ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Aldi GmbH & Co. KG, Aldi Stores Limited v. Steve Tucknott Case No. D2023-4992 1. The Parties The Complainants are Aldi GmbH & Co. KG, Germany, and Aldi Stores Limited, United Kingdom ("UK"), represented by Freeths LLP, UK. The Respondent is Steve Tucknott, United States of America. 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 November 30, 2023. On November 30, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 2023, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Unknown) and contact information in the Complaint. The Center sent an email communication to the Complainants on November 30, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on December 1, 2023. The Center verified that the Complaint together with the amendment 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 December 6, 2023. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 6, 2024. The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on January 11, 2024. 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. page 2 4. Factual Background The first Complainant, Aldi GmbH & Co. KG, a German company, is the owner of numerous registrations of the trademark ALDI, while the second Complainant, Aldi Stores Limited is the exclusive licensee of the ALDI trademark in the United Kingdom. Hereinafter, the first and second Complainants will be collectively referred to as the "Complainants" unless otherwise indicated. Among others, the first Complainant owns the following registrations for the mark ALDI - all registered way before the registration of the disputed domain name: - UK registration No. 00002250300 for ALDI, registered on March 30, 2001; - European Union ("EU") registration No. 002071728 for ALDI, registered on April 14, 2005; - EU registration No. 002714459 for ALDI, registered on September 5, 2003 Evidence of these registrations, as well as of several others, were provided as Annex 4 to the Complaint. The Complainants and their connected companies operate over 5,000 retail stores across the world, under the ALDI trademark. The sale of grocery products forms an important part of the business in these stores. Also, Annexes 5 and 7 list evidence of the renown of the mark, as well as several prizes and awards given to the Complainants throughout the years. The disputed domain name was registered on January 15, 2023, and does not resolve to an active website. 5. Parties' Contentions A. Complainant The Complainants contend that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. The Complainants contend that the disputed domain name is confusingly similar to the Complainant's mark registered and used worldwide. In fact, the disputed domain name is composed by the mark ALDI, which is identical to the Complainant's registered mark, together with the word "deals", which has a clear relation the core business of the Complainants. The Complainants owns several registrations worldwide for the trademark ALDI, as well as domain names bearing this mark, as evidenced by annex 4 to the Complaint. The Complainants contend that Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with nor authorized by the Complainants in any way. The disputed domain name adopted by the Respondent - a reproduction of the Complainant's registered mark associated with descriptive abbreviation - show a clear intention of misleading the Internet users. B. Respondent The Respondent did not reply to the Complainants' contentions. page 3 6. Discussion and Findings The Policy, in its paragraph 4(a), determines that three elements must be presented and duly proven by a Complainant to obtain relief. These elements are: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect to 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 It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0"), section 1.7. The Complainants have presented evidence of ownership of the trademark ALDI in jurisdictions throughout the world, by presenting international registrations for it, as well as comprehensive evidence of the use of the trademark to identify the original services. Further, the Panel finds that the disputed domain name is confusingly similar to the trademark belonging to the Complainants, since this mark is entirely reproduced in the disputed domain name registered by the Respondent with the addition of the term "deals". According to WIPO Overview 3.0 section 1.8, 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. In addition, it is well established that ".com", as a generic Top-Level Domain, can be disregarded in the assessment of the confusing similarity between the disputed domain name and the Complainant's mark WIPO Overview 3.0, section 1.11.1. Hence, the Panel concludes that the first element of the Policy has been satisfied by the Complainant in this proceeding. B. Rights or Legitimate Interests Given the clear evidence that the trademark ALDI is registered in the Complainant's name and is widely known as identifying the Complainant's activities, and that the Complainant has not licensed its trademark to the Respondent, the Panel finds that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name. In the absence of a Response, the Respondent has not rebutted such prima facie case. Moreover, the combination of the Complainants' trademark with the term "deals" that is descriptive of the retail industry within which the Complainants operate, carries a risk of implied affiliation and thus such composition cannot constitute fair use. WIPO Overview 3.0, section 2.5.1. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Thus, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name. For this reason, the Panel believes that the Complainants have satisfied the second element of the Policy. page 4 C. Registered and Used in Bad Faith Given the circumstances of this case, the facts outlined in sections A and B above can also evidence the Respondent's bad faith in the registration and use of the disputed domain name. The disputed domain name was registered to clearly mislead Internet users - hence the addition of the descriptive word "deals" to the trademark that is famous in the retail industry. The Respondent intended to give an overall impression that the disputed domain name is associated with the Complainant, and the Panel accepts that the disputed domain name may have been intended to use the Complainant's renowned trademark for unlawful purposes. While the disputed domain name has not been used, such passive holding does not prevent a finding of bad faith given the totality of the circumstances present here, namely the fame of the Complainant's trademark and the composition of the disputed domain name. WIPO Overview 3.0, section 3.3. The Panel finds that the Complainant has also proved the third element 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. /Alvaro Loureiro Oliveira/ Alvaro Loureiro Oliveira Sole Panelist Date: January 18, 2024
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