The Complainant is 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 Mr. Chris Rawson Rawson of Derbyshire, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2017. On February 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 14, 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 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2017.
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;
- Eropean Union trade mark registration no. 001954031 registered on April 2, 2002;
- Eropean 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 Name was registered on September 14, 2016, and resolves to a website purporting to offer discounts and cash-back services at certain retailers including the Complainants. 5. Parties’ Contentions A. Complainant
The Complainants submit that the Domain Name includes the Trade Marks and that the mere appearance of the Respondent’s name on the publicly 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 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 Name is registered to, or at least operated, authorised or endorsed by the Complainants and that any website hosted at the Domain Name 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 “even at” enhances confusion as it suggests that the Domain Name will host a website relating to items sold by the Complainants.
The Complainants state that the Respondent has no rights in the Trade Marks or an association with the Complainants and the Complainant Aldi GmbH has 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 Name, 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 Name, which was registered on September 14, 2016.
The Complainants allege that due to the use of the Trade Marks in the Domain Name, it is inevitable that Internet users will be confused into believing that the Domain Name has some form of association with the Complainants. Additionally, the Complainants submit 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 Trade Marks, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website of the Respondent.
The Complainants further submit that users are currently directed to a website purporting to offer discounts and cash-back services at certain retailers including the Complainants, and containing unauthorized use of the Trade Marks, and that thereby the Domain Name infers 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. According to the Complainants, even on the chance that a consumer perceives something amiss before acting, the distinctive character and reputation of the Trade Marks are harmed by association in any event, and in all the circumstances there is a detrimental impact on the reputation and professional activities of the Complainants.
Additionally or alternatively, the Complainants submit that there is the distinct possibility that the Domain Name was registered in order that the Respondent might offer the same for sale to 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 Name. 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 valid registered rights in the Trade Marks as proprietor and licensee respectively. The Domain Name is confusingly similar to the Trade Marks as it incorporates the Trade Marks in their entirety. The addition of the dictionary words “even at” does not avoid the confusing similarity between the Domain Name 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 Name is 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 Name (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 Name, is not commonly known by the Domain Name and has not acquired trade mark rights in the Domain Name. The Respondent’s unauthorized use of the Complainant’s Trade Marks in connection with a website offering cash-back services creates a misleading impression of association with the Complainants, and does not, in the Panel’s view, amount to a bona fide offering of goods or services.
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 Name. 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 Name the Respondent was or should have been aware of the Trade Marks, since:
- the Respondent’s registration of the Domain Name occurred almost 16 years after the registration of the earliest of the Trade Marks;
- the mark ALDI, which is incorporated in its entirety in the Domain Name, 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 Name would have informed the Respondent of the existence of the Trade Marks.
Under these circumstances, the Panel concludes that the Domain Name has been registered in bad faith.
Also taking into account that, based on the evidence submitted by the Complainants, it appears that the Domain Name refers to a website purporting to offer discounts and cash-back services at certain retailers including the Complainants, and containing unauthorized use of the Trade Marks, the Panel concludes that the Respondent is using the Domain Name 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 Name resolves, within the meaning of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel concludes that the Domain Name has been registered and is 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 disputed domain name be transferred to the Complainant Aldi GmbH.
Wolter Wefers Bettink
Sole Panelist
Date: April 11, 2017
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