Complainant is Tetra Laval Holdings & Finance S.A. of Pully, Switzerland, represented by Valea AB, Sweden.
Respondent is Vahid Moghaddami, AzarNet.Co of Khayyam, Urmia, Islamic Republic of Iran.
The disputed domain names, <tetapack.com> and <tetapak.com> are registered with OnlineNic, Inc. d/b/a China-Channel.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2010. On February 22, 2010, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the disputed domain names. On February 23, 2010, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2010. An email from Respondent's email address, but signed by a different person, was filed with the Center on March 17, 2010.
The Center appointed Roberto Bianchi as the sole panelist in this matter on March 23, 2010. 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.
The following facts and circumstances have been contended and/or evidenced by Complainant without opposition from Respondent:
- Complainant is a Swiss corporation, part of the Tetra Laval Group. This group includes the Tetra Pak group. Tetra Pak was founded in 1947 in Sweden and is a world leader in the development, production and sale of equipment and processing plants for making, packaging and distributing foods and accessories. Tetra Pak has over 22,000 employees and operates in more than 150 countries.
- Complainant owns TETRA PAK's trademarks throughout the world and licenses these trademarks back to Tetra Pak for use in connection with its businesses.
- The TETRA PAK trademarks are registered in more than 160 countries throughout the world with more than 2,000 registrations. A short list of representative registrations include Swedish trademark Reg. No. 71196, TETRA PAK, registered in 1951, Community trademark (CTM) Reg. No. 1202522, TETRA PAK, CTM No. 3276565, TETRA PAK PROTECTS WHAT'S GOOD (device mark), CTM No. 3188323, TETRA PAK PROTECTS WHAT'S GOOD (device mark), CTM No. 7242969 PROTECTS WHAT'S GOOD TETRA PAK (device mark), and CTM No. 7242985, TETRA PAK PROTECTS WHAT'S GOOD (device mark). Complainant also owns Iranian trademark Reg. No. 9239, TETRA PAK, registered in 1952 and No. 137713, TETRA PAK PROTECTS WHAT'S GOOD, registered in 2006.
- TETRA PAK is undisputedly a well-known trademark in the food packaging industry.
- Complainant also owns more than 220 domain name registrations throughout the world containing the TETRA PAK mark, both under generic top-level domains and country-code top-level domains.
- Respondent registered the <tetapack.com> domain name on November 5, 2008, and the <tetapak.com> domain name on November 6, 2008.
In its Complaint, Complainant contends the following:
- The <tetapak.com> and <tetapack.com> domain names are confusingly similar to Complainant's trademark as they contain a misspelled variation of Complainant's TETRA PAK mark and the generic-top level domain (“gTLD”) “.com”.
- Respondent has no rights to or legitimate interests in the disputed domain names based on Complainant's continuous and long prior use of its mark and trade name TETRA PAK.
- None of the situations listed in paragraph 4(c) of the Policy can be established in this case. Complainant has not licensed or otherwise permitted the Respondent to use its trademark. There is no relationship between the parties, which would justify the registration of the domain names at issue by the Respondent.
- Nothing in the record, including the WhoIs information, suggests that Respondent is commonly known by the <tetapak.com> and <tetapack.com> domain names.
- The disputed domain names are redirected to the “www.payaelectric.com” website, where various packaging machines are displayed and offered for sale. Paya Electrics is an Iranian company designing and manufacturing electric systems, industrial automation and software for designing and manufacturing special equipment for the food packaging industry. Paya Electrics can therefore be considered as a competitor to Complainant. Redirecting Internet users to a competitor's website by using Complainant's trademark, reputation and goodwill, does not constitute bona fide offering of goods and services.
- Furthermore, Respondent's “typosquatting” does not constitute a legitimate noncommercial or fair use of a domain name.
- Respondent has registered and is using the <tetapak.com> and <tetapack.com> domain names in bad faith. Respondent, like everyone else in its industry, must have known of the Complainant's well-known TETRA PAK mark, and could not have chosen or used the words “tetapak” or “tetapack” in its domain names for any reason other than to trade-off the goodwill and reputation of Complainant's trademark or otherwise create a false association, sponsorship or endorsement with or of the Complainant. The registration of domain names confusingly similar to a well-known trademark by a person with no connection to that trademark amounts to “opportunistic bad faith”. That is, in itself, evidence of bad faith, both generally and specifically within the meaning of Policy paragraphs 4(b)(iii) and (iv). Further searches for the Respondent have revealed that the Respondent or someone closely related to the Respondent (same postal and email address) has registered and is actively using the same second level domain names, here “tetapak” and ‘‘tetapack'' under the TLD extension “.ir”, which is the country-code top level domain for the Islamic Republic of Iran. These domain names are also directed to or containing the same content as Respondent's primary web site “www.payaelectric.com”.
Also, Respondent is the registered owner of the domain name <sabainstrument.com> which currently is used for a Pay-Per-Click site with sponsored hyperlinks to various other sites for “Performance Management”, “Knowledge Management”, “E Learning System”, “Learning Management System”, etc. “SABA” is the trademark of Saba, a United States public company (NASDAQ: SABA), founded in April 1997. Saba provides unified solutions for people management across learning, collaboration, performance, compensation and talent management, enabling customers to align, develop, manage and reward their people. Saba's people management solutions are used by more than 1,300 organizations and over 17 million end users worldwide. The above clearly indicates that the Respondent is actively engaging in cybersquatting activities trying to trade-off the goodwill and reputation of well-known trademarks.
The Center received an email sent from Respondent's email address on March 17, 2010, and signed by Hadi Sadighi. It reads as follows: “Dear Sir, Thanks for your email and your attention, We are so happy that an organization like you is going to deal with this problem, and it's so satisfying that you are a neutral organization, i [sic] wanted to mention that at the time of registering this domain,it wasn't registered already so i [sic] think our domain's registration is legal. Sincerely yours, Hadi Sadighi.”
This communication fails to meet the basic requirements of a response under Rules paragraph 5. It was not sent by the Respondent, i.e. the registrant of record of the disputed domain names, against whom the Complaint was initiated. It was not sent in Respondent's name or on his behalf. It did not provide the name, postal and e-mail addresses, or the telephone and telefax numbers of the Respondent and of any representative authorized to act for the Respondent in the proceeding. It did not include the certification of Rules paragraph 5(viii) followed by the signature of Respondent or its authorized representative. Therefore, the Panel considers Respondent did not formally reply to Complainant's contentions. In any event, this communication did not respond specifically to any of the statements and allegations contained in the Complaint.
A complainant must make out its case under Policy, paragraph 4(a) 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 domain name has been registered and is being used in bad faith.
With copies of several certificates of trademark registrations and an impressive listing of TETRA PAK trademark registrations in numerous countries, Complainant has evidenced that it has trademark rights in the TETRA PAK expression. See section 4 above.
The disputed domain names are slight misspellings of Complainant's mark. Both domain names only differ from the mark in that the “r” letter is missing, while the <tetapack.com> domain name also adds the “c” letter in the term “pack”, which doesn't exist in Complainant's mark. The Panel finds that these variations are minor, and inapt to distinguish the disputed domain names from Complainant's mark. See Whirlpool Properties, Inc. and Whirlpool Corporation v. Gioacchino Zerbo, WIPO Case No. D2006-0549, where the panel found the domain name <whirpool.com> to be almost identical, and confusingly similar, to the complainant's trademark WHIRLPOOL, except for the missing letter “l”, considering the case to be one of typosquatting.
Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant's TETRA PAK mark.
With pertinent allegations and supporting evidence, Complainant has denied that each of the circumstances of Policy paragraph 4(c) be applicable in the present case. As it can be seen at section 5. A. above, Complainant has explained why Respondent's registration and use of the disputed domain names cannot be construed as legitimate, citing similar cases where panels found that no rights to or legitimate interests in the domain names there at issue existed.
Considered together, Complainant's allegations and accompanying evidence under this section are sufficient to make out a prima facie case that Respondent lacks rights to or legitimate interests in the disputed domain names. UDRP panels agree that once a complainant has made out such prima facie case, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name, and if the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” at “www.wipo.int/amc/en/domains/search/overview/index.html#21”.
The argument made in the email sent from Respondent's email address to the Center on March 17, 2010, that the disputed domain names were available at the time of registration, is a truism merely stating how the registration of domain names is possible in general, and cannot in and by itself explain why a particular registration should be seen as legitimate. See TRW Inc. v. Autoscan Inc., WIPO Case No. D2000-0156, where the panel said that “[i] f mere registration of the domain name was sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests, and no complainant could succeed on a claim of abusive registration. Construing the Policy so as to avoid an illogical result, the Panel concludes that mere registration does not establish rights or legitimate interests in a domain name so as to avoid the application of paragraph 4(a)(ii) of the Policy.”
Although the term “teta” in the disputed domain names is the Spanish word for “teat” or “tit”, there is nothing on the record suggesting that Respondent, residing in the Islamic Republic of Iran and presumably of Iranian nationality, may have had this meaning in mind at the time of registering the disputed domain names or thereafter, instead of aiming at Complainant's mark by using typosquatting.
The Panel concludes that Complainant has proved the second requirement of the Policy.
As contended and shown with pertinent documentary evidence by Complainant, at the time of the Complaint the disputed domain names were being redirected to the “www.payaelectric.com” website, where packaging machines were displayed and offered for sale.
According to Complainant's evidence, Paya Electrics is an Iranian company designing and manufacturing electric systems, industrial automation and software for designing and manufacturing equipment for the food packaging industry, and can be considered a competitor to Complainant. Respondent appears to be at least knowledgeable with Paya Electrics' field of business, and thus, he knew or must have known of the Complainant's well-known TETRA PAK mark. Accordingly, Respondent appears to have registered the disputed domain names in order to extract a profit from the renown of Complainant's TETRA PAK trademark, either for himself or for Paya Electrics, i.e. that it registered the disputed domain names in bad faith.
While noting that there is nothing on the record suggesting that Paya Electrics is aware of Respondent's actions, the Panel considers that redirecting the disputed domain names to a commercial website - competing or not with Complainant - falls squarely within Policy paragraph 4(b)(iv) (“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”), which is a circumstance of bad faith registration and use of the domain names.
The fact that presently the disputed domain names do not appear to resolve to any website, does not cancel the fact that the domain names once were redirected to Paya Electrics' website, using them in bad faith, as seen above. See CIT Group Inc. v. Gail Nick, WIPO Case No. D2009-0709, where the panel noted that as of the date it was appointed, there was no website associated with the disputed domain name. However, the panel agreed with the complainant's contention that this does not avoid a finding that the domain name there at issue was registered and used in bad faith. The panel said: “Indeed, if it did, then all Respondents could avoid an adverse judgment by changing their website once a Complaint was filed.”
The Panel concludes that the disputed domain names have been registered and are being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <tetapack.com> and <tetapak.com> be transferred to the Complainant.
Dated: April 5, 2010