The Complainant is ALDI Stores of Michinbury, New South Wales, Australia, represented by Cullens Patent and Trade Mark Attorneys , Australia.
The Respondent is Peter Gerard Colless of Brisbane, Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Crazy Domains Pty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2012. On December 11, 2012, the Center transmitted by email to Crazy Domains Pty Ltd a request for registrar verification in connection with the disputed domain name. On December 14, 2012, Crazy Domains Pty Ltd 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 verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2013. An informal email communication was filed with the Center on December 28, 2012.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on January 18, 2013. 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 facts relevant to the findings and decision in this case are that:
1. the Complainant is a limited partnership and part of an international group of businesses which sells groceries by reference to the trade mark ALDI (the “Trade Mark”);
2. the Trade Mark is, inter alia, the subject of Australian Trade Mark Registration. No. 783718 filed January 25, 1999;
3. the disputed domain name was registered on March 11, 2011;
4. at all times prior to filing of the Complaint, the disputed domain name was inactive;
5. there has been no commercial or other relationship between the parties and the Complainant has not authorized the Respondent to use the Trade Mark or to register any domain name incorporating the Trade Mark.
6. in reply to correspondence dated November 29, 2012 sent by the Complainant to the Respondent, the Respondent asked for AUD 2,000,000 in exchange for transfer of the disputed domain name to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant asserts rights in the Trade Mark and alleges that the disputed domain name is confusingly similar to the Trade Mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and/or is using the disputed domain name in bad faith. B. Respondent
The Respondent did not submit a formal Response.
As stated above, the Respondent sent an informal email communication to the Center on December 28, 2012. On January 3, 2013, the Center advised the Respondent that its email would be treated as a “complete and final response” to the Complaint if nothing more was received. Nothing more was sent by the Respondent by the specified Response date.
The December 28, 2012 email is non-compliant with the Rules and does not qualify as a formal Response however for reasons which emerge the Panel has taken note of its content and makes reference to it as required in the Discussion and Findings which follow. 6. Discussion and Findings
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact that the Respondent failed to submit a formal Response. According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) your domain name is identical or confusingly similar to a name, trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name ; and
(iii) (iii) your domain name has been registered or subsequently used in bad faith.
Having considered the Complaint and the available evidence, the Panel finds the following: A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy1. The Complainant provides evidence of registration of the Trade Mark and so the Panel is satisfied that it has trade mark rights in ALDI.
The remaining question is whether the disputed domain name is confusingly similar to the Complainant’s Trade Mark. For the purposes of testing confusing similarity, the country code Top Level Domain (“ccTLD”), “.”, can be ignored as trivial and of no distinguishing value.2 The terms then differ by the addition of the descriptive word “online”, being a wholly non-distinctive element and one which, if anything, only serves to increase the level of confusing similarity of the terms.
The Panel finds that the disputed domain name is confusingly similar to the Trade Mark. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests.3
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a disputed domain name:
“(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 publicly available WhoIs database identifies the registrant as Peter Gerard Colless which does not support any conclusion that the Respondent might be commonly known by the disputed domain name. There is no evidence that the Respondent has trade mark rights in the disputed domain name, registered or not. The disputed domain name is not in use. In response to the Complainant’s November 29, 2012 letter of demand, the Respondent wrote that it adopted the domain name because it was the coalescence of the words “Aldion Line”. That assertion was unsupported by any evidence other than a business name registration which the Panel considers on the available evidence in all likelihood was filed after the Respondent was on notice of the dispute. The Panel gives it no weight. The Complainant’s searches show that it failed to discover any use or registration by the Respondent of the expression “Aldion Line”.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Nothing in the Respondent’s informal submissions go any way to either satisfactorily address or rebut that prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy. C. Registered or Subsequently Used in Bad Faith
The Complainant stops short of labeling the Respondent a serial cybersquatter but goes far enough to provide evidence that the Respondent has in the past targeted known trade marks. It is unnecessary for this Panel to further consider whether that evidence shows a pattern of abusive conduct on the part of the Respondent for the purposes of the Policy since it is manifestly clear that bad faith conduct is shown in other ways. The Panel adds that representations made in correspondence from the Respondent, both in retort to the Complainant’s pre-Complaint letter of demand and in response to the Center’s notification of the Complaint, are utterly lacking in both credibility and evidentiary support.
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration or use of a domain name in bad faith. They are:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business or activities of another person; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location.”
This Panel finds, on the balance of probabilities, sufficient evidence to support a finding bad faith based on any one or more of Policy, paragraph 4(b)(i) – (iv) scenarios.
Were it necessary to rely only on paragraph 4(b)(iv) of the Policy, being the single scenario linked to the act of use rather than the act of registration, the Panel would readily find that the Complainant had shown common law trade mark rights and a substantial reputation in ALDI and that the reasoning first enunciated in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 applied to this case for the same reasons given then, namely, “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law”.
The evidence is virtually incontrovertible that the Respondent knew of the Complainant’s business and Trade Mark at the time it registered the disputed domain name. The Panel finds that the Respondent’s account of how it came to settle on the disputed domain name to be implausible and unsupported by any worthy evidence. Instead, the Panel finds on a balance of the evidence that the Respondent deliberately chose the disputed domain name so as to somehow benefit commercially from the notoriety of the Trade Mark. Those findings are enough to draw the conclusion that the Respondent’s registered the disputed domain name in bad faith.
Moreover, in terms of paragraphs 4(b)(i)-(iii) of the Policy, it can also be concluded on the balance of probabilities that:
- the demand for AUD 2,000,000 shows that the Respondent was actuated by the motives outlined in paragraph 4(b)(i) of the Policy;
- in view of the evidence that the Complainant’s business had come in recent years come to allow online order of groceries, the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting that name in a corresponding domain name (paragraph 4(b)(ii) of the Policy); and
- the Respondent registered the disputed domain name primarily for the purpose of disrupting the business or activities of the Complainant (paragraph 4(b)(iii) of the Policy).
The Panel finds that the Respondent (at least) registered the disputed domain name in bad faith and, accordingly, the Complainant has satisfied the third and final limb 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.
Debrett G. Lyons
Sole Panelist
Date: February 1, 2013
1 See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. 705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. 174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
2 See Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. 153545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
3 See Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828; AOL LLC v. Jordan Gerberg, NAF Claim No. 780200.
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