
Therefore, the Panel finds that the Domain Names are confusingly similar to the Trade Marks in which the Complainants have rights. B. Rights or Legitimate Interests
The Complainants have to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Names (WIPO Overview 2.0, paragraph 2.1). Based on the evidence and the undisputed submissions of the Complainants, the Panel concludes that the Respondent has not received consent to use the Trade Marks as part of the Domain Names, is not commonly known by the Domain Names and has not acquired trade mark rights in the Domain Names. The Respondent’s use of the Domain Names in the present case does not amount to a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
In view of the above, the Panel concludes that the Complainants have established that the Respondent has no rights or legitimate interests in the Domain Names. C. Registered and Used in Bad Faith
Based on the information and the evidence provided by the Complainants, the Panel finds that at the time of registration of the Domain Names the Respondent was or should have been aware of the Trade Marks, since:
- the Respondent’s registration of the Domain Names occurred 16 years after the registration of the earliest of the Trade Marks;
- the mark ALDI, which is incorporated in its entirety in the Domain Names, does not appear to be a dictionary word, nor a name of which it is likely that a registrant would spontaneously or accidentally think of;
- a simple trade mark register search, or even an Internet search, prior to the registration of the Domain Names would have informed the Respondent of the existence of the Trade Marks.
Under these circumstances, the Panel concludes that the Domain Names have been registered in bad faith.
Also taking into account that, based on the evidence submitted by the Complainants, it appears that the Domain Names refer to a web page containing pay-per-click links, including at least one to a website of a competitor of the Complainants, the Panel concludes that the Respondent is using the Domain Names in bad faith, in particular by intentionally attempting to attract, for commercial gain, Internet users to the website or other online location creating a likelihood of confusion with the Trade Marks as to the source, sponsorship, affiliation or endorsement of the website or of a product or service on the website to which the Domain Names resolve within the meaning of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel concludes that the Domain Names have been registered and are being used in bad faith. 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 Aldi Gmbh.
Wolter Wefers Bettink
Sole Panelist
Date: April 11, 2017
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