WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ALDI GmbH & Co. KG v. bestview GmbH netsolutions
Case No. D2011-1383
1. The Parties
The Complainant is ALDI GmbH & Co. KG of Mülheim, Germany represented by Rechtsanwälte Schmidt, von der Osten & Huber, Germany.
The Respondent is bestview GmbH netsolutions of Uster, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <aldi-discount.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2011. On August 15, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On August 15, 2011, Tucows Inc. 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” 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 15, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2011.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on September 22, 2011. 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 numerous trademark registrations for the word mark ALDI, inter alia European Union Community Trade Mark registration Nos.: 001950431; 002071728; 003639408; 002714459; and International Trademark Registration Nos.: 870876; and 842757 as well as German registrations. The trademark ALDI is registered in relation to a large number of goods and services.
The disputed domain name was registered on February 4, 2011.
5. Parties’ Contentions
The Complainant belongs to a corporate group that operates a large number of supermarkets around the world, under the registered trademark and business name ALDI, and has done so since 1946. The Complainant has more than 4000 stores in Germany alone, as well as more than 1000 in the United States of America (“US”), hundreds in each of Belgium, the Netherlands, the United Kingdom of Great Britain and Northern Ireland, Spain, France and Denmark and some in other countries.
The Complainant asserts that the disputed domain name is highly similar to its trademark ALDI. The addition of “discount” is not apt to distinguish the disputed domain name from the Complainant’s mark. The addition of generic terms such as “discount” has on numerous occasions been found by UDRP panels to be insufficient to distinguish a domain name from a complainant’s mark, certainly where that mark is incorporated in its entirety into the domain name as is the case here.
Further, the Complainant itself operates discount supermarkets, a fact that further reinforces the confusing similarity between the Complainant’s ALDI trademark and the disputed domain name including the word “discount”. The Complainant contends that, considering the fame of the ALDI trademark, an Internet user is likely to infer a legitimate connection between the disputed domain name and the Complainant, which does not in fact exist.
Further, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The mark ALDI has become unequivocally associated with the Complainant’s business, with which the Respondent has no association. The Respondent’s name does not incorporate the disputed domain name. The Respondent has not corresponded in any way with the Complainant.
Further, the Complainant points out that the disputed domain name resolves to a website with an advertisement and links to a webpage where website construction services are offered. This, the Complainant alleges, does not amount to legitimate noncommercial use but rather an attempt to derive benefit from the close resemblance between the disputed domain name and the Complainant’s ALDI trademark. The Complainant contends that it is obvious that the disputed domain name is used to lead consumers to another website which is used to offer services to consumers for reward or to make money out of advertising in the form of click-through revenue. Such use cannot, according to the Complainant, give rise to rights or legitimate interests in the Respondent.
Further the Complainant asserts that the ALDI trademark is one of the most well-known trademarks in Germany with a substantial reputation above all in the field of grocery supplies. The Complainant also asserts that it operates a number of domain names such as <aldi.com> and <aldi.org>, and in the Internet age, the reputation of the Complainant thus transcends national borders. The Complainant contends that the Respondent “grabbed” a well-known domain name to attract Internet users to its website or other online location by creating a likelihood of confusion with the Complainant’s trademark.
Further the Complainant contends that the disputed domain name is used in bad faith because clicking on an advertisement on the webpage to which the disputed domain name resolves takes the Internet user to a website offering internet services. This indicates that the disputed domain name is used to generate revenue for the Respondent from every click on the relevant advertisement. Thus the Respondent is intentionally attempting to attract for financial gain, Internet users to the abovementioned website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites or locations or of a product or services there offered.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant’s trademark ALDI. However, the additional inclusion of the generic term “discount” does not distinguish the disputed domain name from the Complainant’s trademark and business name. Panels have repeatedly held that the addition of a generic term is not sufficient to avoid a finding of confusing similarity. In this case, given that the Complainant operates thousands of discount supermarkets under the mark ALDI the addition of the generic term “discount” is even less likely to dispel the impression of an official connection between the Complainant and the disputed domain name. The Complainant’s ALDI trademark is entirely distinctive and the combination of that term with the term “discount” evokes nothing other than an association with the Aldi supermarkets business.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s ALDI trademark.
B. Rights or Legitimate Interests
The Respondent is not known by the disputed domain name or by the term “Aldi”. That term does not form part of its business or corporate name. The Respondent has not received any authorization from the Complainant to use the trademark ALDI or to register a domain name incorporating that trademark.
Further, registering a domain name incorporating a well-known mark belonging to another party, for the purpose of attracting Internet users and then guiding them to a website offering services for reward, or gaining revenue from click-through licenses, does not give rise to legitimate rights or interests. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant’s ALDI trademark is very well-known. The Complainant operates thousands of supermarkets under that business name and trademark. The term ALDI has no inherent meaning and is very distinctive. The reputation of the mark is not limited to one country but is widespread in Europe and also in the US and in Australia. Further, the incorporation of the term “discount” in the disputed domain name reinforces the inference that it was deliberately chosen and registered with full knowledge of the Complainant’s reputation. The Respondent has no legitimate connection, authorization or right to use or register the disputed domain name incorporating the Complainant’s distinctive mark.
Further, the disputed domain name resolves to a website where Internet users can click on an advertisement which will take them to a web page where services are offered. In the circumstances it can be inferred that the Respondent stands to gain financially in one way or another from the use it makes of the disputed domain name. It is thus profiting or intending to profit from the adoption of a famous mark in which it has no rights, by generating a misleading impression of some legitimate connection between the disputed domain name and the Complainant. The way it has constructed the disputed domain name further supports the conclusion that its real designs are to profit from the unauthorized use of the Complainant’s trademark and the reputation that adheres to it.
Therefore the Panel holds that the disputed domain name was registered and used in bad faith.
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 <aldi-discount.com> be transferred to the Complainant.
WiIliam A. Van Caenegem
Dated: October 5, 2011