Aldo Group International GmbH v Luu Hong Dang

WIPO Case No. D2025-1251

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Aldo Group International GmbH v. Luu Hong Dang

Case No. D2025-1251

1. The Parties

The Complainant is Aldo Group International GmbH, Switzerland, represented by MarkMonitor Inc., United

States of America (“United States”).

The Respondent is Luu Hong Dang, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <aldoshoesvn.com> (the “Domain Name”) is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2025. On March 27, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 31, 2025, 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 April 2, 2025. In accordance with the Rules, paragraph 5,
the due date for Response was April 22, 2025. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on April 23, 2025.

The Center appointed Ana María Pacón as the sole panelist in this matter on May 2, 2025. 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.

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4. Factual Background

The Complainant and its affiliated companies are in the business of international trade, purchase, sale, import, export, etc., of leather goods, including footwear, and are leading retailers of footwear and fashion accessories. Since its establishment in 1972 in Montreal, Canada, Aldo Group has expanded to a worldwide enterprise with currently more than 3000 points of sale around the world in over 100 countries serving almost 200 million customers and visitors to its stores each year.

Relevant to these proceedings, the Complainant has registered the trademark ALDO worldwide, including:

- International Registration No. 1029684 for ALDO and logo, registered on December 8, 2009, covering
goods and services in classes 18, 25, and 35.
- International Registration No. 1706452 for ALDO, registered on November 1, 2022, covering goods and
services in classes 9, 35, and 41 (including the territory of Viet Nam).
- European Union Trademark Registration No. 009196742 for ALDO, registered on February 10, 2015,
covering goods in classes 3, 9, 14, and 26.
- Vietnamese Trademark No. 4-0056841-000 for ALDO and logo, registered on September 6, 2004, covering
goods and services in classes 18, 25, and 35.

The Complainant is also the registrant of the domain names <aldoshoes.com> and <aldogroup.com>, both registered since February 3, 1996.

The Domain Name was registered on December 9, 2024. It is currently inactive; however, the Complainant has provided evidence showing that the Domain Name previously resolved to an active website offering ALDO-branded products at a discount and displaying the ALDO logo at top of the page, without any disclaimer indicating the lack of association with the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name.

Notably, the Complainant affirms that the Domain Name is identical or confusingly similar to the and the abbreviation “vn”.

The Complainant submits that the Respondent is neither a licensee of the Complainant nor affiliated with the Complainant in any way. The Complainant says that it has not authorized the Respondent to make any use of its ALDO trademark. Lastly, the Complainant says that there is no evidence to suggest that the

Respondent is commonly known by the Domain Name, as intended under paragraph 4(c)(ii) of the
Policy.

Furthermore, the Complainant asserts that the Respondent registered and used the Domain Name in bad faith, as the Respondent’s use of the Complainant’s trademark and product images on the website previously connected to the Domain Name shows the Respondent’s awareness of the trademark at the time of registration and the latter's intent to mislead Internet users into believing that the website was somehow connected to or authorized by the Complainant.

The Complainant requests the transfer of the Domain Name.

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B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the ALDO mark is reproduced within the Domain Name. Accordingly, the Domain Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

In the present case, the only difference between the ALDO trademark and the Domain Name is the addition
of the term “shoes” and the abbreviation “vn”. Moreover, the abbreviation “vn” corresponds to the ISO
3166-1 two-letter country code for the country for Vietnam. In the Panel’s view, the inclusion of the word
“shoes” and “vn” after the ALDO trademark does not prevent a finding of confusing similarity between the
Domain Name and the mark for the purposes of the Policy.

Then there is the addition of the generic Top-Level Domain (“gTLD”), here “.com”. As is generally accepted, the addition of a gTLD such as “.com” is merely a technical registration requirement and as such is typically disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1, and Accenture Global Services Limited v. Fan zhi, WIPO Case No. D2024-0285.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized
that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task
of “proving a negative”, requiring information that is often primarily within the knowledge or control of the
respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights
or legitimate interests, the burden of production on this element shifts to the respondent to come forward with
relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of
proof always remains on the complainant). If the respondent fails to come forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section
2.1.

Having reviewed the available record, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has not rebutted the Complainant’s prima facie showing and has failed to come forward with any relevant evidence demonstrating rights or legitimate interests in the Domain Name such as those enumerated in the Policy or otherwise.

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In particular, the Panel notes the following:

- The Complainant has not authorized the Respondent to use its well-established ALDO trademark.

- Prior to notice of this dispute, the Respondent has not used, nor made demonstrable preparations to use,
the Domain Name in connection with a bona fide offering of goods or services. Paragraph 4(c)(i) of the

Policy, and WIPO Overview 3.0, section 2.2.

- The Respondent (as an individual, business, or other organization) has not been commonly known by the

Domain Name. Paragraph 4(c)(ii) of the Policy, and WIPO Overview 3.0, section 2.3.

- The Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent
for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark. Paragraph

4(c)(iii) of the Policy, and WIPO Overview 3.0, section 2.4.

- The record contains no other factors demonstrating rights or legitimate interests of the Respondent in the
Domain Name.

Instead, the Domain Name was used to host a website impersonating the Complainant and purporting to be an official ALDO website.

Panels have consistently held that the use of a domain name for illegal activity, such as
impersonation/passing off, can never confer rights or legitimate interests on a respondent.
WIPO Overview 3.0, section 2.13.1.

Furthermore, the nature of the Domain Name carries a clear risk of implied affiliation, as it wholly incorporates the Complainant’s ALDO trademark and can be considered a variation of the Complainant’s domain name <aldoshoes.com>, adapted to target the Vietnamese market. Also, considering that the Complainant’s products are available in Viet Nam and are sold at physical Aldo stores and through the website at “aldoshoes.vn”, the Panel finds that the addition of the terms “shoes” and “vn” in the Domain Name reinforces a false impression of association with the Complainant and its ALDO mark.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel finds that the Complainant has demonstrated that its trademark, ALDO, is registered and widely recognized internationally, enjoying a significant degree of global public awareness.

Several UDRP panels have concluded that registering a domain name with knowledge of another company’s rights in the name and with the intent to divert Internet traffic constitutes evidence of bad faith registration (see Digital Spy Limited v. Moniker Privacy Services and Express Corporation, WIPO Case No. D2007-0160; and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).

Given the fame of the ALDO mark and the Complainant’s ownership and active use of the nearly identical domain name <aldoshoes.com>, the Panel considers it highly implausible that the Respondent registered the Domain Name without knowledge of the Complainant and its rights.

The fact that the Domain Name is not currently resolving to an active website does not prevent a finding of bad faith. UDRP panels have long held that the passive holding of a domain name may, in appropriate circumstances, constitute bad faith. In the present case, the prior use of the Domain Name to

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commercialize unauthorized ALDO-branded products and its current passive holding reinforce the
conclusion that the Respondent has no good faith justification for the registration or use of the Domain
Name. WIPO Overview 3.0, section 3.3. See also QlikTech International AB v. Jonathan Liani, WIPO
Case No. D2024-2173.

The Panel notes that the Respondent has used the Complainant’s trademark in its entirety and created a website impersonating the Complainant, without any disclaimer. In the face of these serious allegations, the Respondent has failed to respond or to provide any explanation for the choice and use of a Domain

Name incorporating the ALDO mark.

The Complainant has submitted evidence indicating that the Domain Name was primarily used for the illegitimate purpose of perpetrating fraud, by impersonating the Complainant and its official online presence. As provided by WIPO Overview 3.0, section 3.1.4, “use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith”.

Similarly, UDRP Panels have consistently found that the use of a domain name for illegal activity - here, claimed as impersonation/passing off - constitutes bad faith. WIPO Overview 3.0, section 3.4.

Having reviewed the record, the Panel concludes that the Respondent’s registration and use of the Domain

Name constitutes bad faith.

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

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 Domain Name <aldoshoesvn.com> be transferred to the Complainant.

/Ana María Pacón/
Ana María Pacón
Sole Panelist
Date: May 16, 2025