Aldo Group International AG v Lena Freeh

WIPO Case No. D2023-4117

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Aldo Group International AG v. Lena Freeh

Case No. D2023-4117

1. The Parties

The Complainant is Aldo Group International AG, Switzerland, represented by Kirker & Cie SA, Switzerland.

The Respondent is Lena Freeh, Germany.

2. The Domain Name and Registrar

The disputed domain name <aldotroutlet.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2023.
On October 3, 2023, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On October 4, 2023, 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 (Unknown) and contact information in the Complaint. The
Center sent an email communication to the Complainant on October 4, 2023, 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 October 5, 2023.

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 October 9, 2023. In accordance with the Rules, paragraph
5, the due date for Response was October 29, 2023. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on October 30, 2023.

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The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on November 6, 2023. 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 is Aldo Group International AG, a company incorporated on February 26, 1985, in canton
Zug, Switzerland. The Complainant is in a business of international trade, purchase, sale, import, export,
etc. of leather goods, including footwear. The Complainant was founded by Mr Aldo Bensadoun in Montreal,
Quebec, in 1972.

The Complainant offers its products through the website “ through partners’ websites and/or in physical department stores. The Complainant is the owner of a portfolio of trademark registrations for the ALDO mark in respect of various goods including footwear, leather goods and fashion accessories,

including the Turkish trademark registration nº 200627930 for ALDO, registered on June 12, 2006, and
renewed in 2016. This registration covers classes 03, 18, 25 and 35.

The disputed domain name was registered on September 23, 2022, and resolved to a website that featured images and descriptions of the Complainant's products and incorporated the Complainant's ALDO logo, as evidenced in Annex 03 to the Complaint. At the time of this decision, the disputed domain name resolves to

an inactive website, without any content.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s ALDO trademark. To this end, such underlines that it owns registered trademark ALDO and that there is a goodwill and recognition attained under the name ALDO, which is a distinct identifier associated with the

Complainant’s goods and services.

The Complainant states that the disputed domain name is confusingly similar to its trademark ALDO, as such
encompasses the ALDO mark in its entirety with the addition of the country code “tr”, for Türkiye, as well as
of the expression “outlet”.

The country abbreviation does not prevent the confusing similarity between the disputed domain name and the Complainant’s trademark.

The Complainant further contends that the addition of the expression “outlet” is not sufficient to alleviate the confusing similarity between the Complainant’s ALDO mark and the disputed domain name.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.

The disputed domain name adopted by the Respondent – a reproduction of the Complainant’s registered mark associated with a country code and a descriptive expression – shows a clear intention of misleading Internet users, as it links to a website that feature images and descriptions of the Complainant's products and incorporate the Complainant's ALDO logo. The Complainant underlines that the disputed domain name

gives the impression that it is associated with the Complainant.

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The Complainant also indicates that the Respondent registered and is using the disputed domain name in bad faith, as the consumers accessing the Respondent’s website will believe that the content is sponsored, endorsed or authorized by the Complainant. The Complainant states that the consumers will believe that the disputed domain name serves as the Complainant’s Turkish website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy, in its paragraph 4(a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are:

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 to the disputed domain name; and

iii.        the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Regarding the first of the elements, the Panel is satisfied that the Complainant has presented adequate proof of having rights in the mark ALDO. The evidence demonstrates that the Complainant is the owner of trademark registration for ALDO, which is considered as a well-known trademark.

The disputed domain name incorporates the Complainant’s trademark ALDO in its entirety. The addition of the country abbreviation “tr” and of the expression “outlet” do not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.

According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”), section 1.8, where the relevant trademark is recognizable within the disputed domain
name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise)
would not prevent a finding of confusing similarity under the first element. Further, several prior UDRP
panels have recognized that the incorporation of a trademark in its entirety is sufficient to establish that a
domain name is identical or confusingly similar to the complainant’s mark. See section 1.7 of the
WIPO Overview 3.0. It is also well established that “.com”, as a generic Top-Level Domain, may be
disregarded in the assessment of the confusing similarity between the disputed domain name and the
Complainant’s mark (section 1.11.1 of the WIPO Overview 3.0).

Hence, the Panel concludes that the first element of the Policy has been satisfied by the Complainant in this dispute.

B. Rights or Legitimate Interests

The Panel understands that the mark ALDO is naturally associated with the Complainant, since it is not only
registered as a mark in its name, but also has been used to identify the products and services by the
Complainant for over 50 years.

Hence, the Panel considers that the Respondent, in all likelihood, could not be unaware of the mark ALDO, and its direct relation to the Complainant.

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The Respondent has not submitted a response to the Complaint. Also, there is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to register domain names containing the Complainant’s trademark ALDO, nor evidence that the Respondent is commonly known by the disputed domain name.

Besides, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. presented as if it was offering for sale the Complainant’s goods under the mark ALDO.

The Complainant has not authorized the Respondent to use its mark ALDO or register a domain name incorporating the mark. There is no evidence that the Respondent is commonly known by the disputed domain name or has made a bona fide or noncommercial fair use of the disputed domain name.

Further, the use of a domain name in connection with a website that falsely appears to be a website for, or otherwise associated with, the Complainant (as evidenced in Annex 03 of the Complaint), the Respondent has failed to create a bona fide offering of goods). The addition of the term “tr”, commonly used as a country

code for Türkiye, as well as the expression “outlet” further supports the Respondent’s lack of rights or
legitimate interests in the disputed domain name as it further suggests a sponsorship or endorsement of the
disputed domain name with the Complainant. WIPO Overview 3.0 section 2.5.1.

The Panel is satisfied that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name. This has not been rebutted by the Respondent.

Thus, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain
name. For this reason, the Panel believes that the Complainant has satisfied the second element of the

Policy.

C. Registered and Used in Bad Faith

It is clear to the Panel that the Respondent has in all probability registered the disputed domain name with the purpose of taking advantage of the Complainant’s mark.

The Panel finds that the disputed domain name was likely registered to mislead consumers – hence the addition of the terms “tr” and “outlet”. Further, the additional terms can surely be considered an allusion to the Complainant’s business, a fact from which the Respondent may well profit by giving Internet users the impression that the disputed domain name belongs to the Complainant.

The fact that the disputed domain name linked to a website that featured images and descriptions of the circumstances.

The Respondent intended to give an overall impression that the disputed domain name is associated with the Complainant.

All the points above lead to the conclusion by this Panel that the Respondent was fully aware of the the disputed domain name in bad faith.

The Panel finds that the Complainant has also proved the third element of the Policy.

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7. Decision

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, <aldotroutlet.com> be transferred to the Complainant.

/Alvaro Loureiro Oliveira/
Alvaro Loureiro Oliveira
Sole Panelist
Date: November 20, 2023