The Complainants are Aldi GMBH & CO. KG, Germany (“First Complainant”) and Aldi Stores Limited, United Kingdom (“Second Complainant”), both represented by Freeths LLP, United Kingdom.
The Respondent is Lin Jin Jiang (林金将), Xia Men Tian Mu Zhuang Shi She Ji You Xian Gong Si (厦门天暮装饰设计有限公司), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 29, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 2, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on December 10, 2019. On December 2, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on December 10, 2019. The Respondent did not comment on the language of the proceeding. 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 in English and Chinese of the Complaint, and the proceedings commenced on December 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2020. The Center appointed Matthew Kennedy as the sole panelist in this matter on January 27, 2020. 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 part of the Aldi South international grocery retailer group. The First Complainant holds multiple trademark registrations for ALDI, including United Kingdom trademark registration number 00002250300, registered on March 30, 2001, and European Union trademark registrations numbers 001954031 and 002714459, registered on April 2, 2002 and September 5, 2003, respectively, specifying goods and services in multiple classes. Those trademark registrations remain current. The Second Complainant is a licensee of certain trademarks held by the First Complainant. The Respondent is an individual and a company located in China that are named in the Registrar’s WhoIs database as the registrant contact person and organization for the disputed domain name. The disputed domain name was registered on January 14, 2019. It resolves, variously, to a webpage purporting to be a Google store security check, and to a webpage displaying hyperlinks to supermarkets operated by the Complainant or a competitor of the Complainant. 5. Parties’ Contentions A. Complainant The disputed domain name is identical or confusingly similar to the Complainants’ ALDI name and trademark. The disputed domain name incorporates the ALDI sign in conjunction with “south” which enhances the confusion. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainants have not licensed or otherwise authorised the Respondent to use the ALDI trademark. The Respondent has no association with the Complainants whatsoever. The Respondent has not conducted any prior business under the name ALDI in connection with the bona fide offering of goods or services. The disputed domain name was registered and is being used in bad faith. In view of the presence of the ALDI trade mark in the disputed domain name, it is inevitable that Internet users will be confused into believing that the disputed domain name has some form of association with the Complainants. The disputed 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 ALDI trade mark, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website of the Respondent. B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings 6.1 Procedural Issues A. Multiple Complainants The Complaint was filed by two complainants against a single respondent. Both Complainants form part of the same corporate group. The First Complainant owns trademark registrations for ALDI and the Second Complainant is a licensee of that trademark. The Panel finds that the Complainants have a common grievance against the person named as the disputed domain name registrant and that it is efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below collectively as “the Complainant” except as otherwise indicated. B. Language of the Proceeding Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese. The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain name is in English and therefore targets English-speaking territories; the disputed domain name currently hosts sponsored links all of which are also in English; and the Registrar’s Registration Agreement annexed to the Complaint is in English. Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293. The Panel observes that in this proceeding the Complaint and amended Complaint were filed in English. The disputed domain name also contains an English word. The Respondent has not expressed any interest in commenting on the language of the proceeding, responding to the Complaint, or otherwise participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay. Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed. 6.2 Substantive Issues Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (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 Based on the evidence submitted, the Panel finds that the Complainant has rights in the ALDI mark. The disputed domain name wholly incorporates the ALDI trademark as its initial element. The disputed domain name also includes the dictionary word “south” but, as a mere dictionary word, this does not dispel the confusing similarity between the disputed domain name and the Complainant’s trademark. The disputed domain name also includes a generic Top-Level Domain (“gTLD”) suffix, i.e. “.com”. As a mere technical requirement of registration, a gTLD suffix is disregarded in the comparison between a domain name and a trademark for the purposes of the first element of the Policy, unless it has some impact beyond its technical function, which is not the case here. Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. As regards the first and third circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s ALDI trademark. The Complainant states that it has not licensed or otherwise authorised the Respondent to use the ALDI trademark and that the Respondent has no association with the Complainant whatsoever. The disputed domain name resolves to webpages that, variously, falsely purport to be a Google store security check, or display hyperlinks to supermarkets operated by the Complainant or a competitor. The hyperlinks operate for commercial gain, either of the Respondent or the operators of the linked sites, or both. The Panel finds that these are not a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. As regards the second circumstance, the Respondent’s individual and organization names are listed in the Registrar’s WhoIs database as “lin jin jiang” (林金将) and “xia men tian mu zhuang shi she ji you xian gong si” (厦门天暮装饰设计有限公司), respectively, not “aldisouth”. There is no evidence that the Respondent has been commonly known by the disputed domain name. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because it did not respond to the Complaint. Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows: (iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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] website or location or of a product or service on [the respondent’s] website or location. As regards registration, the disputed domain name was registered many years after the registration of the Complainant’s ALDI trademark. The disputed domain name incorporates that trademark in its entirety as its initial element, and combines it with “south”, which is identical to the name of the Complainant’s corporate group, “Aldi South”. The hyperlinks on one of the webpages to which the disputed domain name resolves are generated based on the trademark value of ALDI. The Panel infers from these circumstances that the Respondent knew of the Complainant and its trademark at the time that it registered the disputed domain name in 2019. Accordingly, the Panel finds that the Respondent registered the disputed domain name in bad faith. As regards use, the disputed domain name incorporates the ALDI trademark as its initial element and resolves to webpages that, variously, falsely purport to be a Google store security check, or display hyperlinks based on the trademark value of ALDI. The hyperlinks operate for commercial gain, either of the Respondent or the operators of the linked sites, or both. The Panel finds that the disputed domain name is used to attract Internet users by creating a likelihood of confusion with the Complainant’s ALDI trademark as to the source, sponsorship, affiliation, or endorsement of the webpages to which the disputed domain name resolves. This use is intentional and for commercial gain within the terms described in paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 Matthew Kennedy
Sole Panelist
Date: February 7, 2020
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