WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ALDI GmbH & Co. KG v. Emre Turizm Seyahat Ticaret Emlak A.S., Harun Demirci

Case No. D2014-0697

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 Emre Turizm Seyahat Ticaret Emlak A.S., Harun Demirci of Antalya, Turkey.

2. The Domain Name and Registrar

The disputed domain name <alditours.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 29, 2014. On April 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 1, 2014, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 4, 2014.

The Center appointed Assen Alexiev as the sole panelist in this matter on June 16, 2014. 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 a member of the ALDI Group - an international leader in grocery retailing, operating over 9,500 stores around the world. The ALDI Group is active in Germany and all over Europe, the United States of America and Australia. In Germany, three out of four households are customers of the ALDI Group. The Complainant is also active in the field of travel arrangements. It operates the websites "www.aldi-reisen.de" and "www.aldireisen.de", and publishes the monthly travel magazine ALDI REISEN in Germany and Switzerland with a distribution of about 1.8 million copies.

The Complainant is the owner of a number of trademark registrations for ALDI as a word trademark (the "ALDI trademark"), including:

- the Turkish trademark ALDI with registration number TR 2002 15755, registered on June 10, 2005 for services in International Classes 3, 16 and 35;

- the Community trademark ALDI with registration number EU 003639408, registered on April 19, 2005 for services in International Classes 36, 39, 41 and 43;

- the Community trademark ALDI with registration number EU 001954031, registered on April 2, 2002, for services in International Classes 35 and 38; and

- the International trademark ALDI with registration number IR 870876, registered on August 11, 2005 for services in International Classes 35, 38, 40, 41 and 42.

The Respondent was the owner of the trademark ALDI with registration number 2004/11514, registered in Turkey on April 26, 2004 for services in International Classes 36, 37 and 39. An affiliate of the Complainant commenced invalidation proceedings against this trademark registration before the Turkish courts. On October 27, 2011, the Turkish Court of Cassation (Supreme Court of Appeal), 11th Civil Chamber, issued a final judgment confirming the lower courts' decisions declaring as invalid the Respondent's trademark as of the date of its registration, and cancelling its registration in the register of the Turkish Patent Institute.

The disputed domain name was registered on April 7, 2004.

5. Parties' Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to the ALDI trademark. The "aldi" element is the dominant and distinctive component of the disputed domain name, and the only difference between the ALDI trademark and the disputed domain name is the addition of the generic term "tours", which does not make the disputed domain name distinctive. The ALDI trademark is well known in the field of grocery and travel arrangements, and the combination between it and the element "tours" increases the likelihood of confusion, because tours, trips and leisure travels are among the major services provided by the Complainant to its customers.

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The ALDI trademark was created by the Complainant and has become unequivocally associated with it and its business activities, including travel arrangements, as a result of its extensive and long term use. The Respondent is in no way associated with the Complainant's business, and has never been authorized by the Complainant to use the ALDI trademark.

The Complainant points out that the Respondent's trademark ALDI, registered in Turkey, was declared as invalid and its registration was cancelled. The Turkish courts have acknowledged that the ALDI trademark of the Complainant is well known in Turkey.

In the Complainant's submission, the disputed domain name was registered and is being used in bad faith. The ALDI trademark was well known at the time of the Respondent's registration of the disputed domain name. Thus, the Respondent must have been aware of the Complainant and of the ALDI trademark when it registered the disputed domain name. The Respondent has appropriated a well-known trademark in order to attract Internet users to its website by creating a likelihood of confusion with the Complainant's ALDI trademark in an attempt to benefit from the reputation of the same trademark by offering competing services. According to the Complainant, the consumers may erroneously assume that there is a commercial link between the Respondent's website and the Complainant.

B. Respondent

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

6. Discussion and Findings

Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

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

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

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

According to Rules, paragraph 5(b)(i), it is expected of a respondent to: "[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…"

In the event of a default, under Rules, paragraph (14)(b): "…the Panel shall draw such inferences therefrom as it considers appropriate."

As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004: "Here, the potential evidence of good faith registration and use was in respondent's control. Respondent's failure to present any such evidence or to deny complainant's allegations allows an inference that the evidence would not have been favorable to respondent." Also, as stated by the panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: "Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant […]. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence."

In this administrative proceeding, the Respondent's default entitles the Panel to conclude that the Respondent likely has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to make its Decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant has provided information about the registrations of the ALDI trademark and has thus established its rights in this trademark.

It is a common practice under the Policy to disregard, in appropriate circumstances, the generic Top-Level Domains ("gTLD") such as the ".com" for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the disputed domain name here is its "alditours" section. This section appears as a combination of two separate elements - "aldi" and "tours". The first element is more prominent and is identical to the Complainant's well-known ALDI trademark, while the second element is descriptive for one of the services offered by the Complainant under the ALDI trademark. In the Panel's view, this combination of elements does not distinguish the disputed domain name from the ALDI trademark. Rather, it makes it likely that Internet users would associate the disputed domain name with the Complainant and its services and would have the impression that the disputed domain name is related to the Complainant.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the ALDI trademark in which the Complainant has rights, and that the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name.

B. Rights or Legitimate Interests

The Policy requires the Complainant to make at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a case, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").

The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not commonly known by the name "aldi" and is not affiliated with the Complainant, that it was not authorized or licensed to use the ALDI trademark or to register a domain name incorporating the same trademark. The Complainant also asserts that the Respondent's trademark was invalidated by the Turkish courts upon the Complainant's request. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent, although given a fair opportunity to do so, chose not to present to the Panel any response in accordance with the Rules, paragraph 5(b)(i) and 5(b)(ix), despite the consequences that the Panel may extract from the fact of a default (Rules, paragraph 14). If the Respondent had any legitimate reason for the registration and use of the disputed domain name, it could have brought it to the attention of the Panel. In particular, the Respondent has failed to deny the contentions of the Complainant and to contend that any of the circumstances described in Policy, paragraph 4(c), is present in its favor.

Apart from the factual contentions of the Complainant, the only other sources of information about the Respondent is the WhoIs information, provided by the Registrar, the content of the website at the disputed domain name, and the decisions of the Turkish courts for invalidation of the Respondent's trademark.

The WhoIs information for the disputed domain name does not show a connection between the name of the Respondent and the disputed domain name. As evident from the Turkish court decisions, submitted by the Complainant, the Respondent has attempted to create trademark rights in "aldi" through a trademark registration in Turkey, applied for after the Complainant had applied for registration of its ALDI trademark in Turkey. The Turkish courts have accepted the Complainant's request for invalidation of the Respondent's trademark, and have confirmed the status of the Complainant's ALDI trademark as well known as of the date of the Respondent's trademark application. Therefore, the Respondent does not have trademark rights in the designation "aldi".

The disputed domain name is confusingly similar to the ALDI trademark of the Complainant, which was registered before the registration of the disputed domain name. As contended by the Complainant and undisputed by the Respondent, the Respondent uses the disputed domain name for a website offering tourist services, which coincide with one of the activities carried out by the Complainant. In this situation, it is likely that Internet users may be led to wrongly believe that this website is somehow endorsed by the Complainant.

In the Panel's view, these circumstances show that the Respondent must have been aware of the Complainant and of its ALDI trademark when the disputed domain name was registered. The registration and use of the disputed domain name took place without the consent of the Complainant while at the same time the Respondent attempted to secure trademark rights in the designation "aldi" through a Turkish trademark registration. The Panel finds it more likely than not that all this has been made in an attempt to benefit from the reputation of the ALDI trademark to attract customers to the Respondent's website and then offer them services that compete with one of the Complainant's activities. The Panel is of the opinion that such conduct cannot give rise to rights and legitimate interests in the disputed domain name, and finds that the Complainant's prima facie case has not been rebutted. Therefore, the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or

(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

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location."

As discussed above in relation the issue of rights and legitimate interests, the Respondent must have been aware of the Complainant's ALDI trademark at the time of the registration of the disputed domain name, which is confusingly similar to this trademark. The Respondent has also illegitimately attempted to create trademark rights in the designation "aldi" through a trademark registration in Turkey that was ultimately invalidated. The Turkish courts have confirmed the status of the Complainant's ALDI trademark as well known as of at least 2004. In the Panel's view, these circumstances support a finding that the Respondent has registered the disputed domain name in bad faith.

The Respondent has not denied that the disputed domain name is linked to a commercial website that offers tourist services that compete with the same services offered by the Complainant. In the absence of any evidence or allegation to the contrary, these circumstances satisfy the Panel that the Respondent, by using the disputed domain name, has intentionally attempted to attract for commercial gain Internet users to a commercial website by creating a likelihood of confusion with the Complainant's ALDI trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website and of the services offered on it. This conduct of the Respondent supports a finding of bad faith registration and use of the disputed domain name under Policy, paragraph 4(b)(iv).

Therefore, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith.

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 <alditours.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: July 5, 2014