The Complainants are Aldi GmbH & Co. KG, Germany, and Aldi Stores Limited, United Kingdom, represented by Freeths LLP, United Kingdom.
The Respondent is Contact Privacy Inc. Customer 1243650590, Canada / George Moussa, Holidays Market, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2019. On September 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 2019, 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 received two email communications from the Respondent on September 20, 2019. On the same day, the Center sent its standard Possible Settlement email instructing the Parties as to how to proceed with suspension of the proceeding for purposes of pursuing settlement options. On September 25, 2019, the Complainants requested the suspension of the proceedings. Accordingly, the proceedings were suspended until October 25, 2019. On October 25, 2019, the Complainants emailed the Center requesting the reinstitution of the proceedings. The proceedings were reinstituted on the same day. The Complainants filed an amended Complaint on October 29, 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 November 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2019. The Respondent did not provide a substantive reply to the Complaint. Accordingly, on November 27, 2019, pursuant to paragraph 6 of the Rules, the Center notified the Parties that it would proceed with panel appointment. The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on December 5, 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. As per the Panel’s request, the date of issuance of the decision was extended until December 25, 2019. On December 20, 2019, the Center received two email communications from the Respondent. Considering these communications, and their relevance in this proceeding, the Panel decided to accept these communications, and requested an extension for rendering a decision until January 10, 2020. 4. Factual Background The Complainants are Aldi GmbH & Co. KG, a company registered under the laws of Germany (the “Complainant 1”) and Aldi Stores Limited, a company incorporated under the laws of the United Kingdom (the “Complainant 2”). The Complainants are under common control and operate in the business of grocery retailing. The Complainants submitted evidence showing that the Complainant 1 owns the following trademark registrations, of which the Complainant 2 is a licensee: Trademark Registration Number Registration Date Classes Jurisdiction ALDI UK00002250300 March 30, 2001 1, 3, 5, 6, 11, 16, 21, 24, 25, 29, 30, 31, 32, 33, 34, 35 United Kingdom ALDI E0001954031 April 2, 2002 35, 38 European Union ALDI E0002071728 April 14, 2005 3, 4, 7, 9, 16, 24, 25, 29, 30, 31, 32, 33, 34, 36 European Union ALDI E0002714459 September 5, 2003 35, 36 European Union ALDI E0003360914 Jun 2, 2010 35, 38, 39 European Union ALDI E0003639408 April 19, 2005 36, 39, 41, 43 European Union ALDI E0006870943 October 19, 2009 7, 9, 28 European Union ALDI TALK EU011181815 March 6, 2013 9, 35, 37, 38 European Union ALDI MOBILE EU011181823 March 6, 2013 9, 35, 37, 38 European Union ALDI HOLIDAYS UK00002460745 March 28, 2008 36, 39, 43 United Kingdom ALDI TRAVEL UK00002460747 February 29, 2008 36, 39, 43 United Kingdom Pursuant to section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), this Panel conducted an investigation of publicly available data regarding registrations covering the trademark ALDI and variations thereof in the United States, and found the following registrations owned by ALDI Inc., presumably a company affiliated to the Complainants: Trademark Registration Number Registration Date Classes Jurisdiction ALDI (& Design) 1093441 June 13, 1978 42 United States ALDI (& Design) 3400731 March 25, 2008 35 United States A ALDI (& Design) 1331354 April 16, 1985 42 United States A ALDI (& Design) 2617555 September 10, 2002 35 United States A ALDI (& Design) 3306405 October 09, 2007 35 United States A ALDI (& Design) 3414110 April 22, 2008 35 United States A ALDI (& Design) 3883215 November 30, 2010 35 United States A ALDI (& Design) 5519630 July 17, 2018 35 United States A ALDI (& Design) 5519631 July 17, 2018 35 United States A ALDI (& Design) 5723336 April 09, 2019 35 United States A ALDI (& Design) 5723334 April 09, 2019 35 United States The disputed domain name was registered on December 25, 2018. The web site to which the disputed domain name resolves is inactive. 5. Parties’ Contentions A. Complainants The Complainants argued the following: That the Complainant 1 owns many registrations that cover, or comprise the well-known trademark ALDI. That the Complainant 2 was incorporated on November 25, 1988, and that it has traded as “Aldi Limited” before such date. That the Complainants and their connected companies are recognized as international leaders in grocery retailing with more than 5,000 stores in Australia, Austria, Belgium, Denmark, France, Germany, Ireland, Luxembourg, the Netherlands, Poland, Portugal, Slovenia, Spain, Switzerland, and the United States. That the Complainants’ trademark ALDI is recognized internationally and that the chain of shops that operate under said brand is currently ranked third in the “Global Index Rankings for UK Supermarkets”, and first in relation to “Top Index Improvers”. (i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. That the disputed domain name includes the Complainants’ famous name and trademark ALDI. That the mere appearance of the Respondent’s name on the publicly accessible records relating to the disputed domain name amounts to a misrepresentation which is likely to deceive the public into believing that the disputed domain name is operated by either or both of the Complainants, or a company connected to them. That the disputed domain name incorporates the Complainants’ name and trademark ALDI, together with the offensive word “fuck”. That Internet users will be confused into believing that the disputed domain name has been registered by, or is operated, authorized or endorsed by the Complainants. That any web site to which the disputed domain could resolve would result in an inference that such web site is operated by the Complainants, or with the Complainants’ consent. That the use of the Complainants’ trademark ALDI takes unfair advantage of the Complainants’ rights, by misleading users to believe that the disputed domain name is connected to the Complainants. (ii) The Respondent has no rights or legitimate interests in the disputed domain name. That the Respondent has no rights or legitimate interests in the disputed domain name or the trademark ALDI, and that he is not associated with the Complainants. That the Complainants have not licensed or otherwise authorized the Respondent to use the ALDI trademark. That the Complainants’ rights to the trademark ALDI significantly predate the Respondent’s registration of the disputed domain name. That the Respondent has not conducted any prior business under the name ALDI in connection with a bona fide offering of goods or services. (iii) Registration and use in bad faith. That the Respondent uses the Complainants’ registered trademark ALDI, in direct contravention of the Complainants’ trademark rights. That it is inevitable that Internet users will be confused into believing that the disputed domain name is associated with the Complainants. That by registering the disputed domain name, the Respondent took unfair advantage of the Complainants’ rights and that he was acting in bad faith. That the disputed domain name has been (or is planning to be) intentionally used to attract Internet users, to damage the Complainants. That the distinctive character and reputation of the Complainant’s trademark are harmed by means of their association with the disputed domain name, and that there is a detrimental impact on the reputation and professional activities of the Complainants. B. Respondent The Respondent did not provide a formal Response to the Complainants’ contentions. The Respondent sent to the Center two email communications on September 20, 2019, and two on December 20, 2019. None of these communications constitute a Response under the Policy. The last email communications of the Respondent were sent to the Center after the due date for submitting a Response, which expired on November 26, 2019. However, pursuant to paragraph 10 of the Rules, the Panel has decided to accept the statements contained therein into the case file, as they are relevant to the present case. In his email communications of September 20, 2019, the Respondent stated that he did not understand what was happening, and that he was willing to give up the disputed domain name. In one of his email messages of December 20, 2019, the Respondent stated the following: “I don’t want this website. I bought it from google domains. Why is it that I have the issue if they’re the ones who sold it to me. Again I DONT WANT THIS WEBSITE if you want it take it no bothers to me. The domain was based on my game clan that I don’t even play anymore. Al- all D-demons I-interforce It has nothing to do with the grocery store. Again If they want the website, anyone can have it. I don’t want anything for it. Just take it.” 6. Discussion and Findings The Complainants must prove that the three elements of paragraph 4(a) of the Policy have been met: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and (ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and (iii) the disputed domain name has been registered and used in bad faith. A. Identical or Confusingly Similar The Complainants have submitted evidence showing that the Complainant 1 owns registrations for the trademark ALDI in the United Kingdom since 2001, and in the European Union since 2002, in various classes, which have been licensed to the Complainant 2. Given the widespread presence of the Complainant’s stores in several markets, including the United States, where the Respondent is domiciled and operates his grocery store, and the significant online presence of the Complainants’ business and commercial operations, the trademark ALDI qualifies as a well-known mark. The disputed domain name reproduces the Complainants’ trademark ALDI in its entirety, with the addition of the term “fuck”. According to the opinion of previous panels, when the disputed domain name contains a complainant’s trademark in conjunction with a pejorative term, the disputed domain name is deemed to be confusingly similar to such trademark for the purposes of the first element of the Policy (see Section 1.3 of the WIPO Overview 3.0), see also Koninklijke Philips Electronics N.V v. Selling Domains Best, WIPO Case No. D2002-1041 The addition of the generic Top-Level Domain“.com” to the disputed domain name does not avoid the confusing similarity; therefore, it is without legal significance in the analysis under the first element (see SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services,WIPO Case No. D2015-0565; Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc.,WIPO Case No. D2014-1919; Compagnie Générale des Etablissements Michelin v. Gui He Xing,WIPO Case No. D2018-1446). Therefore, the Panel is of the opinion that the disputed domain name is confusingly similar to the Complainants’ trademark ALDI. Accordingly, the first element of the Policy has been met. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name: (i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it did no acquire trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Complainants affirm that the Respondent has no rights or legitimate interests in the disputed domain name, or the trademark ALDI, and that he is not associated with the Complainants in any way. The Respondent has said that the disputed domain name corresponds to an acronym of his game clan, which he doesn’t use any more, and that anyone would have been able to obtain it, since the Registrar has made it available to the public, and that he is willing to “give up” said disputed domain name. The Respondent argued that the disputed domain name “[…] has nothing to do with the grocery store”, and that “[…] If they want the website, anyone can have it. I don’t want anything for it. Just take it.” The Panel, following section 4.8 of the WIPO Overview 3.0, and in order to have sufficient information to analyze this case, reviewed some publicly available information, and verified that the address that the Respondent submitted to the Registrar as his contact information corresponds to the place where the local grocery store “Holidays Market” is located in Florida. Furthermore, the database of the web site of the State of Florida Web, Division of Corporations, indicates that the Respondent is the owner of said store, and that such store operates since 2014. In their official web site, the Complainants state that the first ALDI store was established in the United States in 1976, and that there are currently more than 1,900 facilities across 36 states, with over 25,000 employees. The Complainants’ Web page also states that the Complainants and their affiliated companies operate stores in the state of Florida (approximately 20 stores in the Miami area only), where the Respondent has represented to be domiciled. The Panel found that the Respondent’s store “Holidays Market” is located approximately 2 miles away from the nearest ALDI store. Therefore, it is reasonable to infer that the Respondent knew the Complainants, the trademark ALDI, and the stores that operate under said trademark, when he registered the disputed domain name. Taking the aforementioned facts into account, the Respondent’s claim regarding the selection of the disputed domain because ALDI is allegedly an acronym of his “game clan”, where “AL” stands for “All”, “D” for “Demons” and “I” for “Interforce”, is simply not credible. Because the Respondent has not produced any supporting evidence to demonstrate the existence of the acronym of his game clan, or any bona fide use or intent to use the disputed domain name, the Panel is unable to conclude that the Respondent’s intent in registering the disputed domain name is legitimate (see section 2.10.2 of the WIPO Overview 3.0; see also Statoil ASA (Statoil) v. Domains by Proxy LLC, Domainsbyproxy.com / Frederic Bavastro,WIPO Case No. D2016-1824; The Procter & Gamble Company v. OHMY! Consult Ltd, Pezhman Ahmadi,WIPO Case No. D2015-1143). Therefore, the Respondent’s above-mentioned affirmation does not confer to him any rights or legitimate interests in the disputed domain name (see section 4.2 of the WIPO Overview 3.0 “The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence” […]. Under this standard, a party should demonstrate to a panel’s satisfaction that it is more likely than not that a claimed fact is true.”; see Statoil ASA (Statoil) v. Domains by Proxy LLC, Domainsbyproxy.com / Frederic Bavastro,WIPO Case No. D2016-1824). The disputed domain name does not resolve to any web site, and thus there is no content associated thereto. Therefore, as there is no criticism site, or critical content linked to it, this case does not entail an issue of free speech under the precedents issued in accordance with the Policy. The Respondent does not claim that he registered the disputed domain name for criticism purposes, or that he intends to use it to that end. While the Panel notes that the mere hosting of an inactive web site is not illegal or unfair per se, the Respondent has failed to present any evidence that would justify the registration of the disputed domain name, which incorporates the Complainants’ well-known trademark ALDI (see, mutatis mutandis, Philip Morris USA Inc. v. Computer Services, Inc.,WIPO Case No. D2017-0847; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; and International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683; Compagnia Generale Telemar S.p.A. v. chu cash,WIPO Case No. D2019-1445). The mere inclusion of the Complainants’ well-known trademark, together with the word “fuck” in the disputed domain name cannot in itself be deemed as fair or legitimate, and therefore cannot give the Respondent any rights or legitimate interests in the disputed domain name (see Berkenhoff GmbH v. Opec Engineering Co., Ltd.,WIPO Case No. D2003-0503; Layby Services Australia Pty Ltd. v. Chrisco Hampers Australia Ltd,WIPO Case No. D2009-1066). The Complainants have argued that the Respondent is not commonly known as ALDI or Considering the above, as well as the Complainants’ prior rights over the trademark ALDI, which significantly precede the Respondent’s registration of the disputed domain name, in the Panel’s opinion, the Complainants have established prima facie that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not submitted any evidence to the contrary. Therefore, the Complainants have accredited the fulfillment of the second element of the Policy (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; and International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683). C. Registered and Used in Bad Faith According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use 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 that complainant, for valuable consideration in excess of your 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 web site 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 web site or location or of a product or service on its web site or location. As stated in the discussion of the second factor above, and considering that the Respondent is a direct competitor of the Complainants, as well as taking into account the physical and online presence of the Complainants’ stores and online commercial transactions in the United States, including the Complainants’ mercantile activities in the State and geographical area where the Respondent operates his store, it is clear that the Respondent had full knowledge of the Complainants, their trademarks and their business at the time of registration of the disputed domain name, which constitutes opportunistic bad faith under the Policy (see section 3.2.1. 4.8 of the WIPO Overview 3.0, see also L’Oréal v. Contact Privacy Inc. Customer 0149511181 / Jerry Peter,WIPO Case No. D2018-1937; Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot,WIPO Case No. D2019-0980). Although previous Panels have held that, under particular circumstances, a domain name that incorporates the trademark of a third party with the addition of an offensive word may be considered as having been used in good faith, it is well established that in order to meet this criterion, the domain name must actually be in use (Nix Solutions Ltd. Limited Liability Company v. WhoisGuard Protected / Shaun Ferguson,WIPO Case No. D2014-1475; Towers on the Park Condominium v. Paul Adao,WIPO Case No. D2012-1054; Moog Inc. v. Andrew Botte, Sayfa Workwear Limited,WIPO Case No. D2014-1484). This is not the case here. The Respondent has not filed any evidence showing that the disputed domain name has been used to resolve to a web site at in any point in time, or that he has undergone demonstrable preparations to use said disputed domain name. Therefore, the exception set forth in the preceding paragraph is not applicable to this case (see Philip Morris USA Inc. v. Computer Services, Inc., supra). On the other hand, a respondent’s passive holding of a domain name, in the absence of a right to, or legitimate interest in said domain name, can constitute bad faith. In such scenario, panels have to analyze the circumstances of each case to determine whether or not such passive holding constitutes bad faith (see Telstra Corporation v Nuclear Marshmallows,WIPO Case No. D2000-0003; and Kravet, Inc v. Youri van Oostendorp, Calipseo B.V. / Y. v. Oostendorp, Calipseo B.V.,WIPO Case No. D2018-0400). In this proceeding, the following circumstances should be taken into account: - The disputed domain name fully incorporates the Complainants’ well-known trademark ALDI, which is widely used in the physical and online environments in different markets, including the United States, where the Respondent has declared to have his domicile, and where the Complainants own over 1,900 stores, the first of which was established in said country in 1976. - The Respondent is a direct competitor of the Complainants. - The grocery store of the Respondent is located in Florida, at a distance of approximately 2 miles from the closest ALDI store operated by the Complainants. - The Respondent has not provided a credible explanation as to why he registered the disputed domain name, and/or as to whether he has rights or legitimate interests in the disputed domain name. - The Respondent has not filed a formal Response, or any evidence to support the statements contained in his email communications and has not rebutted the Complainant’s case. - The disputed domain name is inactive. It is not being used as a means for expressing legitimate, criticism speech, and the Respondent did not even claim an intention to use it in such a manner. - The disputed domain name includes the offensive term “fuck”. In light of the above, it is not possible to conceive any credible or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate. Thus, the third element of the Policy has been met. The Respondent has expressed his intention to relinquish the disputed domain name. Therefore, a transfer decision is in line with the Respondent’s will. 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 Kiyoshi Tsuru
Sole Panelist
Date: January 10, 2019
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