WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Aldo Group Inc. v. Xinyue Tao
Case No. D2019-1720
1. The Parties
The Complainant is The Aldo Group Inc., Canada, represented by Lavery, De Billy, LLP, Canada.
The Respondent is Xinyue Tao, China.
2. The Domain Name and Registrar
The disputed domain name <aldosneakers.com> 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 July 19, 2019. On July 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 2019, 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 July 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2019.
The Center appointed James Bridgeman as the sole panelist in this matter on August 20, 2019. 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 a leading retailer of footwear and fashion accessories. Since its establishment in 1972 in Montreal Canada it 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.
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 following:
Canada Registered Trademarks
- ALDO, TMA465803, registered on November 6, 1996;
- ALDO (stylised lettering), TMA558713, registered on March 4, 2002;
- ALDO & design, TMA354923, registered on April 21, 1989;
- ALDO & design, TMA368309, registered on May 4, 1990;
- ALDO & design, TMA467028, registered on December 4, 1996;
- ALDO ACCESSORIES (stylised lettering) TMA558787, registered on March 5, 2002;
- ALDO OUTLET (stylised lettering) TMA758659, registered on February 2, 2010;
- WWW.ALDOSHOES.COM, TMA542275, registered on March 16, 2001.
United States of America Registered Trademarks
- ALDO (stylised lettering), registration number 2826814, registered on March 30, 2004;
- ALDO SHOES registration number 2445364, registered on April 24, 2001.
Hong Kong, China Registered Trademarks
- ALDO registration number 02647, registered on June 23, 1998;
- ALDO registration number 05277, registered on May 29, 1998;
- ALDO registration number 301646028, registered on November 25, 2013.
The Complainant maintains an Internet presence and is also the owner of a large portfolio of generic
Top-level Domain (“gTLD”) and country-code Top-level Domain (“ccTLD”) Internet domain names including <aldoshoes.com> and <aldogroup.com> which have been registered on February 3, 1996, and which have been continuously used in association with the Complainant’s ALDO trademarks since that date. The portfolio also includes the ccTLD domain names <aldo.hk> (registered on April 13, 2007); <aldogroup.hk> (registered on August 3, 2010); <aldoshoes.hk> (registered on August 21, 2007) on the Hong Kong, China ccTLD.
The disputed domain name was registered on July 6, 2018 and resolves to an active website described in detail below.
There is no information available about the Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the Registrar’s response to the Center’s request for information following receipt of this Complaint. The Respondent did not file any Response or engage with this Complaint process.
5. Parties’ Contentions
A. Complainant
In a well argued and well referenced Complaint, the Complainant requests that the disputed domain name be transferred from the Respondent to the Complainant.
The Complainant relies on its rights in the abovementioned registered trademarks and its use of the ALDO mark in its international business since prior to 1996, and submits that the disputed domain name <aldosneakers.com> is confusingly similar to the Complainant’s ALDO trademark, because the disputed domain name incorporates the ALDO trademark in its entirety in combination with the additional word “sneakers” which is the commonly descriptive of the type of products that the Complainant sells under its ALDO trademarks.
The Complainant submits moreover that the word “sneakers” is similar to the words “shoes” which is included in the Complainant’s domain name <aldoshoes.com>. The Complainant argues that the presence of the word “sneakers” in the disputed domain name allows a reasonable conclusion to be drawn that the public is likely to be confused into the belief that it is dealing with the Complainant and that there is some association between the disputed domain name, the Complainant, its trademarks and its above-mentioned domain names.
Additionally the Complainant submits that the disputed domain name resolves to website which displays the Complainant’s ALDO trademark and logo and reproduces copyright material owned by the Complainant thereby creating the look and feel of the website which will confuse consumers into the belief that the disputed domain name and the website to which it is resolves is associated with the Complainant and its products.
The Complainant further alleges that the Respondent has no rights or legitimate interest in the disputed domain name <aldosneakers.com> arguing that (1) the use of the disputed domain name does not correspond to a bona fide offering of goods or services, (2) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and (3) the Respondent has not been commonly known as “Aldo” or “Aldo Sneakers”.
The Complainant has submitted evidence that the disputed domain name <aldosneakers.com> leads to a website which looks, feels and resembles the Complainant’s own website at the <aldoshoes.com> address. The Complainant alleges that the homepage of the Respondent’s website to which the disputed domain name resolves prominently depicts the Complainant’s ALDO design trademark as well as copyrighted images and advertising material taken from the Complainant’s website. In addition to the images of the products, the text posted on the Respondent’s website is identical that used by the Complainant on its website. The Complainant alleges that the Respondent has copied its trademarks, text and images in order to create confusion and mislead the consumers looking to buy ALDO’s products and accordingly the Respondent is not making a bona fide offering of goods or services, nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant asserts that it has never authorized, licensed, or permitted in any way the Respondent to register or use the disputed domain name or to use the ALDO trademarks and the images and texts from its own website. The Complainant further asserts that the Respondent is not an authorized reseller of the Complainant.
Additionally, the Complainant submits that the Respondent’s website states that it is the “ALDO Sale Official Shop” and otherwise suggests to Internet users that the website is affiliated with, sponsored, or endorsed by the Complainant which is not correct.
The Complainant is also concerned by the statement on the FAQ page of the Respondent’s website: “We guarantee the quality of all our products. The articles on our site are authentic and have been certified by the brand holder”, which the Complainant submits is incorrect because the Complainant does not know the Respondent.
The Complainant argues that the Respondent has registered and is using the disputed domain name in bad faith, arguing that the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website.
The Complainant argues that the Respondent has registered and used the disputed domain name by incorporating the Complainant’s distinctive ALDO trademark and used the Complainant’s images, texts and visuals on his website without authorization. The Respondent has thereby infringed the Complainant’s intellectual property rights in order to create confusion with the Complainant’s ALDO’s products and services and to disrupt the Complainant’s business. Internet users looking for the Complainant’s website and buying ALDO’s products would be misled by the Respondent’s website since it is very resembling and almost identical to the Complainant’s website.
The Complainant submits that the Respondent had both constructive and actual knowledge of the Complainant’s rights in the ALDO trademark when the disputed domain name was registered but chose nevertheless to exploit the Complainant’s goodwill. The Complainant has acquired a well-known reputation and goodwill in the use of the ALDO trademarks in association with footwear and fashion accessories. The Complainant submits that the Respondent was well aware of the Complainant and of its business at the time of registration of the disputed domain name. The Complainant’s ALDO registered trademarks and Internet domain names incorporating the Complainant’s ALDO trademark were registered in many countries long before the registration of the disputed domain name. The ALDO trademark was registered in Canada in 1996 and had been used since 1978. The Complainant’s domain name <aldoshoes.com> has also been registered in 1996 and has been continuously used since then. Furthermore, the Respondent has reproduced the visual and content of the Complainant’s website on his own website associated with the disputed domain name which indicates that the Respondent was aware of the Complainant’s activities under the ALDO trademarks in the field of footwear and fashion accessories at the time the disputed domain name was registered.
The Complainant submits that the disputed domain name was registered only purpose of attracting Internet users to the Respondent’s website, making unfair benefit of the Complainant’s reputation and goodwill and obtaining commercial gain by creating a likelihood of confusion, an impression of association, between the ALDO trademarks and the disputed domain name <aldosneakers.com>.
The Complainant finally submits that the Respondent’s conduct also threatens to divert actual products sales away from the Complainant, damage the Complainant’s rights and depreciate the goodwill associated with its ALDO trademarks and ALDO domain names. Moreover, uncertainties as to the quality of the products sold by the Respondent on his website increase a potential loss of the Complainant’s sales and its well-known reputation among the Internet users visiting the Respondents website.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to establish that:
(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 domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name <aldosneakers.com> is composed of the Complainant’s ALDO trademark and the word “sneakers”.
The Complainant’s ALDO trademark is the dominant and only distinctive element of the disputed domain name. The element “sneakers” is a descriptive word which does not prevent a finding of confusing similarity with the disputed domain name and in the circumstances of this Complaint the gTLD extension may be ignored for the purposes of comparison.
This Panel finds therefore that the disputed domain name <aldosneakers.com> is confusingly similar to the Complainant’s ALDO trademark as alleged and the Complainant has therefore succeeded in the first element of the test in paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name itself is a combination of the Complainant’s trademark and the element “sneakers” which is descriptive of the Complainant’s merchandise. There is no evidence that the Respondent is commonly known by the disputed domain name, is carrying on any bona fide business or has any rights in the name, word or mark “aldo” or “aldosneakers”. The evidence is in fact to the contrary that the Respondent has no such rights and is using the disputed domain name to take advantage of the Complainant’s rights, reputation and goodwill.
The Complainant asserts that it has no relationship with the Respondent, has not authorized the Respondent to use the ALDO mark or to register or use the disputed domain name or to use the Complainant’s copyright and proprietary material as content on the website to which the disputed domain name resolves.
In such circumstances it is well established that the burden of production shifts to the Respondent to establish such rights or legitimate interests in the disputed domain name.
The Respondent, who has not filed any response or explanation or engaged with this Complaint procedure in any way, has failed to discharge the burden of production and therefore the Complainant is entitled to succeed in its submission that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has therefore succeeded in the second element of the test in paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has adduced evidence that it has a long-established international reputation in the use of the ALDO mark in its footwear and fashion-accessories business going back to before 1996 in Canada and since then expanding across the globe.
It is improbable that the registrant of the disputed domain name was unaware of the Complainant and its ALDO mark and product range when the disputed domain name was chosen and registered. It is improbable that the registrant of the disputed domain name would not have become aware of the Complainant and its ownership of the similar domain name <aldoshoes.com> during the registration process. On the balance of probabilities the disputed domain name was chosen and registered so as to create an impression of an association with the Complainant, its products, its business and its similar gTLD and ccTLD domain names.
In reaching this decision this Panel notes that the disputed domain name is composed of the Complainant’s ALDO trademark and the word “sneakers” which references footwear products which is an important element of the Complainant’s product range.
The manner in which the disputed domain name has been used since its registration confirms that it was chosen to reference the Complainant and its products and registered in bad faith.
The Respondent has established and maintains a website to which the disputed domain name resolves, which creates an impression of an association with the Complainant. There is nothing posted on the website to indicate that the Complainant has no association with the website. Furthermore images and text posted on the Respondent’s website have been taken from the Complainant’s website and used without authorization.
In the circumstances, this Panel finds on the balance of probabilities that, as alleged by the Complainant, the disputed domain name was registered in bad faith for the purpose of attracting Internet users to the Respondent’s website in order to take unfair benefit of the Complainant’s reputation and goodwill and has since been used in bad faith by the Respondent to intentionally attempt to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and of products offered on the Respondent’s website.
The Complainant has therefore established the third element of the test in paragraph 4(a)(iii) of the Policy and is entitled to succeed in this Complaint.
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 <aldosneakers.com> be transferred to the Complainant.
James Bridgeman
Sole Panelist
Date: August 21, 2019
