Aldi Store Limited and Aldi GmbH & Co. KG v. Norman Shaaban
Case No. D2015-1764
1. The Parties
The Complainants are Aldi Store Limited of Warwickshire, United Kingdom of Great Britain and Northern Ireland (“UK”) and Aldi GmbH & Co. KG of Mulheim an der Ruhr, Germany, represented by Freeths LLP, UK.
The Respondent is Norman Shaaban of Beirut, Lebanon.
2. The Domain Name and Registrar
The disputed domain name is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2015. On October 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 5, 2015, 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 October 15, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2015.
The Center appointed Gunnar Karnell as the sole panelist in this matter on November 16, 2015. 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.
The disputed domain name was registered on April 16, 2015, and it does not resolve to an active website.
The Complainant Aldi GmbH & Co. KG is the registered proprietor of numerous UK and Community Trademark Registrations of the trademark ALDI, applied for and registered before the Respondent’s registration of the disputed domain name and relied upon in this Complaint together with registered trademarks of combinations with ALDI, such as ALDI HOLIDAYS, ALDI TRAVEL, and ALDI TALK, also predating the registration of the disputed domain name.
The Complainant Aldi Stores Limited is under common control with the Complainant Aldi GmbH & Co. KG and is a licensee of the above-listed trademark registrations.
The Complainants have requested that the disputed domain name be transferred to the Complainants.
5. Parties’ Contentions
All the Complainants’ trademarks are controlled by their registered proprietor as licensed to the Complainant Aldi Stores Limited, a well-known supermarket in the UK, incorporated on November 1988 and trading under the Aldi name before that; known for retailing of groceries, clothing, and other household goods.
Active in grocery retailing, the Complainants and their connected companies have more than 5,000 stores across the world in a considerable number of countries.
The website used by the Complainant Aldi Stores Limited is “www.aldi.co.uk”.
The disputed domain name is confusingly similar to the trademark ALDI and other, related trademarks mentioned above in which the Complainants have rights. The disputed domain name is likely to be taken as a reference to the Complainants’ business, expecting to reach a website belonging to or associated with the Complainants. The Complainants list a number of things the number 500 may relate to, including a potential anniversary of Aldi or promotional activity, but in any event, is likely intended to refer directly to the Complainants’ business.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainants have not licensed or otherwise authorized the Respondent to use the ALDI trademark and the Respondent has not conducted any prior business under the name of Aldi in connection with a bona fide offering of goods or services.
The disputed domain name was registered and is being used in bad faith. Prior to the Complainants sending the Respondent a cease-and-desist letter, the disputed domain name directed to unauthorized uses of the ALDI trademark and purported to offer GBP500 worth of ALDI vouchers. It also hosted links to at least one voucher website in the UK. When clicking on such a link the user was directed to a webpage found on “www.vaniki.co.uk”, a page claiming to offer “£500 worth of Aldi Shopping Vouchers to be won” and incorporating the ALDI logo. Ultimately, users, by agreeing to Vaniki’s terms and conditions as offered, would permit Vaniki to reuse user-given data for commercial purposes. The Complainants do not provide or sell vouchers for redemption in their stores in the UK, all such offers as mentioned are a sham. The Respondent has intentionally attempted to attract for commercial gain Internet users to the Respondent’s website and other third party online locations by creating a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation, and endorsement of the Respondent’s website. The distinctive character and reputation of the ALDI trademarks are harmed by association. The bad faith of the Respondent is demonstrated by its passive holding of the domain name to the exclusion of the Complainants.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
The factual foundation of the Complainants’ contentions, as presented in great detail by the Complainants, while supporting their uncontradicted claims, allows the Panel to deal summarily with the case.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainants’ multi-registered and well-known trademarks ALDI together with the digits “500”. The latter, in the Panel’s opinion, does not dispel confusion. The Panel disregards the generic Top-Level Domain (“gTLD”) “.com” for purposes of this element of the Policy.
The Panel finds that the disputed domain name is confusingly similar to the Complainants’ trademarks ALDI.
The Complainants have made evident that they have not licensed or otherwise authorized the Respondent to use their trademarks ALDI. Also, the Respondent does not appear to be commonly known by the disputed domain name and it is evidently not making a legitimate noncommercial or fair use of it.
The Complainants have established a prima facie case of lack of rights and legitimate interests and there has been no rebuttal from the Respondent. Nothing in the case file gives reason to believe that the Respondent has any rights or legitimate interests in respect of the disputed domain name.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In this Panel’s view, there is no indication on the record that might impair the Complainants’ assertions regarding the facts leading up to their conclusion that the disputed domain name has been registered and is being used in bad faith.
By holding its registration of the disputed domain name, under circumstances satisfactorily explained in the case file for a conclusion of acting in bad faith (including a sham offering of vouchers), the Respondent has also prevented the Complainants from reflecting their well-known trademarks ALDI for goods or services under the gTLD “.com”.
The Panel finds that the Respondent has registered the disputed domain name in bad faith and that the Respondent is also, by passively holding it under circumstances indicated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, using it in bad faith, all within the meaning of paragraph 4(b)(iv) and 4(a)(iii) of the Policy.
In light of the above, the Panel confirms that the conditions for transfer of the disputed domain name to the Complainants are 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 be transferred to the Complainants.
Date: November 23, 2015