WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tetra Laval Holdings & Finance S.A. v. Bartosz Karalus

Case No. D2015-1615

1. The Parties

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

The Respondent is Bartosz Karalus of Lodz, Poland.

2. The Domain Name and Registrar

The disputed domain name <tetrapakab.com> is registered with NetArt Registrar Sp. z o.o. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 10, 2015. On September 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 2015, 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.

On September 29, 2015, the Center sent an email communication to the parties in both Polish and English regarding the language of the proceeding. On September 30, 2015, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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 October 12, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 2, 2015.

The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on November 12, 2015. 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 Swiss corporation which is part of the Tetra Laval Group.

The Tetra Laval Group consists of three independent industry groups, among which is the Tetra Pak Group.

The Tetra Pak Group is a multinational food processing and packaging company, founded in 1947 in Sweden, which is a world leader in its industry, employing more than 32,000 people and operating in more than 170 countries worldwide.

The Complainant owns all the trademarks worldwide belonging to the Tetra Pak Group, including the TETRA PAK trademark ("the Mark") which is registered in some 160 countries, including in Poland, where the Respondent is located.

The Mark has been registered in Sweden since December 14, 1951, and is also, among some 2,000 other registrations, a Community Trademark (Registration No. 1202522) and a Polish Trademark (Registration No. 137540 with effect since November 19, 1996).

The Complainant is also the registrant of more than 300 domain names containing the Mark, including among others, the domain names <tetrapak.com.pl> and <tetrapak.pl>.

The disputed domain name <tetrapakab.com> was created on November 25, 2014 and resolves to an inactive page (a landing page of a hosting service).

5. Parties' Contentions

A. Complainant

(i) The Complainant submits that the disputed domain name reproduces the Mark, in which the Complainant has rights, and is confusingly similar to the Mark insofar as the disputed domain name, <tetrapakab.com>, contains the distinctive element "tetrapak" in its entirety. The Complainant also asserts that the addition of the generic term "ab" (which is an abbreviation of the Swedish term "aktiebolag", i.e. Limited Liability Company) does not serve to distinguish the disputed domain name <tetrapakab.com> from the Mark and only adds to the confusion.

(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that it never permitted the Respondent to use the Mark in any manner, and that there is no relationship between them. The Complainant also asserts that the Respondent does not appear to be known by the disputed domain name.

(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant alleges that the Mark being famous, the Respondent had full knowledge of the Mark when registering the disputed domain name.

(iv) The Complainant submits that the Respondent is using the disputed domain name to trade off the goodwill and reputation of the Mark.

(v) The Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

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

The Respondent merely replied to the Complainant's representative's cease and desist demand with emails in English, i.e. pre-commencement of this proceeding.

6. Discussion and Findings

6.1. Procedural Aspects

A. Language of the Proceeding

Paragraph 11(a) of the Rules provides that "Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding".

The Registrar confirmed that the language of the Registration Agreement of the disputed domain name is Polish.

The Complainant requested that the language of the proceeding be English, to which the Respondent failed to comment on or object despite the Center's invitation to do so, expressed in Polish as well as in English, such invitation having been sent to the Respondent on September 29, 2015.

Furthermore, the Respondent replied in English to the Complainant's representative's cease and desist demand of May 28, 2015, thus showing an understanding of that language.

In adopting a language other than that of the Registration Agreement, the Panel has to exercise discretion in the spirit of fairness to both parties, which pursuant to paragraph 10(b) of the Rules have to be treated with equality, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs.

In the light of the above circumstances, and having to ensure pursuant to paragraph 10(c) of the Rules that the administrative proceeding takes place with due expedition, the Panel determines pursuant to paragraph 11(a) of the Rules that the appropriate language of the proceeding is English.

B. Failure to respond

As aforementioned, no Response was received from the Respondent.

Under the Rules, paragraphs 5(f) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.

Under paragraph 4(a) of the Policy, it is the Complainant's burden to establish that all three of the required criteria for a transfer of the disputed domain name have been met, even in the event of a default.

Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent's default as it considers appropriate under the circumstances.

In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy or otherwise, from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.

Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant's arguments that the Respondent has acted in bad faith.

6.2. Requirements of paragraph 4(a) of the Policy

A. Identical or Confusingly Similar

In comparing the Mark with the disputed domain name <tetrapakab.com>, it is evident that the latter consists solely of the Mark, followed by the generic term "ab" (a commonly-used abbreviation of the Swedish word "aktiebolag"), and by the generic Top-Level Domain (gTLD) ".com".

The addition of generic terms does not typically serve to distinguish a domain name from a registered mark. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672; and Allianz AG v. Marian Dinu, WIPO Case No. D2006-0318.

As the Complainant demonstrated that the Mark's first registration was obtained in Sweden, where the Tetra Pak Group was founded, the Panel is of the view that the addition of the generic term "ab" serves to corroborate the impression that the disputed domain name is affiliated with the Tetra Pak Group.

It is also well established that the gTLD ".com" does not generally affect the assessment of a domain name for the purpose of determining identity or confusingly similarity.

The Panel finds that the disputed domain name <tetrapakab.com> is confusingly similar to the Mark, which is incorporated in its entirety.

Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that with regard to paragraph 4(a)(ii) of the Policy this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of a respondent.

Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of rights or legitimate interests in a domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

As previously noted, the Respondent offered no reason for selecting the disputed domain name. There is no evidence that the Respondent is known by the disputed domain name or uses the disputed domain name in a business.

The website associated with the disputed domain name is currently inactive.

No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.

To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that (i) the Mark is used exclusively by the Complainant and its licensees, (ii) the Respondent and the Complainant have no relationship, (iii) the Respondent received no permission from the Complainant to register or use the disputed domain name and (iv) the Respondent is not known by the disputed domain name and is not making a noncommercial or fair use of the disputed domain name.

In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name.

C. Registered and Used in Bad Faith

As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant's arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain name confusingly similar to the Mark.

It is established in prior UDRP decisions that where the respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.

In this case, given that the Mark is famous, as was recognized in a number of previous UDRP cases (see Tetra Laval Holdings & Finance S.A. v. Mohammad Ali Mokhtari, WIPO Case No. DIR2010-0007; Tetra Laval Holdings & Finance S.A. v. Vahid Moghaddami, AzarNet.Co, WIPO Case No.. D2010-0268; Tetra Laval Holdings & Finance S.A. v. TetraPak Global PH-AU, Gerald Smith, WIPO Case No. D2012-0847; Tetra Laval Holdings & Finance S.A. v. Above.com Domain Privacy/ Belcanto Investment Group Limited, WIPO Case No. D2013-2200; Tetra Laval Holdings & Finance S.A. v. ICS Inc, WIPO Case No. D2014-0239; Tetra Laval Holdings & Finance S.A. v. Zhang Peng, WIPO Case No. D2015-0484; Tetra Laval Holdings & Finance S.A. v. Temme Steve/Steve Inc., WIPO Case No. D2015-1089), the Panel finds that it is highly unlikely that the Respondent chose to register the disputed domain name randomly with no knowledge of the Mark. See Barney's Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.

In addition, the Panel notes that many UDRP panels have held that bad faith use of a domain name by a respondent may also result from the fact its good faith use is in no way plausible (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148), considering the specificity of the activity.

Moreover, it is well established that the mere passive holding of a domain name may in appropriate circumstances be evidence not only of bad faith registration, but also of bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004; and Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260.

Furthermore, the Panel notes that the Respondent used a privacy shield service and under the present circumstances considers this fact as corroborative of bad faith. See Gaylord Entertainment Company v. Nevis Domains LLC, WIPO Case No. D2006-0696.

Finally, some UDRP panels have held that in certain circumstances, registrants of domain names have an affirmative duty to abstain from registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.

The Panel concludes in the light of all these circumstances that the Respondent's registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.

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, <tetrapakab.com>, be transferred to the Complainant.

Louis-Bernard Buchman
Sole Panelist
Date: November 26, 2015