WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aldi GmbH & Co. KG and Aldi Stores Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Kissi Paul
Case No. D2021-0589
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 WhoisGuard Protected, WhoisGuard, Inc., Panama / Kissi Paul, Côte d'Ivoire.
2. The Domain Name and Registrar
The disputed domain name <aldi-co-uk.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2021. On February 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 25, 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 Complainant on March 3, 2021 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 amendment to the Complaint on March 3, 2021.
The Center verified that the Complaint together with the amendment to 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 March 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2021.
The Center appointed Benjamin Fontaine as the sole panelist in this matter on April 6, 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, which claims to be specifically targeted by the alleged cybersquatting of the disputed domain name <aldi-co-uk.com>.
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.
It is worth noting that, for their operations in the United Kingdom, the Complainants operate a website hosted under the domain name <aldi.co.uk.>.
As a basis for their Complaint, the Complainants rely on numerous trade mark rights, including the EU 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 <aldi-co-uk.com> was registered on July 16, 2020, through the services of a privacy shield. In the course of the proceeding, the Registrar disclosed the identity of the Respondent, an individual domiciled in Ivory Coast.
As evidenced in the Complaint, the disputed domain name is used to distribute malware. The navigation software of the Complainants has therefore blocked the access to the webpage hosted under it.
5. Parties’ Contentions
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, and that as a whole, with the insertion of the terms “CO and UK mimicking the commonly adopted top level and second level domain name extensions”, it is “designed to resemble a genuine domain used by the Complainants to host the Aldi Website. This enhances confusion as it suggests that the Domain will host a webpage relating to goods or services which are specifically sold by the Complainants”.
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 “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 Domain therefore took unfair advantage of the Complainants’ rights. On this basis alone, the Complainants consider the registration of the Domain to be in bad faith”.
Regarding the use of the disputed domain name in bad faith, the Complainants state that, as the disputed domain name incorporates the trade mark ALDI, alongside the terms “co” and “uk”, so as to mirror the domain name used to host their website, the Respondent is attracting users for commercial gain, by creating a likelihood of confusion with the trade mark ALDI. Additionally, the Complainants mention “the distinct possibility that the Domain was registered in order that the Respondent might offer the same for sale to either the Complainants (or their competitors) at a price higher than the cost of registration and in the hope that the parties bid against each other to secure the Domain”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant 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 Complainant has 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.
The trade mark ALDI of the Complainants is clearly perceivable in the disputed domain name <aldi-co-uk.com>. Indeed, it is reproduced identically in first position, and is separated from the other elements “co” and “uk” with hyphens. As stated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“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”.
Therefore, 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 respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. 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 use of the disputed domain name to distribute malware does not amount to a bona fide offering of goods or services.
Accordingly, and absent specific allegations 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.
Indisputably, the disputed domain name <aldi-co-uk.com> was specifically designed to target the Complainants and their operations in the UK. This domain name was registered in order to mirror the domain name <aldi.co.uk> which hosts the British website of the Complainants. Indeed, it reproduces the elements ALDI, “co” and “uk” in the same order and with a visual separation (with hyphens in lieu of dots). This amounts to bad faith registration. See WIPO Overview 3.0, section 3.2.1.
The Panel also finds that the disputed domain name is used in bad faith: the print-out provided in the Complaint shows that the website is blocked because it is hosting malware, possibly as part of a phishing scheme. Diverting Internet users for fraudulent purposes of this nature amounts to use in bad faith. See WIPO Overview 3.0, section 3.4.
Moreover, the fact that the Respondent has employed a privacy service to hide its identity and provided a false address for the Registrar is further evidence of bad faith registration and use, as per section 3.6 of the WIPO Overview 3.0.
Accordingly, the Panel finds that the third element set out in paragraph 4(a) of the Policy is also satisfied.
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-co-uk.com> be transferred to the Complainants.
Date: April 17, 2021