WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tetra Laval Holding & Finance S.A. v. MATT BROWNING

Case No. D2016-1122

1. The Parties

The Complainant is Tetra Laval Holding & Finance S.A. of Pully, Switzerland, represented by Valea AB, Sweden.

The Respondent is MATT BROWNING of United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

2. The Domain Names and Registrar

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2016 against a privacy service. On June 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 6, 2016, the Registrar transmitted by email to the Center its verification response disclosing the underlying registrant and contact information for the disputed domain names. The Center sent an email communication to the Complainant on June 7, 2016 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 June 8, 2016 replacing the privacy service with the named Respondent.

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 proceeding commenced on June 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 30, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 1, 2016.

The Center appointed Petter Rindforth as the sole panelist in this matter on July 6, 2016. 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.

On July 7, 2016, the Center was copied on an email from a Mr. Kerner to the Registrar, identifying himself as the Senior Platform Developer of MWR InfoSecurity. The email address used for the message was the same that was recorded as the email contact for the Respondent. The email indicated that MWR InfoSecurity was a security company and the domain names were purchased as a part of “security engagements” with its clients they “perform tests against their infrastructure and employees”. Mr. Kerner further stated that the disputed domain names “can indeed be deactivated now as [he] no longer require[s] the use of them”.

4. Factual Background

The Complainant is a Swiss corporation, part of the Tetra Laval Group, which consists of three independent industry groups: the Tetra Pak Group, the DeLaval Group and the Sidel Group. The Complainant refers to a number of trademark registrations including, but not limited to:

- Swedish national trademark registration number 71196 TETRA PAK (word), registered on December 14, 1951 for goods in classes 6, 7, 16, 17, 20 and 21. Registered owner: The Complainant.

- Swedish national trademark registration number 345237 DELAVAL (word), registered on March 23, 2001 for goods and services in classes 1, 3, 4, 5, 6, 7, 8, 9, 11, 12, 17, 18, 21, 25, 27, 31, 36, 37, 41 and 42. Registered owner: DeLaval Holding AB.

- European Union trademark (“EUTM”) number 001202522 TETRA PAK (word), filed on June 10, 1999, and registered on October 2, 2000 for goods and services in classes 6, 7, 9, 11, 16, 17, 20, 21, 29, 30, 32, 33 and 37. Registered owner: The Complainant.

- EUTM number 001785583 DELAVAL (word), filed on July 26, 2000, and registered on October 16, 2002 for goods and services in classes 1, 3, 4, 5, 6, 7, 8, 9, 11, 12, 17, 18, 21, 25, 27, 31, 36, 37, 41 and 42. Registered owner: DeLaval Holding AB.

- EUTM registration number 004332086 SIDEL (word), filed on March 10, 2005, and registered on May 23, 2006 for goods and services in classes 7, 9, 37, 41 and 42. Registered owner: Sidel PARTICIPATIONS (société par actions simplifiée).

- International trademark registration number 1146433 TETRA PAK (word), registered on November 6, 2012 for goods and services in classes 7, 11, 16, 29, 30, 32, 33, 37 and 42; covering 13 countries. Registered owner: The Complainant.

- International trademark registration number 748395 DELAVAL (word), registered on July 27, 2000 for goods and services in classes 1, 3, 4, 5, 6, 7, 8, 9, 11, 12, 17, 18, 21, 25, 27, 31, 36, 37, 41 and 42; covering 37 countries. Registered owner: DeLaval Holding AB.

- International trademark registration number 858530 SIDEL (word), registered on May 6, 2005 for goods and services in classes 7, 9, 37, 41 and 42; covering 22 countries. Registered owner: Sidel PARTICIPATIONS.

- Panama national trademark registration number 77501 TETRA LAVAL, registered on November 6, 1996. Registered owner: The Complainant.

The disputed domain names <delaval-corporate.com>, <delaval-group.com>, <sidel-corporate.com>, <sidel-group.com>, <tetralaval-group.com> and <tetrapak-group.com> were registered on May 18, 2016. No detailed information is provided about the Respondent’s activities, apart from what is mentioned below by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant is a Swiss corporation, part of the Tetra Laval Group, which consists of three independent industry groups: the Tetra Pak Group, founded in 1947 in Sweden, is a multinational food processing and packaging company; the DeLaval Group, founded in 1883 in Sweden, is a full-service supplier to daily farmers; and the Sidel Group, founded in 1965, supplies solutions to package beverages in PET, can and glass. The company has 50 offices worldwide and approximately 5,400 employees.

According to the Complainant, the Complainant owns all trademarks throughout the world and licenses these trademarks to the independent market companies within the industry groups for use in connection with their respective business.

By virtue of the Complainant’s long use and the renown of the Complainant’s trademarks TETRA PAK, DELAVAL, SIDEL and TETRA LAVAL, these trademarks are associated exclusively with the Complainant and its licensee. The trademarks are well known within its field of business.

The Complainant states that the disputed domain names are confusingly similar to the Complainant’s trademark and the trade names of the industry groups TETRA PAK, DELAVAL, SIDEL and TETRA LAVAL. The addition of the generic terms “group” and “corporate”, and the hyphen is the only difference between the disputed domain names and the Complainant’s own domain names: <tetrapac.com>, <delaval.com>, <sidel.com> and <tetralaval-group.com>.

The Complainant further states that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has not licensed or otherwise permitted the Respondent to use the trademarks, there is no relationship between the Complainant and the Respondent, and there is nothing in the record that suggests that the Respondent is commonly known by the disputed domain names.

The Respondent cannot have been ignorant of the rights held by the Complainant, as the trademarks enjoy a worldwide reputation.

The Respondent is using the disputed domain names for phishing emails for obtaining personal and financial information and to get access to the backdoor onto the computer. There is currently no active websites connected to the disputed domain names, but the mail exchanges (“MX”)-records are set for each of them.

Finally, the Complainant states that the disputed domain names were registered and are being used in bad faith. The Respondent could not have chosen or subsequently used the Complainant’s trademarks in the disputed domain names for any other reason than to trade-off the goodwill and reputation of the Complainant’s trademarks or otherwise create a false association, sponsorship or endorsement with or of the Complainant.

The Respondent is using the name of the complainant’s IT support office, Starbucks Promotion, Adobe and WebEx for the purpose of fraudulently get access to the targeted computer. When opening the links in the sent emails, the computers were infected by a Trojan.

The Complainant requests that the Panel issue a decision that the disputed domain names be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, a complainant must prove each of the following:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

The Complainant refers to a number of trademarks within the Complainant’s group of companies, and states that the Complainant “owns all trademarks throughout the world and licenses these trademarks to the independent market companies within the industry groups for use in connection with their respective business”. That statement is however, not correct, if “owns” shall be concluded as if the Complainant is the registered owner of all the cited trademarks. The Panel concludes, based on the documentation provided by the Complainant, that TETRA PAK and TETRA LAVAL are owned by the Complainant (as well as of other members of the group), whereas DELAVAL and SIDEL are registered in the name of other companies within the Complainant’s group of companies.

The question is therefore if a related company to a trademark holder has rights in a trademark for the purpose of filing a UDRP case?

Paragraph 4(a)(i) of the Policy requires, as one element to be proved, that the domain name be identical or confusingly similar to a trademark or service mark in which the Complainant has rights. These words do not require that Complainant be the owner of the trademark. It has been accepted in several UDRP decisions that a company related as subsidiary or parent to the registered holder of a trademark may be considered to have rights in the trademark. See Miele, Inc. v. Absolute Air Cleaners and Purifiers, WIPO Case No. D2000-0756 (“The Panel finds that Complainant, through its affiliation with its grandparent corporation which owns the trademark registration, has rights in and duties concerning the mark MIELE”). See also SMART DESIGN LLC v. CAROLYN HUGHES, WIPO Case No. D2000-0993 (“In this Panel’s view the test under paragraph 4(a)(i) of the Policy, which makes no mention of ‘exclusive rights’ is or ought to be a relatively easy test for a Complainant to satisfy, its purpose simply being to ensure that Complainant has a bona fide basis for making the Complaint in the first place”).

In this case, the Complainant has provided written “Information about the Complainant and the industry groups” (Annex D of the Compliant) that the Panel accept as proof of the Complainant’s role within the Tetra Laval Group of companies, thereby accepting the Complainant’s rights in the cited trademarks for the purposes of the Policy.

The relevant part of the disputed domain names are “delaval-corporate”, “delaval-group”, “sidel-corporate”, “sidel-group”, “tetralaval-group” and “tetrapak-group” as the added generic Top-Level Domain (“gTLD”) – being a required element of every domain name – is generally irrelevant when assessing whether or nota mark is identical or confusingly similar.

Further, the addition of the generic terms “group” and “corporate”, and the hyphen makes no difference. If at all considered, “group” and “corporate” indicates a reference to a company (such as the Complainant), not a private person (such as the Respondent).

The Panel therefore concludes that <delaval-corporate.com>, <delaval-group.com>, <sidel-corporate.com>, <sidel-group.com>, <tetralaval-group.com> and <tetrapak-group.com> are confusingly similar to the Complainant’s trademarks TETRA PAK, TETRA LAVAL, DELAVAL and SIDEL.

B. Rights or Legitimate Interests

Once a complainant establishes a prima facie case of the second element of the Policy, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.

By not submitting a Response, the Respondent failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names or to rebut the Complainant’s prima facie case that it lacks rights or legitimate interests.

The Respondent has no rights to use the Complainant’s trademarks and is not an authorized agent or licensee of the Complainant’s products, services or trademarks. There is nothing in the Respondent’s name that indicates it may have become commonly known by the disputed domain names, enabling it to establish a right or legitimate interest in <delaval-corporate.com>, <delaval-group.com>, <sidel-corporate.com>, <sidel-group.com>, <tetralaval-group.com> or <tetrapak-group.com>, nor any evidence in the present record to indicate that the Respondent is making any legitimate noncommercial or fair use of the disputed domain names.

On the contrary – the Panel finds that the Respondent’s use of the disputed domain names for phishing emails for obtaining personal and financial information was an obvious attempt to mislead customers seeking the Complainant’s services and to collect information on the Complainant’s customers. “Phishing” is commonly regarded as “the attempt to acquire sensitive information such as usernames, passwords, and credit card details (and sometimes, indirectly, money), often for malicious reasons, by masquerading as a trustworthy entity in an electronic communication”.

Such use cannot create rights or legitimate interests as such. See National Westminister Bank Plc v. World Connection Web Works, WIPO Case No. D2012-2097 (finding that “[t]o the extent that Respondent had been using the disputed domain name to engage in phishing as alleged by Complainant (and unrefuted by Respondent) this demonstrates Respondent’s lack of any legitimate rights in or to the disputed domain name”).

Moreover, the Panel notes from the Respondent’s email to the Registrar, that the Respondent no longer claims interests in the disputed domain names.

Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

As concluded above, the Complainant’s trademarks TETRA PAK, TETRA LAVAL, DELAVAL and SIDEL are well protected and widely known in numerous countries in the world, including European Union and the United Kingdom, where the Respondent is based.

It is obvious that the Respondent has registered and used the disputed domain names with full knowledge of the Complainant’s prior rights. The addition of the generic words “group” and “corporate” were not made in order to make a difference, but rather to add words that could well be connected to the business of the Complainant.

The disputed domain names are used for “phishing”, but also for non-active websites stating “Network error” and marked with the copyright symbol followed by “2016 Tetra Pak”. The Panel cannot draw any other conclusion than even the connected websites were created as a part of the “phishing” to make customers in the fake conclusion that the “phising” emails were safe and came from the Complainant and related companies. Such use is a clear example of bad faith.

Thus, the Panel concludes that the disputed domain names were registered and are being used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) 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 <delaval-corporate.com>, <delaval-group.com>, <sidel-corporate.com>, <sidel-group.com>, <tetralaval-group.com> and <tetrapak-group.com> be transferred to the Complainant.

Petter Rindforth
Sole Panelist
Date: July 20, 2016