Aldo Group International GmbH v Zhang Qiang
WIPO Case No. D2024-1311
•20-06-2024
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Aldo Group International GmbH v. Zhang Qiang
Case No. D2024-1311
1. The Parties
The Complainant is Aldo Group International GmbH, Switzerland, represented by Markmonitor, United
States of America.
The Respondent is Zhang Qiang, China.
2. The Domain Names and Registrar
The disputed domain names <aldoireland.com>, <aldoromania.com>, <aldoshoesuk.com>,
<aldosouthafrica.com>, and <aldouae.com> are registered with Paknic (Private) Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2024. On April 4, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 5, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Whois Agent, Web Domains By Proxy) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 9, 2024, 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 amended Complaint on April 12, 2024.
The Center verified that the Complaint together with the amended 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 16, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2024.
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The Center appointed Tobias Malte Müller as the sole panelist in this matter on June 6, 2024. 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
It results from the Complainant’s undisputed allegations that it is in the business of international trade, purchase, sale, import, export, etc. of leather goods, including footwear, and is leading retailers of footwear and fashion accessories. Since its establishment in 1972 in Montreal, Canada, it has expanded to a worldwide enterprise with currently more than 3,000 points of sale around the world in over 100 countries serving almost 200 million customers and visitors to its stores each year.
The Complainant is the registered owner of many trademarks worldwide for ALDO, in particular International trademark registration no. 1706452 registered on November 1, 2022, covering goods and services in classes 9, 35, and 41, designating, amongst others, China and the European Union.
The Complainant uses the domain names <aldoshoes.com> and <aldogroup.com>, registered on February
3, 1996, for its official websites.
The Complainant further contends its trademark ALDO be distinctive and well known.
The disputed domain names <aldoireland.com>, <aldoromania.com>, <aldoshoesuk.com>,
<aldosouthafrica.com>, and <aldouae.com> were all registered on November 14, 2022. Furthermore, the
undisputed evidence provided by the Complainant proves that the disputed domain names resolved to
websites reproducing, without authorization, the Complainant’s trademark and logo and allegedly selling the
Complainant’s products.
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 disputed domain names.
Notably, the Complainant contends that the disputed domain names are confusingly similar to the
Complainant’s trademark since they contain its trademark ALDO entirely in combination with generic term
“shoes” (in case of the disputed domain name <aldoshoesuk.com>) and geographical terms “Ireland”,
“Romania”, “UAE” (a common abbreviation for United Arab Emirates), and “UK” (a common abbreviation for
the United Kingdom) and “South Africa”, respectively.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain names. According to the Complainant, the Respondent is not affiliated with the Complainant in any way and has not been authorized by the Complainant to use and register its ALDO trademark or to seek
| websites seemingly offering the Complainant’s products and displaying the Complainant’s logo at the top of | registration of any domain name incorporating said mark. The disputed domain names resolve to active considering the content of the websites, it appears that the Respondent has registered the disputed domain names in order to lead Internet users to believe that there is a business link between the Complainant and the Respondent and to free ride on the reputation of the Complainant and its well-known ALDO trademarks. |
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Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. According to the Complainant, taking into account the worldwide reputation of the Complainant and its well-known ALDO trademark, it is hard to believe that the Respondent was unaware of the existence of the Complainant’s trademark at the time of registration of the disputed domain names.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that each disputed domain name be transferred or cancelled:
(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 has been registered and is being used in bad faith.
The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.
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 disputed 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 mark is reproduced within the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
Although the addition of other terms, here, “ireland”, “romania”, “southafrica”, “uae”, “shoes”, and “uk” may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the mark for the purposes
of the Policy. WIPO Overview 3.0, section 1.8.
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
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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 the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise.
As detailed above, the disputed domain names have resolved to websites reproducing, without authorization, the Complainant’s trademark and logo and allegedly selling the Complainant’s products. There are no accurate and prominent disclaimers regarding the Respondent’s relationship with the Complainant on the websites at the disputed domain names.
Moreover, the Panel notes that the disputed domain names contain the Complainant’s registered trademark and various geographic terms or their abbreviations. The nature of those disputed domain names carries a risk of implied affiliation: in fact, geographic terms are seen as tending to suggest sponsorship or
endorsement by the trademark owner, see WIPO Overview 3.0 at section 2.5.1.
Regarding the disputed domain name <aldoshoesuk>, the Panel notes that it is clearly constituted by the Complainant’s registered trademark, a geographical term (i.e., “uk”, an abbreviation for United Kingdom) and another term (i.e. “shoes”), which clearly refers to the Complainant’s core business, tending to suggest sponsorship or endorsement by the Complainant. This is also confirmed by the content of the website to which the disputed domain name resolves, allegedly selling the Complainant’s products and reproducing without authorization the Complainant’s trademark and logo.
The composition of the disputed domain name <aldoshoesuk> directly targeting the Complainant’s field of activity enhances the false impression that the disputed domain name is somehow related to the Complainant and its official website promoting the Complainant’s business. Such composition of the disputed domain name cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner, see section 2.5.1 of the WIPO Overview 3.0.
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. One of these circumstances is that the Respondent by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy). This is the case here.
In the present case, the Panel notes that it results from the Complainant’s documented allegations that the disputed domain names have resolved to websites allegedly selling the Complainant’s products and reproducing without authorization the Complainant’s trademark and logo. For the Panel, it is therefore evident that the Respondent knew the Complainant’s mark. Consequently, and in the absence of any evidence to the contrary, the Panel is convinced that the Respondent also knew that the disputed domain names included the Complainant’s trademark when it registered the disputed domain names.
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Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and is being used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.
On this regard, the further circumstances surrounding the disputed domain names’ registration and use confirm the findings that the Respondent has registered and is using the disputed domain names in bad faith:
(i) the nature of the disputed domain names (incorporating the Complainant’s mark plus the addition of a
geographical term and/or a term, i.e. “shoes”, which clearly refers to the Complainant’s core business in case
of <aldoshoesuk>);
(ii) the content of the websites to which the disputed domain names direct, purportedly offering for sale the
Complainant’s products and reproducing without authorization the Complainant’s trademark and logo;
(iii) a clear absence of rights or legitimate interests coupled with no response for the Respondent’s choice of
the disputed domain names.
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 disputed domain names <aldoireland.com>, <aldoromania.com>, <aldoshoesuk.com>,
<aldosouthafrica.com>, and <aldouae.com> be transferred to the Complainant.
/Tobias Malte Müller/
Tobias Malte Müller
Sole Panelist
Date: June 20, 2024
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