WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ALDI GmbH & Co. KG v. Marius Mueller / Wuxi Yilian LLC
Case No. D2014-1391
1. The Parties
The Complainant is ALDI GmbH & Co. KG of Mülheim, Germany, represented by Schmidt, Von der Osten & Huber, Germany.
The Respondents are (1) Marius Mueller of "Hannover, Oxford Province, Virgin Islands, Overseas Territory of United Kingdom of Great Britain and Northern Ireland" and (2) Wuxi Yilian LLC of Xiamen, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <aldi-produktrueckruf.com> is registered with Bizcn.com, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 14, 2014. On August 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 15, 2014, 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 Complainant on August 19, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 20, 2014.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on August 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 15, 2014. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on September 16, 2014.
The Center appointed Theda König Horowicz as the sole panelist in this matter on September 25, 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 belongs to the ALDI Group of companies which is an international leader in grocery retailing. ALDI was founded in 1946 in Germany and is extremely well-known in the said country. ALDI has been expanding its activities in many countries since its foundation.
The Complainant is the owner worldwide of several trademark registrations for ALDI in many international classes relating to the services and products it offers.
The Complainant also owns domain names containing ALDI such as <aldi.com> and <aldi.de>.
Respondent No. 1 registered the disputed domain name <aldi-produktrueckruf> on February 22, 2014 through a proxy service offered by Respondent No. 2. The identity of Respondent No. 1 was only disclosed to the Complainant after the filing of its initial Complaint which was then amended.
The disputed domain name is linked to an inactive webpage.
5. Parties' Contentions
The Complainant alleges being the owner of several trademark registrations worldwide including ALDI. The trademark ALDI has been used in Germany in the field of grocery and for non-food articles since decades. The domain name <aldi-produktrueckruf.com> is highly similar to the Complainant's trademark <ALDI>, in particular since:
- <produktrueckruf> is a generic German term which means "product recall" and which therefore does not give the disputed domain name any distinctiveness;
- the disputed domain name contains in its entirety the Complainant's trademark;
- the suffix ".com" is not relevant and does not impact the fact that the disputed domain name is obviously similar to the ALDI trademark.
The Complainant further alleges that the Respondents have no rights or legitimate interests with respect to the disputed domain name, mainly because ALDI is unequivocally associated with the Complainant and that the Respondents make no use of it and are not associated in any way whatsoever with the Complainant. Furthermore, no circumstance provided by the Policy is given.
The Complainant is of the opinion that the disputed domain name at issue was registered and used in bad faith by the Respondents. The Complainant considers that its trademark ALDI being well-known, the Respondents must have been aware of its existence when registering the disputed domain name <aldi-produktrueckruf.com>. This awareness would be more than obvious because the Complainant have a strong Internet presence, in particular through its websites "www.aldi.com" and "www.aldi.de". The Complainant also refers to the fact that the address of Respondent No. 1 is false and that some of the details given are evidently fake. The Complainant underlines that use in bad faith includes passive holding which is presently the case. Finally, the Complainant underlines that it is prevented from using the disputed domain name for its own business.
The Respondents did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the complainant must prove that :
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark ALDI.
Indeed, the trademark ALDI has no meaning and is very distinctive, notably due to its long standing use by the Complainant's Group of companies, in particular in Germany.
As mentioned by the Complainant, the addition in the disputed domain name of the generic term "productrueckruf" which means "product recall" in English does not impact on the finding of confusing similarity.
Under the circumstances, the Panel concludes that paragraph 4(a) (i) of the Policy is fulfilled.
B. Rights or Legitimate Interests
The Complainant has made a prima facie case showing that the Respondents have no rights to or legitimate interests in the disputed domain name.
In particular, the Complainant has established that the Respondents have not been known by the name "Aldi", have not been genuinely using the said name since the registration of the disputed domain name and have not shown any interest in obtaining rights on the ALDI trademark.
The burden of proof on this factor therefore shifts to the Respondents to rebut the showing by providing concrete evidence that it has rights to, or legitimate interests in the disputed domain name (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o. WIPO Case No. D2004-0110,).
The Respondents having remained silent in these proceedings, the Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has shown strong evidence that the trademark ALDI is well-known in Germany. It is also not contested that ALDI has a high degree of notoriety in some other countries and is present on the Internet.
The Panel thus agrees with the Complainant's contention that the Respondents must have known that ALDI is a protected trademark and that the disputed domain name <aldi-produktrueckruf.com> has thus been registered in bad faith.
As far as "use in bad faith" is concerned, the Panel notes that this case is a pure passive holding case as the disputed domain name was connected neither to an active website nor to a sponsored links webpage.
A leading decision regarding passive holding was rendered in the Telstra case (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) which established conditions under which passive holding can be held against a respondent. In particular, the decision instituted the principle that passive holding can be covered by paragraph 4(a)(iii) depending on the circumstances and particular facts of a specific case.
In the present matter, the Panel considers that the following circumstances have to be taken into consideration:
- As already mentioned above, the Complainant's trademark ALDI is well-known in Germany and has a strong reputation in some other countries.
- The Respondents have provided no evidence whatsoever of any actual or contemplated good faith use by them of the disputed domain name.
- Respondent No. 1 has taken active steps to conceal its true identity and the details given for the registration of the disputed domain name are fake.
Furthermore, it has to be mentioned that "produktrueckruf" ("product recall") has a meaning, notably in the context of the Complainant's business which is the retail of food and other consuming goods. As indicated by the Complainant, the registration of the disputed domain name by the Respondents thus prevents the Complainant to register it for its own activities.
Considering the above, the Panel finds that the Respondents' passive holding of the disputed domain name satisfies the requirement of paragraph 4(a)(iii) that the disputed domain name was registered and is being used in bad faith by the Respondents.
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-produktrueckruf.com> be transferred to the Complainant.
Theda König Horowicz
Date: October 13, 2014