WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ALDI GmbH & Co. KG, v. Web Advertising, Corp.
Case No. D2007-1066
1. The Parties
The Complainant is ALDI GmbH & Co. KG, Burgstrasse Mülheim, Germany, of Germany, represented by Schmidt, Von der Osten & Huber, Germany.
The Respondent is Web Advertising, Corp., Kings Court, Nassau, Bahamas, of Bahamas.
2. The Domain Name and Registrar
The disputed domain name <aldi-sued.org> is registered with DomainDoorman, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2007. On July 20, 2007, the Center transmitted by email to DomainDoorman, LLC a request for registrar verification in connection with the domain name(s) at issue. On July 26, 2007, DomainDoorman, LLC 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 Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 31, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 24, 2007.
The Center appointed R. Eric Gaum as the sole panelist in this matter on September 28, 2007. 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 is the owner of the following trademark registrations for the word mark ALDI:
Trademark EU 001954031 ALDI, registered 02.04.2002
Trademark EU 002071728 ALDI, registered 14.04.2005
Trademark EU 003639408 ALDI, registered 19.04.2005
Trademark EU 002714459 ALDI, registered 05.09.2003
Trademark IR 870876 ALDI, registered 11.08.2005
Trademark IR 842757 ALDI informiert, registered 01.10.2004
Trademark DE 10 399 10 ALDI, registered 20.10.1982, renewed 27.03.2002
Trademark DE 11 69 951 ALDI, registered 20.12.1990, renewed 01.10.1998
Trademark DE 303 34 612 ALDI informiert, registered 25.11.2003
Trademark DE 305 667 02 ALDI TALK, registered 14.03.2006
Trademark DE 303 346 13 Das ALDI-Prinzip Qualität ganz oben – Preis ganz unten, registered 14.11.2003
Trademark DE 305 102 35 ALDI, registered 25.11.2005
Trademark DE 2052967 ALDI, registered 28.12.1993
Trademark DE 1013288 Aldi, registered 26.01.1981
5. Parties’ Contentions
The Complainant is an international leader in grocery retailing with over 5,000 stores across the world. The Complainant has a presence in Germany (1,600 stores), Great Britain (300 stores) and Ireland as well as in the United States (750 stores in more than 26 states) and in Australia (more than 100 stores). In Germany three out of four households buy at the Complainant.
The Complainant contends that it has been using its ALDI trademark in Germany and elsewhere since 1946.
The Complainant enters the market under the designation ALDI SÜD and uses the emblem with the wording “ALDI SÜD”. The Complainant uses this emblem on his Internet presence as well as on its note papers. According to art. 5, para. 1 of the German Trade law, business names are protected in the same way as registered trademarks.
The domain name <aldi-sued.org> incorporates the Complainant’s trademark ALDI and is identical to his business name “ALDI SÜD”. The Complainant uses the domain name, <aldi-sued.com>. Therefore, the domain name is identical to the trademark and the business name in which the Complainant has rights.
The Respondent has no rights or legitimate interests with respect to the domain name. The “ALDI” word was created by the Complainant in conjunction with its business and, through both the trademark registration and public usage, the name has become unequivocally associated with the Complainant and its business activities. The Respondent is in no way associated with the Complainant’s business and does not, either through his own name or any associated company name, have any rights or legitimate interest in that name.
Furthermore, the Respondent has never corresponded with the Complainant with respect to the use of the Complainant’s corporate name or marks. The Respondent’s name does not incorporate the disputed domain name.
In addition to this, the use of the Respondent makes of the domain name, which resolves to websites that offer information and sponsored links to other websites concerned with the grocery business, does not reveal legitimate noncommercial use but rather the opposite: an attempt to derive benefit from the close resemblance between the domain name and the trademark and goodwill of the Complainant. Thus, it is obvious that the domain name <aldi-sued.org> is only used by the Respondent in order to lead consumer to other websites offering online various products and/or services to consumers or is used in order to make money out of advertising.
The domain name was registered and is being used in bad faith. First of all, the Complainant has build up a substantial reputation in its trademark ALDI and in its business name “ALDI SÜD”, particularly in the grocery field. As mentioned before, in Germany three out of four households buy at the Complainant. In German speaking countries the trademark ALDI is well known by 100%.
Second, the Complainant also uses domain names like <aldi-sued.com> and <aldi.de> and <aldi.org> and <aldi.com>. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcends national boarders. Therefore, it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the same time of the registration of the domain name.
Third, it has to be pointed out that it is not the first time that an UDRP proceeding is initiated against the Respondent. As of 2007, at least 4 administrative proceedings were made against the Respondent in quite similar cases. Insofar we refer to Mr. Didier Guérin and Didier Guérin SAS v. Web Advertising, Corp., WIPO Case No. D2007-0247, Riello S.p.A. v. Web Advertising, Corp., WIPO Case No. D2007-0314, SurePayroll, Inc. v. Web Advertising, Corp., WIPO Case No. D2007-0470 and Sanofi-Aventis and Aventis, inc. v. Web Advertising, Corp. and Keyword Marketing, Inc., WIPO Case No. D2007-0678.
As of 2006, at least 5 administrative proceedings were also made against the Respondent. Insofar we refer to Fifth Third Bancorp v. Web Advertising, Corp., WIPO Case No. D2006-1225, Boehringer Ingelheim Pharma GmbH & Co. KG v. Web Advertising, Corp., WIPO Case No. D2006-1244, SANOFI-AVENTIS v. Web Advertising, Corp., WIPO Case No. D2006-1273, Edmunds.com, Inc. v. Web Advertising, Corp., WIPO Case No. D2006-1380 and Credit Industrial et Commercial S.A. v. Web Advertising, Corp., WIPO Case No. D2006-1418.
In each of these previous proceedings the panels have ordered the transfer of the disputed domain names after finding bad faith on the part of the Respondent. The Respondent “grabbed” a famous and well reputed domain name in order to attract Internet users to the Respondent’s website or other online locations by creating a likelihood of confusion with the Complainant’s mark.
The complainant further contends that the disputed domain name is not only registered in bad faith but also used by the Respondent in bad faith. The fact that the disputed website “www.aldi-sued.org” hosts sponsored links, and when one clicks on any of these links one is automatically directed to other websites which are offering to sell online to the consumers various products and services, clearly demonstrates that the disputed domain name is used by the Respondent in order to generate money on every click made on the sponsored links. There is no doubt that by using the domain name <aldi-sued.org> in such a way, the Respondent is intentionally attempting to attract for financial gain, Internet users to the above mentioned website or other online locations by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the registrant’s websites or locations or of a product or service on the Respondent’s websites or location.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 The Uniform Domain Name Dispute Resolution Policy (the “Policy”), adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
6.2 It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
6.3 WIPO forwarded notification of the complaint to the Respondent via post/courier, facsimile, and email in accordance with the contact details found in the appropriate WHOIS database. WIPO also forwarded notification of default to the Respondent via email.
6.4 Based on the methods employed to provide the Respondent with notice of the complaint and default the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings. The Panel also finds that the failure of the Respondent to furnish a reply is not due to any omission by WIPO.
6.5 Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements is present.
6.6 As the Respondent has failed to submit a response to the complaint, the Panel may accept as established all reasonable factual allegations of the complaint. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009, February 29, 2000.
A. Identical or Confusingly Similar
6.7 Based upon the registrations for the trademark for ALDI and the continuous use of the mark, the Complainant clearly has rights in the mark.
6.8 Complainant asserts that the domain name <aldi-sued.org> incorporates the Complainant’s trademark ALDI and is identical to its business name “ALDI SÜD.”
6.9 The Panel agrees with the Complainant that the domain name <aldi-sued.org> is confusingly similar to the ALDI trademark.
6.10 The Panel finds the <aldi-sued.org> domain name is confusingly similar to the registered trademark ALDI, and that the Complainant has established it has rights in the mark ALDI, pursuant to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.11 Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the Panel shall demonstrate the Respondent's rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii). In particular, paragraph 4(c) states:
(i) before any notice to you [Respondent] 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.
6.12 There is no evidence in the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain name <aldi-sued.org>.
6.13 The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name <aldi-sued.org> pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.14 Paragraph 4(b) of the Policy lists several factors, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In particular, paragraphs 4(b)(ii) and (iv) state:
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
6.15 Based on the Respondent’s history of UDRP violations it clearly has engaged in a pattern of registering domain names in order to prevent the owner of the trademark or service mark from reflecting their marks in corresponding domain names.
6.16 Furthermore, the Respondent is clearly attempting to attract for financial gain, Internet users to the website “www.aldi-sued.org”, which provides a number of sponsored links to other websites.
6.17 The Panel finds the Complainant has established that the Respondent registered and used the domain name <aldi-sued.org> in bad faith, pursuant to paragraph 4(b)(ii) and (iv) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <aldi-sued.org> be transferred to the Complainant.
R. Eric Gaum
Dated: October 16, 2007