The Complainant is Aldi GmbH & Co. KG, Germany & Aldi Stores Limited, United Kingdom, represented by Freeths LLP, United Kingdom.
The Respondent is Bryer Grote, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2020. On July 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 14, 2020, 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 Complainant on July 15, 2020, 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 amendment to the Complaint on July 15, 2020. The Center verified that the Complaint together with the amendment to 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 July 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 10, 2020. The Center appointed Michael D. Cover as the sole panelist in this matter on August 17, 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 Complainant, a company registered under the laws of Germany, is the registered proprietor of various registrations for the trademark ALDI, including United Kingdom trademark registration No. 2,250,300, registered as of March 30, 2001, and European Union Trademark (“EUTM”) registration No. 1,954,031, registered as of April 2, 2002. The Complainant is under common control with Aldi Stores Limited, an English company, which is a licensee of these trademarks. Aldi Stores Limited was incorporated on November 25, 1988. It is under common control with the Complainant and, as licensee, trades under the ALDI trademark. The Complainant and its connected companies have more than 5,000 stores across the world and they operate in countries including Australia, Austria, Belgium, Denmark, France, Germany, Ireland, Luxembourg, the Netherlands, Poland, Portugal, Slovenia, Spain, Switzerland and the United States of America. Aldi Stores Limited operates a website at “www.aldi.co.uk”. The Respondent is Bryer Grote, United Kingdom. The Disputed Domain Name was registered on April 26, 2020. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar to a trademark in which the Complainant has rights The Complainant submits that it has rights in the Disputed Domain Name on the basis of its prior rights in the ALDI trademark, which ALDI trademark is well-known and famous and recognized. The Complainant submits that ALDI is currently the most recognized food retail brand in the United Kingdom and the second most recognized brand across all sectors in the United Kingdom, as evidenced by the YouGov BrandIndex reports, which is exhibited to the Complaint as Annex 7. The Complainant further submits that the ALDI trademark is recognized internationally and protected by the registered trademarks of the Complainant. The Complainant also states that it benefits from rights in passing off, based on the substantial reputation and goodwill which the Complainant has in the ALDI name. The Complainant states that the Respondent has no rights or association with the Complainant whatsoever. The Complainant submits that the Disputed Domain Name includes the Complainant’s famous name and trademark ALDI. The Complainant also submits that the Disputed Domain Name incorporates the ALDI sign, together with the word “admin”, which is likely to enhance confusion, as it suggests that the Disputed Domain Name will host a webpage relating to the administrative element of the Complainant’s business and that most individuals navigating to the Disputed Domain Name will be expecting to reach a website operated or at least associated with the Complainant. The Complainant also states that the appearance of the Respondent’s name on publicly-accessible records relating to the Disputed Domain Name amounts to a misrepresentation which is likely to deceive the public into thinking that the Disputed Domain Name is operated by either the Complainant or a connected company. The Complainant concludes that the use of the name ALDI, which is identical to the Complainant’s ALDI trademarks, takes unfair advantage of the Complainant’s rights by misleading Internet users to believe that the Disputed Domain Name is connected with the Complainant. Rights or Legitimate Interests The Complainant submits that the Complainant’s rights in its ALDI trademarks predate the Respondent’s registration of the Disputed Domain Name on April 26, 2020. The Complainant continues that the Respondent has no rights or legitimate interests in the Disputed Domain Name nor any rights in the ALDI trademarks. The Complainant also states that it has not licensed or authorized the Respondent to use the ALDI trademark and that the Respondent has not conducted any prior business under the name ALDI in connection with a bona fide offering of goods or services. The Respondent concludes that the Respondent therefore has no rights or legitimate interests in the Disputed Domain Name nor any association with the Complainant. Registered and Used in Bad Faith The Complainant submits that the Disputed Domain Name makes use of the Complainant’s registered trademark ALDI in direct contravention of the Complainant’s trademark rights and that the registration of the Disputed Domain Name therefore took unfair advantage of the Complainant’s rights and that, on this basis alone, the Complainant considers the registration of the Disputed Domain Name to be in bad faith. The Complainant states that the Disputed Domain Name is being used to conduct fraudulent activities impersonating the Complainant’s Group Managing Director in order to obtain delivery of goods from one of the Complainant’s suppliers, which the Complainant sets out at Annex 8 to the Complaint. The Complainant also submits that what the Complainant describes as a misrepresentation has deceived the public into thinking that the Disputed Domain Name is under the control of the Complainant. The Complaint concludes that the character and reputation of the ALDI trademark has been damaged by the association with the Respondent. The Complainant also concludes that the Disputed Domain Name was registered in order that the Respondent might offer the Disputed Domain Name for sale either to the Complainant or its competitors at a price higher than the cost of the registration of the Disputed Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Complainant must establish on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel accepts that the Complainant has established registered and unregistered rights in its ALDI trademark. The registrations for this trademark go back to the year 2000 in both the United Kingdom and also as a EUTM. The Complainant has operated a substantial and well-recognised business under the ALDI trademark since 1988 and the Complainant has established that its trademark ALDI is well-known. The Panel also accepts that the Disputed Domain Name is confusingly-similar to the Complainant’s ALDI trademark. The Disputed Domain Name incorporates the Complainant’s trademark in its entirety. It is well-established that the incorporation of a generic Top-Level Domain (“gTLD”), such as “.shop”, does not avoid a finding of confusing similarity to a complainant’s trademark. The same applies to the addition of a descriptive term, such as “admin”, which does not avoid a finding of confusing similarity, see Section 1.11 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark ALDI in which the Complainant has rights and the provisions of paragraph 4(a)(i) of the Policy has been met. B. Rights or Legitimate Interests The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. There is no evidence that the Complainant has licensed or authorized the Respondent’s ALDI trademark nor that the Disputed Domain Name has been used for a bona fide offering of goods or services or for The Respondent has failed to satisfy this burden, including by failing to file a Response to the Complaint. The Respondent has not demonstrated use or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services without intent for commercial gain or to misleadingly divert consumers or to tarnish the ALDI trademark of the Complainant nor that the Respondent has been commonly-known by the Disputed Domain Name. The Panel therefore finds that the provisions of paragraph 4(a)(ii) of the Policy have been met. C. Registered and Used in Bad Faith The Panel accepts that the Disputed Domain Name has been registered and is being used in bad faith. Having decided that the ALDI trademark of the Complainant is well-known, the Panel finds that it is a reasonable inference that the Respondent would have been aware of that well-known trademark, which was registered more than 20 years after the registration of that trademark in the United Kingdom and as a EUTM, when registering the Disputed Domain Name. The Panel accepts that the Complainant has not authorized the Respondent to use the Complainant’s ALDI trademark in the Disputed Domain Name. The Panel accepts that the Disputed Domain Name has been used to attempt a fraudulent deception involving one of the Complainant’s suppliers, as set out by the Complainant in Annex 8 to the Complaint. The Panel consequently finds that the Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor and, by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark ALDI as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Complainant has submitted that there is the distinct possibility that the Disputed Domain Name was registered in order that the Respondent might offer the Disputed Domain Name for sale to either the Complainant or a competitor at a price higher than the cost of registration but has not provided any evidence of this contention and the Panel has therefor discounted this possibility. The Panel accordingly finds that the provisions of paragraph 4(a)(iii) have been met. 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, Michael D. Cover
noncommercial fair use. The Panel hence decides that the burden then passes to the Respondent, the Complainant having made out a prima facie case. See WIPO Overview 3.0, Section 2.1.
Sole Panelist
Date: August 29, 2020
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