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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ALDI GmbH & Co. KG v. Mahfuz Ali

Case No. D2016-0485

1. The Parties

Complainant is ALDI GmbH & Co. KG of Mülheim, Germany, represented by Schmidt, Von der Osten & Huber, Germany.

Respondent is Mahfuz Ali of Newcastle Upon Tyne, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <aldi.wales> is registered with Mesh Digital Limited (the "Registrar").

3. Procedural History

Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 10, 2016. On March 10, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 11, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 6, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 7, 2016.

The Center appointed Richard Hill as the sole panelist in this matter on April 13, 2016. 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

Complainant has rights in the mark ALDI, including German trademark no. 1913288 ALDI, registered on January 26, 1981. The mark is famous.

Complainant did not license or authorize Respondent to use its mark.

The disputed domain name was registered in 2015.

The disputed domain name is not being used.

5. Parties' Contentions

A. Complainant

Complainant states that it is a member of the world-wide acting ALDI Group of companies which is an international leader in grocery retailing with over 9,500 stores across the world. Complainant has been using its ALDI trademark in Germany and elsewhere since 1946 and operates in the field of grocery as well as in the field of non-food articles. Furthermore, Complainant is also engaged in the field of real estate and travel arrangements. Complainant registered its ALDI trademark in 1981 in Germany, and subsequently in numerous other countries. The mark is famous.

According to Complainant, the disputed domain name contains Complainant's registered and well-known trademark ALDI its entirety and this is sufficient to establish confusing similarity under the Policy. Complainant cites prior UDRP cases to support its position.

Complainant alleges that Respondent has no rights or legitimate interests with respect to the disputed domain name. Respondent makes neither use of the word "aldi" as a trademark, nor has he been commonly known by the disputed domain name or by conducting any activity under this name, nor is he holding any better trademark rights or other better rights ALDI in the United Kingdom or elsewhere. Respondent is in no way associated with Complainant's business and does not have any rights or legitimate interest in that name. Respondent has never corresponded with Complainant with respect to the use of Complainant's corporate name or marks. Respondent's name does not incorporate the disputed domain name. Respondent is not using the disputed domain name. Complainant cites prior UDRP cases to support its position.

Further, says Complainant, the disputed domain name was registered and is being used in bad faith. Complainant has built up a substantial reputation in its trademark ALDI, particularly in the grocery field. It is not conceivable that Respondent would not have had actual notice of Complainant's trademark rights at the same time of the registration of the disputed domain name – especially having further in mind that in October 2014 Complainant recorded its mark ALDI in the Trademark Clearinghouse (associated with ICANN's New gTLD Program) in order to benefit from both the Sunrise Services and the Claims Notification Services. Respondent registered the disputed domain name in 2015. The disputed domain name is not being used, but this does not preclude a finding of bad faith use under the Policy. Complainant cites prior UDRP cases to support its position.

In summary, says Complainant, (i) Complainant's trademark has a strong reputation and is widely known, (ii) it is not possible to conceive of any plausible actual or contemplated active use of the domain name by Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation (e.g. prohibition of misleading), or an infringement of Complainant's rights under trademark law, (iii) prior to initiation of the URDP proceeding, Respondent has not reacted to an e-mail of Complainant despite several reminders, (iv) Respondent cannot have ignored Complainant's trademark at the time of registration and (v) there are no indications of any good faith use of the disputed domain name. Therefore Complainant comes to the conclusion that Respondent registered and used the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name contains Complainant's registered and well-known trademark ALDI its entirety, and the fact that a domain name wholly incorporates a complainant's registered mark is generally sufficient to establish identity or confusing similarity for the purposes of the Policy. See Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249. Further, the generic Top-Level Domain ("gTLD") ".wales" combined with the well-known trademark ALDI is likely to be understood by Internet users as referring to ALDI geographically located in Wales or near to it. As a result, the Panel finds the gTLD ".wales" does not exclude confusing similarity between the Complainant's trademark ALDI and the disputed domain name but actually increases the confusing similarity in the case at hand. See Volkswagen AG v. Jan-Iver Levsen, WIPO Case No. D2015-0069.

The Panel finds that Complainant has satisfied its burden of proof for this element of the Policy.

B. Rights or Legitimate Interests

Respondent has not been licensed or otherwise authorized to use Complainant's mark. There is no evidence in the file to indicate that Respondent is commonly known by the disputed domain name. The disputed domain name is not being used. As Complainant has made out an unrebutted prima facie case, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.

The Panel finds that Complainant has satisfied its burden of proof for this element of the Policy.

C. Registered and Used in Bad Faith

Respondent (who did not reply to Complainant's contentions) has not presented any plausible explanation for his use of Complainant's famous mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent's failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.

As already stated, the disputed domain name is not being used. According to paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), "[p]anels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa".

In the present case, Complainant's mark is famous and there has been no response to the Complaint. The disputed domain name associates Complainant's famous mark with a geographical indicator, the gTLD ".wales", which could lead Internet users mistakenly to believe that the disputed domain name is associated with Complainant's activities in that region. In light of these circumstances, the Panel finds that, in this particular case, a finding of bad faith registration and use can be inferred even though the disputed domain name is not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Panel finds that Complainant has satisfied its burden of proof for this 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 <aldi.wales> be transferred to Complainant.

Richard Hill
Sole Panelist
Date: April 20, 2016

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