WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aldi Stores Limited, Aldi GmbH & Co. KG v. Michal Jablonski, Netpoint Ltd
Case No. D2016-1556
1. The Parties
The Complainant is Aldi Stores Limited of Warwickshire, United Kingdom of Great Britain and Nothern Ireland ("United Kindgdom") and Aldi GmbH & Co. KG of Mulheim an der Ruhr, Germany, represented by Freeths LLP, United Kingdom.
The Respondent is Michal Jablonski, Netpoint Ltd of Herstmonceux, East Sussex, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <aldibet.com> is registered with Web4Africa Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 29, 2016. On July 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 18, 2016, 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 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 9, 2016. An email from an individual allegedly related to the Respondent was received by the Center on September 9, 2016.
The Center appointed Petter Rindforth as the sole panelist in this matter on September 16, 2016. 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 29, 2016, the Center informed the Parties that the Decision due was extended due to exceptional circumstances to October 7, 2016. An additional email from the abovementioned individual allegedly related to the Respondent was received by the Center on September 29, 2016. The Panel will refer below to the emails received on September 9, 2016 and September 29, 2016.
The Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainant is identified as two companies: Aldi GmbH & Co KG, a German-based company, owner of the ALDI trademarks, and Aldi Stores Limited, a United Kingdom-based supermarket company and licensee of the ALDI trademarks.
The Complainant refers to the following trademark registrations:
- United Kingdom National trademark registration No UK00002250300 ALDI (word), filed on October 26, 2000, and registered on March 30, 2001 for goods and services in international classes 1, 3, 5, 6, 11, 16, 21, 24, 25, 29, 30, 31, 32, 33, 34 and 35.
- United Kingdom National trademark registration No UK00002460745 ALDI HOLIDAYS (word), filed on July 7, 2007, and registered on March 28, 2008 for services in international classes 36, 39 and 43.
- United Kingdom National trademark registration No UK00002460747 ALDI TRAVEL (word), filed on July 7, 2007, and registered on February 29, 2008 for services in international classes 36, 39 and 43.
- European Union ("EU") trade mark registration No 1954031 ALDI (word), filed on November 15, 2000, and registered on April 2, 2002 in respect of services in international classes 35 and 38.
- EU trade mark registration No 2071728 ALDI (word), filed on December 27, 2000, and registered on April 14, 2005 in respect of goods and services in international classes 3, 4, 7, 9, 16, 24, 25, 29, 30, 31, 32, 33, 34 and 36.
- EU trade mark registration No 3360914 ALDI (word), filed on September 11, 2003, and registered on June 2, 2010 in respect of services in international classes 35, 38 and 39.
- EU trade mark registration No 3639408 ALDI (word), filed on February 4, 2004, and registered on April 19, 2005 in respect of services in international classes 36, 39, 41 and 43.
- EU trade mark registration No 6870943 ALDI (word), filed on April 28, 2008, and registered on October 19, 2009 in respect of goods in international classes 7, 9 and 28.
- EU trade mark registration No 11181815 ALDI TALK (word), filed on August 28, 2012, and registered on March 6, 2013 in respect of goods and services in international classes 9, 35, 37 and 38.
- EU trade mark registration No 11181823 ALDI MOBILE (word), filed on August 28, 2012, and registered on March 6, 2013 in respect of goods and services in international classes 9, 35, 37 and 38.
The disputed domain name <aldibet.com> was registered on May 17, 2016. The disputed domain name resolves to an inactive website. No detailed information is provided about the Respondent's activities, apart from what is mentioned below by the Complainant.
5. Parties' Contentions
The Complainant states that it is the owner of a number of well-known trademarks comprising the ALDI name. The Complainant and their connected companies are recognized as international leaders in grocery retailing, with more than 5000 stores across the world, active in Germany, United Kingdom, Australia, Austria, Belgium, Denmark, France, Germany, Ireland, Luxembourg, the Netherlands, Poland, Portugal, Slovenia, Spain, Switzerland, and the United States of America. ALDI is currently the most recognized brand across all sectors in the United Kingdom.
The Complainant further states that the disputed domain name includes the Complainant's famous name and trademark ALDI, as <aldibet.com> incorporates the Complainant's trademark alongside the word "bet" which enhances confusion as it suggests that <aldibet.com> will host a webpage relating to betting services which are sold by the Complainant.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use the ALDI trademark, and there is nothing in the record that suggests that the Respondent has conducted any prior business under the name "aldi" in connection with any bona fide offering of goods or services.
Finally, the Complainant states that the disputed domain name was registered and is being used in bad faith. <aldibet.com> has been intentionally used to attract Internet users, for commercial gain, to the Respondent's website by creating a likelihood of confusion with a name on which a right is recognized or established, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website of the Respondent.
The disputed domain name makes use of the Complainant's registered trade mark ALDI in direct contravention of the Complainant's trade mark rights. 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 trademark in the disputed domain name, it is inevitable that Internet users will be confused into believing that the disputed domain name has an association with the Complainant. The registration of the disputed domain name therefore took unfair advantage of the Complainant's rights.
Significantly, <aldibet.com> incorporates the ALDI trademark alongside the word "bet" which further infers a connection with the Complainant and creates confusion as to the source of the disputed domain name. This inferred association, which was intentionally created by the Respondent, is utilized to pick up web traffic from those users attempting to view a domain name which is associated with the Complainant. Instead, users are directed to a website hosting a "page cannot be displayed" message. The disputed domain name therefore disrupts the business of the Complainant as users will become disappointed and frustrated and unfairly associate <aldibet.com> with the Complainant, which will invariably affect both the business and reputation of the Complainant.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant's contentions. An individual sent an email to the Center on September 9, 2016 in response to the notification of the Respondent's default. This individual asserted, amongst other things, that the disputed domain name had been registered for one of his future clients in order to build an online portal, and that said client "was not willing to expose himself to the WIPO". The Center emailed this individual on September 12, 2016 requesting clarification of his relationship with the Respondent in the current proceedings and evidence supporting the claims contained in his email. This invididual sent another email on September 29, 2016 in response to the notification of the extension of Decision due date. In this email, amongst other things, he questioned the need for an extension of the Decision due date and he again expressed the right of his client to register the disputed domain name.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, a complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has obtained multiple trademark registrations for ALDI, covering a number of countries, including United Kingdom – the home country of the Respondent.
The relevant part of the disputed domain name is "aldibet". The generic Top-Level Domain ("gTLD") ".com" is insufficient to distinguish the disputed domain name from the Complainant's trademark.
The Panel concludes that the disputed domain name consists of the Complainant's trademark ALDI, with the addition of the generic word "bet", meaning an act of risking a sum of money on the outcome of a future event. As stated in prior UDRP decisions, the addition of a generic term does not necessarily distinguish a domain name from a trademark. The generic word may even add to the confusing similarity.
Moreover, in this case, the Panel notes that the Complainant's trademark ALDI is well established and well-known, especially in the United Kingdom, as well as used and registered by the Complainant in combination with generic words that further describes some of the goods and services provided by the Complainant, such as ALDI HOLIDAYS, ALDI TRAVEL, ALDI TALK, and ALDI MOBILE. In this respect, "aldibet" is likely to be considered by consumers as an indication of a new service provided by the Complainant, rather than to something completely non-related to the Complainant's goods and services.
The Panel therefore concludes that <aldibet.com> is confusingly similar to the Complainant's trademark ALDI.
B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case of the second element of the Policy, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
By not submitting a Response, the Respondent failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name or to rebut the Complainant's prima facie case that it lacks rights or legitimate interests.
The Respondent has no rights to use the Complainant's trademarks and is not an authorized agent or licensee of the Complainant's products, services or trademarks.
There is nothing in the Respondent's name that indicates it may have become commonly known by the disputed domain name, enabling it to establish a right or legitimate interest in <aldibet.com>, nor any evidence in the present record to indicate that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name. See Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No. D2000-0020 (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel notes that, although an individual allegedly related to the Respondent contacted the Center and made some contentions to justify the registration of the disputed domain name, this individual did not submit any evidence in order to prove his alleged relationship with the Respondent or the claims contained in his emails. In any event, even if these emails were considered as a Response to the Complaint, the absence of any evidence supporting them would result in a failure to counter the prima facie case established by the Complainant.
Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant holds several trademark registrations for ALDI in the United Kingdom, the home country of the Respondent, as well as EU trade mark registrations covering the United Kingdom.
The Complainant has shown that the trademark ALDI, with or without the addition of descriptive words, is well-known in the United Kingdom.
Thus, it is clear to this Panel that the Respondent had the Complainant's trademark in mind when the Respondent registered the disputed domain name, and that the addition of the generic word "bet" was not made in order to make a difference, but rather to give the impression of a new service offered by the Complainant, and thereby a deliberate attempt to create a likelihood of confusion with the Complainant's mark and services as to the source, sponsorship, affiliation, or endorsement of the disputed domain name.
Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no apparent legitimate purpose to use the trademark is a strong indication of bad faith. See Société pour l'Oeuvre et la Mémoire d'Antoine de Saint Exupéry - Succession Saint Exupéry - D'Agay v. Perlegos Properties, WIPO Case No. D2005-1085.
The Panel note that <aldibet.com> is not actively used, as users are only directed to a website hosting a "page cannot be displayed" message. However, apparent lack of so-called active use (e.g., to resolve to an active website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith.
See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 ("[T]the significance of the distinction is that the concept of a domain name 'being used in bad faith' is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith"). See also Westdev Limited v. Private Data, WIPO Case No. D2007-1903 ("is fair to assume that someone who has gone to the trouble of stealing a domain name has an abusive intent").
In this case, the Panel notes that:
(i) The Complainant's trademarks are well known, and especially in United Kingdom, the home country of the registered Respondent.
(ii) The Respondent, or even the individual who allegedly contacted the Center on its behalf, have provided no evidence of any actual or contemplated good faith use of the disputed domain name <aldibet.com>.
(iii) The disputed domain name consists of the Complainant's trademark, with the addition of a generic word that describes a certain service, which is the same way the Complainant is using its trademark (ALDI + words like "holidays", "travel", "talk" or "mobile"), thereby adding to the similarity and reference to the Complainant's trademark and goods/services.
(iv) Any attempt to actively use the disputed domain name by the Respondent would inevitably create a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
Thus, the Panel concludes that the disputed domain name was registered and used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) of the Policy.
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, <aldibet.com>, be transferred to the Complainant Aldi GmbH & Co. KG.
Date: October 1, 2016