The Complainants are Aldi GmbH & Co. KG (the “first Complainant”) of Mülheim an der Ruhr, Germany and Aldi Stores Limited (the “second Complainant”) of Warwickshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Freeths LLP, United Kingdom.
The Respondent is Super Privacy Service LTD c/o Dynadot of San Mateo, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2018. On October 18, 2018, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 2018, the Registrar transmitted by e-mail 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 October 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2018.
The Center appointed Luiz E. Montaury Pimenta as the sole panelist in this matter on November 26, 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
The Complainants are recognized as international leaders in grocery retailing, known for its more than 5,000 stores across the world operating under the trademark ALDI. The first Complainant, Aldi GmbH, proprietor of the trademark registrations relied upon in the Complaint and the controller of the second Complainant, Aldi Stores Limited, owns a number trademark registrations comprising of the ALDI name, which include, for example, trademark registration No. UK00002250300, for the ALDI mark, in the United Kingdom, filed on October 26, 2000, and registered on March 30, 2001.
The Complainants have stores and business operations in several countries, particularly in Europe. The Complainants also own and operate under the domain names and , which direct Internet users to their international portal, and , which direct users to the Complainants’ website directed to customers in the United Kingdom. As per the information available in Annex 5 of the Complaint, Complainants operate more than 5,000 stores across the world and are active in Australia, Austria, Belgium, Denmark, France, Germany, Ireland, Luxembourg, the Netherlands, Poland, Portugal, Slovenia, Spain, Switzerland, and the United States of America.
The disputed domain name is , which has been registered on April 27, 2018. The disputed domain name is currently redirecting Internet users to a webpage hosting sponsored links. 5. Parties’ Contentions A. Complainants
The Complainants’ state that:
1. The disputed domain name is confusingly similar to the Complainants ALDI trademark, as it incorporates the ALDI sign together with the suffix “de” which enhances confusion as it suggests that it has some connection with goods or services that are sold by the Complainants in Germany, in which the Complainants have several stores and a solid operation;
2. Internet users will evidently be confused into believing that the disputed domain name is registered to, or at least operated, authorized or endorsed by the Complainants;
3. The disputed domain name takes unfair advantage of the Complainants’ rights by misleading Internet users to believe that it is connected with the Complainants;
4. The Respondent has no rights in the trademarks or association with the Complainants whatsoever;
5. The Complainants’ rights in the trademarks predate the Respondent’s registration of the disputed domain name on April 27, 2018;
6. The Complainants have not licensed or otherwise authorized the Respondent to use the ALDI trademark;
7. The Respondent has no rights or legitimate interests in the disputed domain name, nor has it conducted any prior business under the name ALDI in connection with a bona fide offering of goods or services;
8. The registration of the disputed domain name was in bad faith. Furthermore, it has been (or is planning to be) used to attract Internet users, for commercial gain, to the Respondent’s website by creating a likelihood of confusion with the Complainants’ trademark;
9. There is the distinct possibility that the disputed domain name was registered in order that the Respondent might offer it for sale to either the Complainants (or their competitors) at a price higher than the cost of registration.
Lastly, the Complainants request that the disputed domain name be transferred to the first Complainant Aldi GmbH & Co KG. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainants must prove that:
(i)the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
The Panel finds that the Complainants in the current procedure have proven to be the holders of a number of trademarks consisting of the ALDI sign, highlighting registration No. UK00002250300, for the ALDI mark, in the United Kingdom, filed on October 26, 2000.
The disputed domain name comprises the Complainants’ trademark ALDI with the addition of the suffix “de” and the generic Top-Level Domain (“gTLD”) “.com” identifier.
It is well established in previous UDRP decisions that, where the disputed domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525.
Also, the addition of a generic term does not prevent a finding of confusing similarity with the Complainants’ mark or official domain names. (See, Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437; The American Automobile Association, Inc. v. Cameron Jackson / PrivacyDotLink Customer 2440314, WIPO Case No. D2016-1671; and Viacom International Inc. v. Frank F. Jackson and Nancy Miller,WIPO Case No. D2003-0755).
Therefore, this Panel concludes that the Complainants have fulfilled the first requirement under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the complainant has to demonstrate that the respondent has no rights or legitimate interests in the disputed domain name.
The Panel notes that prior panels developed a consensual view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
On the record, the Panel verifies that the Complainants are the owners of several ALDI trademark registrations and that it has no businesses or other relationships with the Respondent.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain name. Besides, no fair use of the disputed domain name has been made or found until the start of this Complaint.
Furthermore, with respect to paragraph 4(c)(iii) of the Policy, the Respondent has not made, or is not making, a legitimate noncommercial or fair use of the disputed domain name.
Taking into consideration the absence of any response by the domain name holder, meaning that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name, the Panel finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
Thus, the Panel considers paragraph 4(a)(ii) of the Policy fulfilled. C. Registered and Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith, according to the Policy, paragraph 4(a)(iii).
In the present case, the Panel finds that the Respondent has intentionally registered the disputed domain name, which is confusingly similar to Complainants’ marks and domain names and that it could mislead consumers and the general public. Based on all the above facts, it is highly unlikely that the Respondent was not aware of the Complainants’ trademark rights when the disputed domain name was registered.
The Panel also notes that the allegations of bad faith made by the Complainants were not contested, as Respondent did not reply to the Complaint. Examining the evidence provided by the Complainants, it is confirmed that its trademarks, as well as domain names, have been in use long before the disputed domain name was registered.
Nonetheless, the disputed domain name clearly reproduces the Complainants’ mark ALDI and resembles the Complainants’ domain name, with the addition of the “de” letters, which are not sufficient to dispel confusion. The Panel agrees that the use of the suffix “de” enhances the likelihood of confusion for customers, as it suggests that the disputed domain name will host a webpage relating to goods or services directed to an audience in Germany (“.de” is a well-known TLD for Germany).
Additionally, the Panel verifies that the disputed domain name resolves to a pay-per-click website, consisting of random ads that generate revenue according to as many times as they are clicked by an Internet user. Accordingly, the Panel believes further that the Respondent has intentionally misspelled the Complainants’ trademark in order to attract the flow of Internet users who have mistyped the Complainants’ URL address, enabling the increase of traffic to the Respondent’s website under the disputed domain name, and derive more revenues as a result.
It is well established that where a domain name is used to generate revenue in respect of “click through” traffic, and that traffic has been attracted because of the name’s association with the Complainant, such use amounts to use in bad faith. See Dymocks Holdings Pty Ltd v. Heng Zhong / Whois Agent, Whois Privacy Protection Service, Inc.,WIPO Case No. D2016-0560.
In view of the above evidence, the Panel concludes that the Respondent is intentionally attempting to attract Internet users to its website by creating a likelihood of confusion with the Complainants’ ALDI mark.
Consequently, the Panel finds that the disputed domain name has been registered and is being used in bad faith under the paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, and 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 first Complainant Aldi GmbH & Co KG.
Luiz E. Montaury Pimenta
Sole Panelist
Date: December 10, 2018
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