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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tetra Laval Holdings & Finance S.A. v. TetraPak Global PH-AU, Gerald Smith

Case No. D2012-0847

1. The Parties

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

The Respondent is TetraPak Global PH-AU, Gerald Smith of New South Wales, Australia.

2. The Domain Name and Registrar

The disputed domain name <tetrapak-global.com> (the “Domain Name”), is registered with Name com LLC. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2012. On April 20, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 20, 2012, 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 for the Domain Name.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for the Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2012.

The Center appointed Tony Willoughby as the sole panelist in this matter on May 18, 2012. 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 member of a group of companies, the Tetra Laval Group, comprising three independent industrial groups, namely the Tetra Pak, DeLaval and Sidel Groups. The Tetra Pak Group is a multinational food processing and packaging business, which was founded in 1947. It employs more than 30,000 people and operates in more than 170 countries worldwide.

The Complainant is the registered proprietor of all the trade marks of the Tetra Pak Group which number more than 2000 and which include many for TETRA PAK (word), the earliest dating back to the 1950s. For present purposes, it is only necessary to mention one such registration: Australian registration No. A207494 dated January 16, 1952, in respect of containers for transporting milk in class 21.

The Domain Name was registered on February 14, 2012, and was at the date of the Complaint connected to a website which re-directed to the official website of Tetra Pak Oceania, a member of the Tetra Pak Group. The Registrar’s database records the Respondent as having an address in Australia.

On April 3, 2012, the Complainant wrote to the Respondent drawing attention to the Complainant’s trade mark rights, setting out the nature of the Complainant’s contentions (see below) and seeking inter alia transfer of the Domain Name. The Respondent did not reply.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the Complainant’s TETRA PAK registered trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.

The basis for the Complainant’s contentions under the second and third elements of paragraph 4(a) of the Policy is that the Respondent is fraudulently using the Domain Name to impersonate the Complainant.

B. Respondent

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

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:

(i) The Domain Name is identical or confusingly similar to a trade mark 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.

B. Identical or Confusingly Similar

If the generic “.com” top level domain suffix is ignored, the Domain Name comprises the Complainant’s trade mark TETRA PAK (absent the space) and adds the word “global” separated by an additional hyphen.

In assessing the Domain Name for identity and confusing similarity for the purposes of paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore in the Domain Name both the absence of a space and the presence of the domain suffix.

Here, the Panel finds that the word “global” does nothing to detract from the distinctiveness of the Complainant’s trade mark. Indeed, it serves to achieve the opposite effect as the Complainant has produced ample evidence to demonstrate to the satisfaction of the Panel that the “Tetra Pak” brand can fairly be regarded as a global brand.

The Panel finds that the Domain Name is confusingly similar to the Complainant’s trade mark.

C. Rights or Legitimate Interests

The Complainant has produced evidence to demonstrate to the satisfaction of the Panel that the “Tetra Pak” name is distinctive and well-known internationally, and specifically in Australia where the Respondent resides. In such circumstances, it is very likely that the Domain Name will have been selected with the Complainant’s brand in mind. To put it another way, it would be an extraordinary coincidence if the Respondent had come up with the Domain Name independently.

In this case, however, it is unnecessary for the Panel to approach the issue with the possibility of a coincidence of that nature in mind. The Complainant has produced evidence in support of its contention that the Respondent is actively representing its business to be a part of the Tetra Pak Group. At the date of the Complaint the Domain Name was connected to a website, which re-directed to the official website of Tetra Pak Oceania, a member of the Tetra Pak Group. Moreover, the Complainant has exhibited an email exchange between the Respondent and an Australian recruitment agency in which the Respondent represents itself to be a recruitment division of the Complainant and gives email addresses featuring the Domain Name. The evidence includes business literature emanating from the Respondent including a “Manpower Recrutiment (sic) & Compliance Manual”, which features prominent use of the Complainant’s name and logo.

The Complainant contends that the Respondent is fraudulently representing itself to be the Complainant and the evidence before the Panel strongly suggest to the Panel that the Complainant’s contentions are well-founded. The Center has verified that the Complaint was delivered to the Respondent at its registered address, but the Respondent has not responded.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

D. Registered and Used in Bad Faith

As indicated in section C above, the Complainant has satisfied the Panel (on the evidence before him and on the balance of probabilities) that the Respondent is using the Domain Name for what appears to be a fraudulent commercial purpose, which depends for its success upon the fame of the Complainant’s trade mark. The Panel is satisfied that the Respondent registered the Domain Name for that purpose.

The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) 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, <tetrapak-global.com>, be transferred to the Complainant.

Tony Willoughby
Sole Panelist
Dated: May 19, 2012

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