Complainants are Aldi GmbH & Co. KG of Mulheim An der Ruhr, Germany and Aldi Stores Limited of Warwickshire, Germany, represented by Freeths LLP, United Kingdom of Great Britain of Northern Ireland (“United Kingdom”).
Respondent is Jack Trotter of Tokushima, Japan. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2018. On May 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 14, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainants on May 30, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on June 1, 2018.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on June 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 25, 2018.
The Center appointed Gregor Vos as the sole panelist in this matter on July 2, 2018. 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
Complainants operate a well-known chain of supermarkets, which consists of over 5,000 stores worldwide. Complainant Aldi GmbH & Co. KG has registered several trademarks, among which the following (the “Trademarks”):
United Kingdom Trademark Registration No. 00002250300 for ALDI, registered on March 30, 2001;
United Kingdom Trademark Registration No. 00002460745 for ALDI HOLIDAYS, registered on March 28, 2008;
United Kingdom Trademark Registration No. 00002460747 for ALDI TRAVEL, registered on February 29, 2008;
European Union Trademark Registration No. 001954031 for ALDI, registered on April 2, 2002;
European Union Trademark Registration No. 002071728 for ALDI, registered on April 14, 2005;
European Union Trademark Registration No. 002714459 for ALDI, registered on September 5, 2003;
European Union Trademark Registration No. 003360914 for ALDI, registered on June 2, 2010;
European Union Trademark Registration No. 003639408 for ALDI, registered on April 19, 2005;
European Union Trademark Registration No. 006870943 for ALDI, registered on October 19, 2009;
European Union Trademark Registration No. 011181815 for ALDI TALK, registered on March 6, 2013; and
European Union Trademark Registration No. 011181823 for ALDI MOBILE, registered on March 6, 2013.
The disputed domain name was registered on February 22, 2018, on March 2, 2018, and on February 6, 2018. The Trademarks therefore predate the disputed domain names. The disputed domain names don’t resolve to any active websites currently.
Respondent has registered the disputed domain names with the use of contact details that appear to be at least partially fake. This is evidenced by the specific contact details itself and the fact that the attempted distribution of a physical copy of the Complaint to Respondent’s known address by mail failed. 5. Parties’ Contentions A. Complainants
Complainants assert that the disputed domain names include the famous name and trademark ALDI. Complainants are of the view that the mere appearance of Respondent’s name on the publically accessible records relating to the disputed domain names amounts to a misrepresentation which is likely to deceive the public into believing that the domain names are operated by either or both of Complainants or a connected company.
According to Complainants, the use of the words “new”, “uk”, and “code(s)” in the disputed domain names enhances confusion as it would suggest that the disputed domain names will host webpages relating to goods or services which are specifically sold by Complainants. Most individuals navigating to the disputed domain names will be expecting to reach a website operated by, or at least associated with, Complainants.
The Trademarks predate the registration dates of the disputed domain names and Complainants have not granted Respondent a license or otherwise authorized Respondent to use the ALDI trademark in the disputed domain names. Complainants therefore assert that Respondent has no rights or legitimate interests in the disputed domain names. Respondent would not have conducted any prior business under the name ALDI in connection with the bona fide offering of goods or services.
Finally, Complainants submit that as the Trademarks are present in the disputed domain names, it is inevitable that Internet users will be confused into believing that the disputed domain names have some form of association with Complainants. On this basis alone, Complainants consider the registration of the disputed domain names to be in bad faith. Further, Complainants submit that the disputed domain names have been (or are planning to be) intentionally used to attract Internet users, for commercial gain, to Respondent’s website by creating a likelihood of confusion with the Trademarks, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website of Respondent. Also, or alternatively, Complainants assert that the disputed domain names may in the future be offered by sale by Respondent to either of Complainants or their competitors at a price higher than the cost of registration. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Based on paragraph 4(a) of the UDRP, a request to transfer a domain name must meet three cumulative conditions:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the registrant of the domain name 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.
In the administrative proceedings, Complainant must prove that each of these three elements is present.
Only if all three elements are fulfilled can the Panel grant the remedies requested by Complainant. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the UDRP requires two elements to be proved. A disputed domain name should be (i) identical or confusingly similar to a trademark or service mark, (ii) in which a complainant has rights.
With regard to the assessment of identity or confusing similarity of the disputed domain names, it is generally accepted that this test involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Here, it is evident that the disputed domain names are not identical to the Trademarks. The disputed domain names include the additional wording “ukcode”, “codesfor”, and “new”, which wording is not present in any of the Trademarks. Adding a generic or geographical term, however, is not sufficient to escape a finding of confusing similarity and does not change the overall impression of the disputed domain name as being connected to the Trademarks (see The American Automobile Association, Inc. v. Cameron Jackson / PrivacyDotLink Customer 2440314,WIPO Case No. D2016-1671).
The Panel therefore is of the view that the disputed domain names are confusingly similar to the Trademarks.
With regard to having “rights” pursuant to paragraph 4(a)(i) of the UDRP, it is noted that Complainant Aldi GmbH & Co KG. is registered as the owner of the Trademarks, as can be seen from the submitted copies of the registrations of the Trademarks. As far as Complainant Aldi Stores Limited is concerned, Complainants assert that Aldi Stores Limited has obtained a license on the Trademarks. No evidence was provided on the actual existence of such a license agreement, however.
Even though a licensee may indeed be regarded to have “rights” in a trademark, the contractual wording of the license agreement as well as the further relationship between the licensor and licensee are crucial in determining the scope of such rights (see NA PALI SAS v. BWI Domains, Domain Manager,WIPO Case No. D2008-1859). It is therefore not given that, even if a license agreement between both Complainants would exist, the scope of this agreement includes a “right” in a trademark pursuant to the UDRP.
Due to the lack of a copy of (the relevant part of) a license agreement, Complainants have not factually supported its assertion that Complainant Aldi Stores Limited is granted a license to the Trademarks that would contain a “right” under the UDRP. The Panel cannot assume the existence of such a license merely from an unsupported statement.
On that basis, the Panel finds that Complainant Aldi GmbH & Co. KG appears to have rights as required under the UDRP.
Therefore, the requirement under paragraph 4(a)(i) of the UDRP is fulfilled by Complainant Aldi GmbH & Co. KG. With regard to Complainant Aldi Stores Limited, the Complaint fails to meet this requirement and will be rejected on that basis. B. Rights or Legitimate Interests
In order to fulfil the requirement of paragraph 4(a)(ii) of the UDRP, a complainant has to prove that the respondent lacks rights or legitimate interests in the disputed domain name. As this may result in the often impossible task of “proving a negative”, a complainant bears the burden of prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name. If a complainant succeeds in making its prima facie case, the burden of proof shifts to the respondent, which will then have to come forward with appropriate allegations or evidence demonstrating a right or legitimate interest in the disputed domain name (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel understands Complainants’ assertions in such a way, that Respondent would not have been commonly known by the disputed domain names or by ALDI. Neither would Respondent have been using the disputed domain names in connection with a bona fide offering of goods or services before any notice of the dispute. Further, Complainants assert that Respondent was not granted a license or other authorisation for the use of ALDI in the disputed domain names.
Based on the above, the Panel finds that Complainants have sufficiently set out their prima facie case. The burden of proof therefore shifts to Respondent.
As Respondent has not replied to Complainants’ allegations, the Panel finds that the requirement under paragraph 4(a)(ii) of the UDRP is fulfilled. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the UDRP, the circumstances in paragraph 4(b) of the UDRP, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
In general, complaints alleging the types of conduct described above should be supported by arguments and available evidence such as dated screenshots of the website to which the disputed domain name resolves or correspondence between the parties. Even in cases of respondent default, panels have held that wholly unsupported conclusory allegations may not be sufficient to support a complainant’s case (see section 3.1 of the WIPO Overview 3.0).
In its Complaint, Complainants assert bad faith behavior by Respondent. However, these assertions remain without support. As Respondent has not shown any activity at all, it is sufficiently clear to the Panel that it is hard to assess positive behavior in such cases. Nonetheless, the Panel finds sufficient ground for a finding of bad faith registration and use in the case file before it.
First of all, the Panel finds that Respondent does not appear to have legitimate commercial or noncommercial business activity. Further, Respondent appears to have taken deliberate steps to ensure that its true identity cannot be determined, considering the likely fake address details. Communication with Respondent has therefore not been possible. Given the various trademark registrations for, and its wide reputation in, the word ALDI, it is arguable that Respondent does not have a plausible reason in which the Respondent could legitimately use the domain names. Even though defenses may be conceivable, Respondent chose not to respond to the Complaint. These findings, together with the finding that Respondent does not appear to have any rights or interests in the domain name, lead the Panel to conclude that the domain names have been registered by Respondent in bad faith. The more so, as Respondent has registered multiple domain names containing the word “aldi”. By the same token, these circumstances lead to the conclusion that the passive holding of the domain names by Respondent amounts to acting in bad faith as well, fulfilling the requirement of use in bad faith, too (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Therefore, the Panel finds that the requirement under paragraph 4(a)(iii) of the UDRP is fulfilled. 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 names , , and be transferred to Complainant Aldi GmbH & Co. KG.
Gregor Vos
Sole Panelist
Date: August 2, 2018
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