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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aldi GmbH & Co. KG and Aldi Stores Limited v. Erald Meziu

Case No. D2017-1400

1. The Parties

The Complainants are Aldi GmbH & Co. KG of Mulheim an der Ruhr, Germany and Aldi Stores Limited of Warwickshire, United Kingdom of Great Britain and Northern Ireland ("United Kingdom") represented by Freeths LLP, United Kingdom.

The Respondent is Erald Meziu of London, United Kingdom, self-represented.

2. The Domain Name and Registrar

The disputed domain name, <aldiconstruction.com> (the "Domain Name"), is registered with Ascio Technologies Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 20, 2017. On July 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 21, 2017, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2017. The Response was filed with the Center on August 22, 2017.

The Center appointed Tony Willoughby as the sole panelist in this matter on September 1, 2017. 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.

On September 5, 2017 the Panel issued Procedural Order No. 1 seeking further information from the Respondent. The Respondent responded in timely fashion on September 8, 2017. The Complainant did not submit any response. The Procedural Order and the Respondent's response thereto are discussed in section 6.C below.

4. Factual Background

The Complainants are respectively the owner of the ALDI brand and the United Kingdom licensee. They have a common interest in this dispute and for the purposes of this decision the Panel treats them as one and uses the term "Complainant" to refer to each of them.

The Complainant owns and operates one of the largest supermarket businesses in the United Kingdom. The Complainant's United Kingdom business under and by reference to the name "Aldi" commenced at least as early as the 1980s. The Complainant is the registered proprietor of a large number of trade mark registrations for the ALDI trade mark, including by way of example United Kingdom Registration No. 2,250,300 registered March 30, 2001 (application filed October 26, 2000) ALDI (word) for a wide variety of goods and services in classes 1, 3, 5, 6, 11, 16, 21, 24, 25, 29, 30, 31, 32, 33, 34 and 35.

The Complaint correctly identifies the Respondent as the individual whose name appears in the heading, he being the registrant of the Domain Name appearing in the Registrar's WhoIs database. The Respondent is the owner and director of Aldi Construction Limited, a London-based company incorporated on January 3, 2017. The Response identifies that company as a co-respondent.

The Domain Name was registered on January 17, 2017 and is connected to a website offering construction services.

On April 5, 2017 Aldi Construction Limited filed United Kingdom trade mark application No. 3,223,078 for registration of the trade mark ALDI CONSTRUCTION (words) in class 37 for construction services.1

5. Parties' Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the Complainant's ALDI registered trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith.

B. Respondent

The Respondent denies the Complainant's contentions. He points to the differences in the names, the differences in appearance of the parties' websites and the differences in the parties' areas of activity. He asserts that there is no likelihood of confusion. He points to the fact that the Domain Name is substantially identical to the name of his company, Aldi Construction Ltd, and he further asserts: "… and further more my name is 'ALDI' which I am known by and it derives from my full first name ERALD'i and is used as for short ALDI that's the name I am known and called since 1985 …".

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

B. Identical or Confusingly Similar

The Domain Name comprises the Complainant's trade mark, ALDI, the descriptive word "construction" and the ".com" generic Top-Level Domain ("gTLD") identifier. It being permissible for panels to ignore the gTLD identifier where, as here, it serves no purpose other than the technical one, the comparison is between "aldiconstruction" and ALDI.

The test for identity or confusing similarity under this element of the Policy is dealt with in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), a key paragraph of which reads as follows:

"While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing."

In this case, there being no factor militating against that approach, the Panel adopts it here and finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights

C. Rights or Legitimate Interests

The nature of the assessment required to be made under paragraph 4(a)(ii) of the Policy is dealt with in section 2.1 of WIPO Overview 3.0, the relevant extract of which reads as follows:

"While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

To demonstrate rights or legitimate interests in a domain name, non-exclusive respondent defences under UDRP paragraph 4(c) include the following:

(i) before any notice of the dispute, the respondent's 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial 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."

In establishing to the satisfaction of the Panel that "Aldi" is a household name in the United Kingdom and that there are contexts in which "Aldi" in conjunction with "construction" could readily bring the Complainant to mind (e.g., the fact that Aldi constructs many of its sites), the Panel is satisfied that the Respondent will have registered the Domain Name and his company name in the sure knowledge that for people living in the United Kingdom the name "Aldi Construction" would be likely at the very least to bring the Complainant to mind. Indeed, in the view of the Panel any commercial name (corporate name, business name or domain name) commencing with the distinctive name, "Aldi", is likely to bring the Complainant to the minds of most United Kingdom consumers. The Panel finds that the Complainant has made out a prima facie case calling for an answer from the Respondent.

The Respondent has provided an answer. He contends that the Domain Name is the name of his company, Aldi Construction Ltd., and that he is using the Domain Name in good faith in relation to the service offering provided by his company. That, of itself, is not a complete answer. What was his justification for selecting the name "Aldi" as part of the corporate name of his company?

His answer to that one, but without any supporting evidence, is that he is and has since 1985 (the year of his birth) been known as "Aldi", it being an abbreviation of his original full first name "Erald'i". If that could be established, then it is just possible that he might be able, for the purposes of paragraph 4(c) of the Policy, to establish that he had a legitimate interest. At all events, the Panel was ready to give him the opportunity to do so and issued Procedural Order No. 1 in the following terms:

"The Panel has reviewed the submissions from the parties in this case. The Panel notes that the Respondent states in the Response "… and further more my name is "ALDI" which I am known by and it derives from my full first name ERALD'i and is used as for short ALDI that's the name I am known and called since 1985 …".

If the Respondent wishes to rely upon that statement, the Panel requests that he support it (a) by producing evidence (extracts from passport, birth certificate, etc.) to demonstrate that ERALD'i is his "full first name" and (b) by producing evidence to show that since the 1980s he has been known as "ALDI"."

In response to Procedural Order No. 1 the Respondent simply submitted a copy of his passport indicating that his name is as set out in the heading to this decision. There is no reference to "Erald'i" and he has submitted no evidence to demonstrate that he has ever been known as "Aldi" which could in principle have justified his choice of business name.

In the absence of a properly supported answer to the Complainant's prima facie case, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

For completeness the Panel observes that the Respondent's trade mark application (like its business name), of itself, gives rise to no rights.

D. Registered and Used in Bad Faith

Using without permission the trade mark of another in the course of trade may or may not constitute trade mark infringement, but that is not a question calling for a determination here. The issue in this case is as to whether or not the Respondent selected the Domain Name in bad faith and is using it in bad faith. Did he select it without justification, knowing it to feature prominently the trade mark of the Complainant and with a view to trading off the fame of the Complainant?

The Respondent says that he had every justification for selecting the Domain Name. He says that "Aldi" is the name by which he has been known since birth. He has used "Aldi" as part of the corporate name of his construction company and has applied to register ALDI CONSTRUCTION as a trade mark. He observes that his business and that of the Complainant lie in very different fields (respectively construction and retail sale of food etc.) and none of the Complainant's trade marks cover his field of activity. He says that there is no sensible risk of confusion.

The Panel can appreciate that whether or not the Respondent's adoption and use of the name "Aldi Construction" constitutes trade mark infringement, somebody such as the Respondent known from birth as "Aldi" might honestly and reasonably believe that he could lawfully use his name for a construction company operating in a quite different field from a supermarket chain operating under the "Aldi" name. In such circumstances, it might be harsh to conclude that he was acting in bad faith.

In this case, however, and recognizing the possibility that the Respondent might be able to justify his selection and use of the Domain Name, the Panel gave the Respondent the opportunity by way of Procedural Order No. 1 (see section 6.C above) of making good that claim by providing evidence in support. He has not done so. Indeed, the only hint of an argument in that direction is the Respondent's email address, which features the name "aldii"; but, significantly, "aldii" is not the same as "aldi".

The Panel infers from the failure of the Respondent to come up with any supporting evidence to demonstrate that he has been known as "Aldi" since birth, that his claim has no substance and that the story was fabricated in an attempt to defeat the Complaint.

In consequence the Panel finds on the balance of probabilities that, as the Complainant contends, the Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) 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 Domain Name, <aldiconstruction.com>, be transferred to the Complainant.

Tony Willoughby
Sole Panelist
Date: September 22, 2017

1 Based on the Respondent's claims, the Panel has conducted an independent search in the United Kingdom Intellectual Property Office database available at "https://www.gov.uk/search-for-trademark".

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