The Complainants are Aldi GmbH & Co. KG of Mulheim an der Ruhr, Germany (“Complainant 1”)and Aldi Stores Limited of Warwickshire, United Kingdom (“Complainant 2”), represented by Freeths LLP, United Kingdom.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Fabian Sabatier of Paris, France. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2019. On February 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 13, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on February 15, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. On the same day, the Center requested the Complainants to amend the Complaint regarding the remedy section. The Complainants filed an amended Complaint on February 19, 2019.
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 the Respondent of the Complaint, and the proceedings commenced on February 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2019.
The Center appointed Andrea Mondini as the sole panelist in this matter on March 21, 2019. 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 belong to the Aldi group of companies which operates more than 5,000 stores in numerous countries such as Australia, Austria, Belgium, Denmark, France, Germany, Ireland, Luxembourg, the Netherlands, Poland, Portugal, Slovenia, Spain, Switzerland, and the United States of America.
The Complainant 1 owns a number of registered trademarks for marks comprising the Aldi name, including European Union trademark ALDI No. 002071728, filed on December 27, 2000 and registered on April 14, 2005, which is registered in numerous classes.
The disputed domain name was registered on October 20, 2018 and resolves to a website hosting sponsored links relating to Aldi and to other retailers. 5. Parties’ Contentions A. Complainants
The Complainants in essence contend the following:
The Complainant 1 is the registered proprietor of the ALDI trademark registrations relied upon in the Complaint. The Complainant 2 is under common control with the Complainant 1 and is a licensee of the said trademark registrations. Therefore the Complainants have a common grievance against the Respondent.
The disputed domain name incorporates the “aldi” sign (which is identical to the Complainants’ trademarks) together with the suffix “france” which enhances confusion as it suggests that the disputed domain name will resolve to a webpage relating to goods or services which are specifically sold by the Complainants in France, particularly considering that the Complainants do operate their business also in France.
The Respondent has not conducted any prior business under the name Aldi in connection with the bona fide offering of goods or services. The Complainants have not licensed or otherwise authorized the Respondent to use the ALDI trademark. The Respondent therefore has no rights or legitimate interests in the disputed domain name, or any rights in the ALDI trademarks, or association with the Complainants whatsoever.
The disputed domain name has been registered in bad faith because the Respondent took unfair advantage of the Complainants’ rights. The Respondent used the disputed domain name in bad faith to attract Internet users, for commercial gain to the Respondent’s website by creating a likelihood of confusion with the ALDI trademark.
The Complainants requested the transfer of the disputed domain name to the Complainant 1. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant 1 has shown that it holds several registrations for the trademark ALDI, including European Union trademark ALDI No. 002071728, filed on December 27, 2000 and registered on April 14, 2005, which is registered in numerous classes.
The Panel finds that the disputed domain name is confusingly similar to the Complainants’ trademark, because it incorporates in its entirety the trademark ALDI. The suffix “france” does not dispel confusing similarity between the disputed domain name and the Complainants’ trademark. See section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Accordingly, the Panel finds that the Complainants have satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainants contend, credibly, that they have not authorized the Respondent to use the disputed domain name, and that there is no relationship whatsoever between the Parties. In the absence of any Response, the Panel concludes that the Respondent was not authorized or licensed to use the Complainants’ trademark in the disputed domain name and that there is no indication of any legitimate noncommercial or fair use of the disputed domain name.
Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Complainants have satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainants operate more than 5,000 stores in numerous countries including France, and the trademark ALDI is well known. The Panel thus concludes that the Respondent must have had this trademark in mind when it registered it, so that the disputed domain name was registered in opportunistic bad faith.
The addition of the word “france” in the disputed domain name is a further indication of registration in bad faith because it may lead Internet users to believe that it designates a website operated by the Complainants specifically for the French market.
The Panel finds that the Respondent used the disputed domain name in bad faith to attract Internet users, for commercial gain to the Respondent’s website by creating a likelihood of confusion with the ALDI trademark and creating the false impression that they would reach the Complainants’ website dedicated specifically to the French market.
The Panel therefore finds that the Complainants have satisfied the requirement under paragraph 4(a)(iii) of the Policy. 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 1.
Andrea Mondini
Sole Panelist
Date: March 27, 2019
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