WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aldi GmbH & Co. KG , Aldi Stores Limited v. Milen Radumilo

Case No. D2021-0470

1. The Parties

The Complainants are Aldi GmbH & Co. KG, Germany and Aldi Stores Limited, United Kingdom, represented by Freeths LLP, United Kingdom.

The Respondent is Milen Radumilo, Romania.

2. The Domain Name and Registrar

The disputed domain name <likealditellaldi.com> is registered with Godomaingo.com LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2021. On February 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 17, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on February 17, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. In response to this invitation and a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amended Complaint on February 19, 2021.

The Center verified that the Complaint together with the amended 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 February 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2021.

The Center appointed Benjamin Fontaine as the sole panelist in this matter on April 13, 2021. 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 Complainants in this case are Aldi GmbH & Co. KG, and Aldi Stores Limited: the first one is the registered owner of the trade marks which are claimed as a basis for the Complaint, and the second one is the British subsidiary and licensee of the first one.

The Complainants operate a major chain of supermarkets, which is very present and renowned in the United Kingdom, among other territories. In this country, it employs more than 38,000 employees, and its global turnover in 2019 exceeded GBP 12 billion. According to a 2018 Yougov brand Index, the Complainants are “the most popular and the most famous supermarket chain” in the United Kingdom.

As a basis for their Complaint, the Complainants rely on numerous trade mark rights, including the European Union trade mark ALDI (word) No. 1954031 and the UK trade mark ALDI (word) No. 901954031, both filed on November 15, 2000 and registered on April 2, 2002.

The disputed domain name <likealditellaldi.com> was registered on February 18, 2019 and resolves to a parking page using pay-per-click (“PPC”) links. In the course of the proceeding, the Registrar disclosed the identity of the Respondent, apparently an individual domiciled in Romania.

5. Parties’ Contentions

A. Complainants

In essence, the Complainants argue as follows:

On the first element of the Policy, they indicate that the disputed domain name reproduces the trade mark ALDI twice, along with the words “like” and “tell”, “which enhances confusion as it suggests that the Domain will host a webpage relating to goods or services which are specifically sold by the Complainants”. The Complainants also add that “an inference is drawn that any website hosted at the Domain will be a website that is operated by or with the consent of the Complainants. In consequence, most individuals navigating to the Domain will be expecting to reach a website operated by, or at the least associated with, the Complainants”. It also states that the overall construction of the disputed domain name enhances the confusing similarity with its trade marks.

On the second element of the Policy, the Complainants indicate that their rights over the trade marks ALDI predate the registration of the disputed domain name by the Respondent. They add that they have not licensed or otherwise authorized the Respondent to use their trade marks, and that the Respondent is not making any bona fide offering of goods or services.

On the third and final element of the Policy, the arguments of the Complainants are twofold:

Regarding the registration of the disputed domain name in bad faith, the Complainants claim that “On the basis of these prior rights to the ALDI trade mark (and similar signs and marks) and in view of the presence of the ALDI trade mark in the [disputed domain name], it is inevitable that Internet users will be confused into believing that the Domain has some form of association with the Complainants. The registration of the [disputed domain name] therefore took unfair advantage of the Complainants’ rights. On this basis alone, the Complainants consider the registration of the [disputed domain name] to be in bad faith”.

Regarding the use of the disputed domain name in bad faith, the Complainants state in particular that the disputed domain name is used or planning to be used to attracts Internet users for commercial gain, by crating a likelihood of confusion with the trade marks ALDI. It adds that the incorporation of the words “like” and “tells enhances such confusion, “as to the source of the [disputed domain name] and what kind of website will be hosted there”. The Complainants also mention the hypothesis of the disputed domain name being offered for sale to the Complainants at a price significantly higher than the cost of registration.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainants prove all of the following three elements in order to be successful in these proceedings:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainants, under the first requirement of paragraph 4(a) of the Policy, need to establish that the disputed domain name is confusingly similar to a trade mark or a service mark in which they have rights.

It is generally accepted that the test of confusing similarity is reasonably straightforward and functions primarily as a standing requirement. As stated in WIPO Overview 3.0, section 1.7, “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”.

The disputed domain name is <likealditellaldi.com>. When seen alone and without conducting any analysis, the trade mark ALDI of the Complainants may not be immediately perceived. This is so because all the components of this disputed domain name are stuck together without spacing, and to some extent because this trade mark is not reproduced in first position. At the same time, a further review of the disputed domain name allows one to see the first word is “like” and from there to decipher the expression “Like Aldi, Tell Aldi”. This is true especially for the English-speaking community

The Panel considers that the disputed domain name incorporates the entirety of the trade mark ALDI twice, and is therefore recognizable within the disputed domain name.

Therefore, this Panel is prepared to accept that the disputed domain name is confusingly similar with the trade mark ALDI of the Complainants.

Accordingly, the Panel finds that the first element of the Policy is satisfied.

B. Rights or Legitimate Interests

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the burden of production shifts to the respondent of demonstrating rights or legitimate interests in the disputed domain name with the burden of proof always remaining on the complainant. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

In this case, the Complainants have argued that the Respondent is not commonly known by the disputed domain name, and has not been authorized by them to register and use the disputed domain name. The Panel also notes that the disputed domain name is not used in connection with a bona fide offering of goods or services.

The Panel also notes that given the composition of the disputed domain name, using the Complainant’s mark twice, and indeed capturing their slogan (as to which, see below), the disputed domain name carries a high risk of implied affiliation. See generally WIPO Overview section 2.5.1.

Accordingly, and based on the facts and arguments set out herein, and absent specific allegations of a legitimate interest by the Respondent, the Panel finds that the Complainants have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In order to prevail under the third element of paragraph 4(a)(iii) of the Policy, the Complainants must demonstrate that the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:

(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or

(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trademark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.

The Panel notes that while the Complaint contains a number of documents which are useful for the assessment of its merits, such as evidence regarding the Complainants and their rights, as well as the reputation of the trade mark ALDI, overall the arguments put forward in the Complaint are scarce.

It is clear to this Panel however that the Respondent had specifically the Complainants in mind when configuring the disputed domain name.

According to the limited research conducted by the Panel (see WIPO Overview 3.0, section 4.8), it appears that the Complainants are making use of the slogan “Like Aldi, tell Aldi” as part of a promotional campaign aimed as its British customers. (Of course it would have been wise for the Complaint itself to have mentioned this.) The slogan is prominently displayed in its United Kingdom website, hosted at “www.aldi.co.uk”. It is also worth noting that the Complainants have registered and are using a domain name <tellaldi.com> in support of this promotional campaign: when accessing this website customers of the Complainants may win vouchers in exchange for providing their input on their purchasing experience.

Of course, registering the slogan used by the Complainants, in which the trade mark ALDI is reproduced twice, amounts to bad faith registration: by doing so, the Respondent is clearly attempting to attract the consumers of the Complainants by creating a likelihood of confusion, possibly to conduct fraudulent activities such as phishing, or simply to benefit from a PPC scheme.

And indeed, the Panel notes that the disputed domain name has apparently been used for some time for a PPC scheme. This is bad faith use, in which the Respondent obtains a benefit deriving from the confusing created with the Complainants’ trade mark ALDI.

Bad faith registration and use is therefore established, in accordance with Paragraph 4(b)(iv) of the Policy.

Finally, additional verifications performed by the Panel (again, which should have been raised by the Complainant) reveal that the Respondent is regularly involved in UDRP proceedings and has been found to be acting in bad faith on numerous occasions. The Respondent was involved in particular in the following cases: Littlethings, Inc. v Milen Radumilo, WIPO Case No. D2017-0745, Carrefour SA, v Milen Radumilo, WIPO Case No. D2020-1107, Accenture Global Services Limited v Contact Privacy Inc., Customer 0157756560, / Milen Radumilo, WIPO Case No. D2020-1507, Sodexo v. Super Privacy Service LTD c/o Dynadot / Milen Radumilo, WIPO Case No. D2020-2192, Vente-privee.com et Vente-privee.com IP S.à.r.l. v Contact Privacy Inc. Customer 0150838655 / Milen Radumilo, WIPO Case No. D2018-2212, Carrefour v. Contact Privacy Inc. Customer 0153830825 / Milen Radumilo, WIPO Case No. D2019-1591.

This pattern of conduct confirms the bad faith of the Respondent, as per Paragraph 4(b)(ii) of the Policy.

Accordingly, the Panel finds that the third element set out in paragraph 4(a) of the Policy is also satisfied.

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 <likealditellaldi.com> be transferred to the Complainants, and more precisely to the first Complainant, Aldi GmbH & Co. KG, as requested in the Complaint.

Benjamin Fontaine
Sole Panelist
Date: April 27, 2021