The Complainants are Aldi GmbH & Co. KG, Germany, and, Aldi Stores Limited, United Kingdom, represented by Freeths LLP, United Kingdom.
The Respondent is Allan Webster, 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 November 11, 2020. On November 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 13, 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 November 13, 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 November 20, 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 November 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2020. The Center appointed Tuukka Airaksinen as the sole panelist in this matter on December 30, 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 Aldi Stores Limited was established on November 25, 1988 and operates supermarkets under the trademark ALDI together with Aldi GmbH & Co. KG. The Complainant Aldi GmbH & Co. KG is the owner of the trademark ALDI, registered inter alia as a European Union Trade Mark No. 1954031 on April 2, 2002. The disputed domain name was registered on May 29, 2020 and has been used to send emails impersonating the Complainants’ managing director. 5. Parties’ Contentions A. Complainant The Complainant Aldi GmbH & Co. KG owns a number of well-known registered trademarks comprising the trademark ALDI. The Complainants and their connected companies have more than 5,000 supermarket stores across the world and the trademark ALDI is the second most recognized food retail brand in the United Kingdom. The disputed domain name includes the Complainants’ trademark in its entirety, 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 connected company. The letters “b2b” in the disputed domain name enhance confusion as they suggest that the disputed domain name will refer to business to business operations of the Complainants’ businesses. The Complainants have not licensed or otherwise authorized the Respondent to use the ALDI trademark, the Respondent has no rights or legitimate interests in the disputed domain name or the Complainants’ trademark. The Respondent has also not conducted any prior business under the name “Aldi” in connection with bona fide offering of goods or services. The disputed domain name was registered in bad faith and is being used to conduct fraudulent activities impersonating the Complainants’ managing director in order to obtain delivery of goods worth a large sum of money from a third party. The Respondent has therefore deceived the public into thinking that the disputed domain name belongs to the Complainants. B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires that the Complainants establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights. Consequently, the Complainants must prove that they have rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark. The Complainants have shown that they are the owner of the trademark ALDI, registered in various jurisdictions. The disputed domain name includes the Complainants’ trademark in its entirety, combined with the term “b2b”, which refers to the concept of business to business services. This means that the disputed domain name suggests that it is used to render the Complainants’ services to other businesses. Therefore, the term “b2b” is merely descriptive. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.” As the disputed domain name includes the Complainants’ trademark in its entirety combined with a descriptive term, the Panel finds that the disputed domain name is confusingly similar to the Complainants’ trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainants’ trademark and hence the first element of the Policy has been fulfilled. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy requires that the Complainants establish that the Respondent has no rights or legitimate interests to the disputed domain name. It is widely accepted among UDRP panels that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of proof shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270, and section 2.1 of the WIPO Overview 3.0. The Complainants have credibly submitted that the Respondent is neither affiliated with the Complainants in any way, nor has it been authorized by the Complainants to use and register the disputed domain name, that the Respondent has no prior rights or legitimate interests in the disputed domain name, and that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and is not commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy. Moreover, the Panel finds that the nature of the disputed domain name carries a risk of implied affiliation with the Complainants’ trademark. See section 2.5.1 of the WIPO Overview 3.0. Accordingly, the Panel finds that the Complainants have made a prima facie case that has not been rebutted by the Respondent. Considering the Panel’s findings below, the Panel finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the Complainants establish that the disputed domain name has been registered or is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name 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 the Complainant, for valuable consideration in excess of [the Respondent’s] 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 or competitor; or (iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website 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.” Considering that the Complainants operate more than 5,000 supermarket stores across the world, and that the Complainants’ trademark is one of the most recognized food retail brands in the United Kingdom, where the Respondent apparently resides, it is evident that the Respondent must have been aware of the Complainants’ trademark when registering the disputed domain name. As the Complainants’ trademark and the disputed domain name have been found to be confusingly similar, the Panel finds that the disputed domain name was registered in bad faith. The disputed domain name does not resolve to an active website. However, the disputed domain name has been used as an email address in an attempt to send a fraudulent invoice to a third party that could be a supplier to the Complainants. Considering that the Panel has found that the Complainants’ trademark and the disputed domain name are confusingly similar, the Respondent has used a privacy protection service for the registration of the disputed domain name to hide its true identity, there are no obvious good faith or legitimate interests for the Respondent to register the disputed domain name, the disputed domain name has been used for fraudulent activities, the Panel considers, on balance, that the disputed domain name has been registered and is being used in bad faith. Therefore, the Panel finds that the third element of the Policy is fulfilled. 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 Tuukka Airaksinen
Sole Panelist
Date: January 21, 2021
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