WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ALDI GmbH & Co. KG v. Sadettin Kucuk
Case No. D2014-0953
1. The Parties
The Complainant is ALDI GmbH & Co. KG of Mülheim, Germany, represented by Schmidt, Von der Osten & Huber, Germany.
The Respondent is Sadettin Kucuk of Izmir, Turkey.
2. The Domain Names and Registrar
The disputed domain names <aldi-gida.com> and <aldi-grossmarket.com> are registered with OnlineNic, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2014. On June 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 6, 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 June 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2014. Apart from an email in Turkish of June 17, 2014, no formal Response was filed with the Center.
The Center appointed Alfred Meijboom as the sole panelist in this matter on July 31, 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 the owner of several trademarks for the word ALDI, including International registration number 870876 of August 11, 2005 with designation European Union in classes 35, 38, 40, 41, 42 for, inter alia, advertising and retailing services and the Community trademark with number 001954031 of April 2, 2002 in classes 35 and 38 for, inter alia, advertising services, and the Community trademark 002071728 of April 14, 2005 for goods and services in classes 3, 4, 7, 9, 16, 24, 25, 29, 30, 31, 32, 33, 34, 36, respectively for, inter alia, non-food and food related products (the “Trademark”).
The disputed domain names were registered by the Respondent on October 30, 2013.
5. Parties’ Contentions
The Complainant is a member of the worldwide acting ALDI Group of companies, which is an international leader in grocery retailing with over 9,500 stores across the world, especially in Europe and the United States of America. In Germany, three out of four households buy at the Complainant. The Complainant has been using the Trademark in Germany and elsewhere since 1946 and operates in the field of grocery as well as in the field of non-food articles.
The Complainant claims that the dominant part of the disputed domain names <aldi-gida.com> and <aldi-grossmarket.com> is “aldi”, which is identical to the Trademark. According to the Complainant neither the addition of both the generic term “grossmarket”, which is German for “gross market”1 , and the descriptive term “gida”, which is Turkish for food, nor the addition of the generic Top-Level Domain (“gTLD”) “.com” detracts from the overall impression which is confusingly similar to the Trademark.
Furthermore the Complainant has not licensed or otherwise authorized the Respondent to use the Trademark as part of the disputed domain names. The Complainant furthermore stated that the Respondent does not use the disputed domain names for his own legitimate commercial or non-commercial activities. Accordingly, the Complainant concluded that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant further stated that independent research showed that the Trademark is very strong in Germany. The Complainant also uses domain names like <aldi.com>, <aldi.de> and <aldi.org>. Therefore, the Complainant considers it not conceivable that the Respondent would not have had actual notice of the Trademark when he registered the disputed domain names as the Respondent registered the disputed domain names many years after filing and registration of the Trademark. By that time, the Trademark was already well known in Germany, throughout Europe, Turkey and the United States of America. Thus, the Respondent choosing the identical Trademark for the disputed domain names had to be well aware of the Complainant and its trademarks and trade names when registering the disputed domain names. The Complainant further underlined that the disputed domain names being used in bad faith is not limited to positive actions, but includes passive holding of the disputed domain names, as in this case.
The Respondent did not reply to the Complainant’s contentions. The Center received an informal email in Turkish.
6. Discussion and Findings
The Respondent sent the Center an email in Turkish on June 17, 2014. In response, the Center rightfully informed the Respondent that the Registrar had informed the Center that the language of the registration agreement in these proceedings is English and therefore all communications in these proceedings should be in English. In absence of an English translation the Panel shall ignore the Respondent’s email of June 17, 2014. 2
Consequently, the Respondent did not reply to the Complainant’s contentions. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), the consensus view of UDRP panelists is that respondent’s default does not automatically result in a decision in favor of complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from the Respondent’s default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, the Complainant must prove that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain names are confusingly similar to the Trademark. The disputed domain names reproduce the Trademark in its entirety. In each disputed domain name, a hyphenated generic term is added to the Trademark, “grossmarket” which is to be understood as a large department store or supermarket (see footnote 1 above) and “gida” which means “food” in Turkish. The fact that the German word “Grossmarket” should actually be “Grossmarkt” may be caused by a typographical error, but is in all circumstances irrelevant to take away likelihood of confusion. And the fact that the Respondent is Turkish and–as evidenced by his email of June 17, 2014 – speaks Turkish, makes that the Turkish word “gida” has a clear descriptive meaning. It is consistently decided that adding a generic term–in this case “grossmarket” and “gida”, respectively – to an established mark does not affect the finding that a domain name is confusingly similar (e.g., Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 and Allianz, Compañia de Seguras y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942). Furthermore, the addition of the suffix “.com” is non-distinctive because it is required for the registration of a domain name.
Therefore, the Panel finds that the disputed domain names are confusingly similar to the Trademark, and the first element of paragraph 4(a) of the Policy is met.
B. Rights or Legitimate Interests
The Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Complainant contends that it did not authorize the use of the Trademark to the Respondent. Furthermore, the Panel is satisfied that there is no indication that the Respondent has been commonly known by the disputed domain names or that it has used the disputed domain names for a bona fide offering of goods or services.
In absence of a reply from the Respondent, the Panel finds that the Complainant has made a prima facie case. As a result, the Panel is satisfied the Respondent has no rights or legitimate interests in the disputed domain names. Therefore, the second element of paragraph 4(a) of the Policy is met.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Trademark is distinctive and well known in Germany and many other European countries and the United States of America. The Panel notes that the Complainant did, however, not explain why it believes that the Trademark also has a reputation in Turkey, as the Complaint did neither list a Turkish trademark registration for “Aldi”, nor listed Turkey amongst the countries with “Aldi” stores. However, in absence of a reply from the Respondent, the Panel is prepared to give the Complainant the benefit of the doubt for different reasons. First, the word “aldi” seems to be distinctive in the sense that it is not a dictionary word. The Panel did, however, found the Turkish word “aldi” translated into the verb “took” or the noun “bridge tap”. If this would be a correct translation neither meaning would make sense if combined with “grossmarket” and “gida” so that it is unlikely that the Respondent had such meaning of the word “aldi” in mind when he registered the disputed domain names. Secondly, the added terms “grossmarket” and “gida” seem to make sense in combination with the Trademark, as “Aldi” is a supermarket which sells food. And thirdly, the Trademark being one of the strongest trademarks in Germany and having a reputation in many western European countries, while many Turkish people live in those countries and travel to and from Turkey, make it seem likely that many people in Turkey have been confronted with the Trademark. The Panel therefore considers it likely that the Respondent was aware of the Complainant’s rights and interests in the Trademark when the Respondent registered the disputed domain names, and hence registered the disputed domain names in bad faith.
Regarding the bad faith use the Panel notes that the disputed domain names have not been used by the Respondent as they do not resolve to a website, and the Respondent did not even seem to have engaged a host, as the disputed domain names do not resolve to a server. However, the Complainant claimed that, the third element of paragraph 4(a) of the Policy is not limited to positive actions, but includes passive holding, therefore the disputed domain names are actually being used in bad faith. Many UDRP panels have decided similar situations and according to the WIPO Overview 2.0, non-use of the disputed domain names can actually be considered as use in bad faith as meant in paragraph 4(a) of the Policy, depending on the circumstances of the case.
As it has been decided that the Trademark has a strong reputation in many countries and the Respondent must have been aware of the Trademark when he registered the disputed domain names, whereas the Respondent has failed to reply to the Complaint, he has also failed to provide a response indicating any evidence of any good faith use of the disputed domain names (e.g. Ferrari S.p.A. v. JK Marketing, WIPO Case No. D2001-1003).
Therefore, the Panel finds that the disputed domain names were registered and are being used in bad faith, so that the third element of paragraph 4(a) of the Policy is also met.
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 names <aldi-gida.com> and <aldi-grossmarket.com> be transferred to the Complainant.
Date: August 13, 2014
1 The Complainant stated that “grossmarket” would mean “gross market” in English. Although it is a possibility, the Panel nevertheless assumes that the Complainant, in the context of the use of the term in the relevant disputed domain name, actually meant that “Grossmarkt” is the Germany dictionary word for “large department store” or “supermarket”.
2 In any event the Panel notes that the Respondent is stating that he never used the disputed domain names, that they have no relationship with him and that he does not want to receive any communication regarding him.