Saturday 13 April 2019

Welsh IP Cases: D2016-0485 ALDI GmbH & Co. KG v. Mahfuz Ali

Jane Lambert

WIPO (Richard Hill) Case No. D2016-0485 ALDI GmbH & Co. KG v. Mahfuz Ali  20 April 2016

In Welsh Top Level Domain Names 12 April 2019 I discussed the provisions for resolving disputes between trade mark owners and holders of ".wales" or ".cymru" domain names.  I searched the WIPO's database of panel decisions to see whether there had been any disputes relating to either of those TLD and discovered this decision by Mr Richard Hill.

The respondent had registered the domain name <> in 2015 but not used it. The complainant, ALDI GmbH & Co. KG, operated over 9,500 discount supermarkets around the world. It had registered the ALDI as a trade mark in Germany under registration number 1913288 on 26 Jan 1981. Mr Hill noted that that trade mark was famous.  The complainant sought the transfer of the domain name on the following grounds:
"(i) Complainant's trademark has a strong reputation and is widely known, (ii) it is not possible to conceive of any plausible actual or contemplated active use of the domain name by Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation (e.g. prohibition of misleading), or an infringement of Complainant's rights under trademark law, (iii) prior to initiation of the URDP proceeding, Respondent has not reacted to an e-mail of Complainant despite several reminders, (iv) Respondent cannot have ignored Complainant's trademark at the time of registration and (v) there are no indications of any good faith use of the disputed domain name. Therefore Complainant comes to the conclusion that Respondent registered and used the disputed domain name in bad faith."
The respondent did not reply to those contentions.

Mr Hill found for the complainant and ordered the domain name to be transferred to that party. 

Noting that the domain name contained the complainant's trade mark in its entirety, he observed that is generally sufficient to establish identity or confusing similarity for the purposes of the UDRP. Further, the gTLD ".wales" combined with the well-known trade mark ALDI was likely to be understood by Internet users as referring to ALDI geographically located in Wales or near to it.  Mr Hill concluded that the disputed domain name was identical or confusingly similar to a trade mark in which the complainant had rights.

The respondent had not been licensed or otherwise authorized to use the complainant's mark. There was no evidence to indicate that the respondent was commonly known by the disputed domain name. The disputed domain name was not being used. As the complainant had made out an unrebutted prima facie case, Mr Hill found that the respondent did not have rights or legitimate interests in the disputed domain name.

Mr Hill held that the domain name had been registered and was used in bad faith for the following reasons.  First,  the complainant's mark was famous. Secondly. there had been no response to the complaint. Thirdly, the disputed domain name associates the complainant's famous mark with a geographical indicator, the gTLD ".wales", which could lead Internet users mistakenly to believe that the disputed domain name was associated with complainant's activities in that region.

Anyone wishing to discuss this case or domain names generally should call me on 020 7404 5252 during office hours or send me a message through my contact form.

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