WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tetra Laval Holdings & Finance S.A. v. Named Redacted
Case No. D2015-2034
1. The Parties
The Complainant is Tetra Laval Holdings & Finance S.A. of Pully, Switzerland, represented by Valea AB, Sweden.
The Respondent is Named Redacted.
2. The Domain Name and Registrar
The disputed domain name <tetrapak-uk.com> is registered with eNom (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 10, 2015. On November 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 10, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 16, 2015 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 November 18, 2015.
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 proceedings commenced on November 25, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 16, 2015.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on December 23, 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.
In light of the Complainant's unrebutted contentions that the registrant name used in the registration of the disputed domain name is fraudulent and in fact reflects the identity of one of the Complainant's employees (who is unconnected to these proceedings), the Panel has decided to redact the name of the Registrar-confirmed registrant of the disputed domain name in this Decision. Attached as Annex 1 to this Decision is an instruction to the Registrar regarding transfer of the disputed domain name that includes the name of the referenced individual, and the Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel directs the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published based on exceptional circumstances. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.
4. Factual Background
The Complainant, Tetra Laval Holdings & Finance S.A. is a Swiss corporation which is part of the Tetra Laval Group which, in turn, includes the Tetra Pak Group, a multinational food and packaging company founded in Sweden in 1947 which operates worldwide in the development, production and sale of equipment and processing plants for the making, packaging and distribution of foods and accessories.
The Complainant owns all the Tetra Pak Group's trademarks throughout the world and licenses these trademarks to the companies within the Tetra Pak Group for use in connection with their respective businesses.
The Complainant owns a vast number of TETRA PAK trademark registrations throughout the world, including Swedish Registration No. 71196 registered in 1951, CTM Registration No.1202522, US Registration No. 4,374,470 and many more which were registered long before the disputed domain name <tetrapak‑uk.com> was registered on November 5, 2015.
Furthermore, the Complainant owns many domain names containing the TETRA PAK trademark distributed among generic Top-Level Domains ("gTLDs") and country code Top-Level Domains.
5. Parties' Contentions
The Complainant contends the following:
That it owns the trademark TETRA PAK, which is registered both as a word mark and as part of device marks in more than 160 countries with more than 2000 registrations.
The Tetra Pak Group is world leading within the development, production and sale of equipment and processing plants for the making, packaging and distribution of foods and accessories.
By virtue of its long use and renown the TETRA PAK trademark is associated exclusively with the Complainant and its licensee.
The reputation associated with the Complainant's mark is excellent due to the quality of the goods and services which it identifies in the marketplace. Therefore, TETRA PAK is undisputedly considered a well-known trademark within its field of business.
The disputed domain name <tetrapak-uk.com> is visually, phonetically and conceptually confusingly similar to the Complainant's trademark and trade name TETRA PAK.
The Respondent has no rights or legitimate interests in respect of the disputed domain name, which was registered and is being used by the Respondent in bad faith.
There is currently no active website under the disputed domain name <tetrapak-uk.com>. However, the Respondent is using the disputed domain name for phishing emails for obtaining personal and financial information.
The Respondent is using in these emails the name of an employee of the Complainant to contact other employees of the Complainant for the purpose of fraudulently making travel reservations.
Finally, the Complainant requests that the Panel order that the disputed domain name <tetrapak-uk.com> be transferred to the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
For the Complaint to succeed in this proceeding, under paragraph 4(a) of the Policy, it must prove 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel considers that under the Policy the disputed domain name <tetrapak-uk.com> and the trademark TETRA PAK are confusingly similar.
Following what has become the consensus view among UDRP panels (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2) the Panel shall disregard the gTLD ".com" when performing the confusing similarity test.
When spoken, "tetrapak" and "tetra pak" sound identical. The addition of a hyphen and the letters "uk" in the disputed domain name, far from constituting a significant difference, only contribute to emphasize confusion by leading Internet consumers to think that the disputed domain name refers to a business of the Complainant in the United Kingdom of Great Britain and Northern Ireland.
Therefore, the Complainant has succeeded on this first element of the Policy.
B. Rights or Legitimate Interests
The second element that the Complainant must prove pursuant to paragraph 4(a)(ii) of the Policy is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in paragraph 4(a) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.
Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a prima facie showing of a respondent's lack of rights or legitimate interests in a domain name, the burden of submitting evidence in this regard shifts to the respondent. The respondent must then by concrete evidence demonstrate its rights or legitimate interests in the disputed domain name in order to refute the prima facie case.
The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and so the burden of production of evidence has effectively been shifted to the Respondent, who did not reply to the Complainant's contentions and, therefore, has not made such showing.
As argued by the Complainant, none of the circumstances provided in paragraph 4(c) of the Policy, nor any other circumstances demonstrate the Respondent's rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has made out the second prong of the Policy.
C. Registered and Used in Bad Faith
In accordance with paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the domain name has been registered and is being used in bad faith.
The Policy in paragraph 4(b) sets out various circumstances, which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.
The fame of the trademark TETRA PAK has been confirmed in previous UDRP cases; such as: Tetra Laval Holdings & Finance S.A. v. Tetra Pak Global PH-AU, Gerald Smith, WIPO Case No. D2012-0847; Tetra Laval Holdings & Finance S.A. v. Vahid Moghaddami, AzarNet.Co., WIPO Case No. D2010-0268; Tetra Laval Holdings & Finance v. Zhang Peng, WIPO Case No. D2015-0484 and others referred to in the Complaint.
In the light of the information and evidence produced by the Complainant, when the Respondent registered the disputed domain name <tetrapak-uk.com> on November 5, 2015 it knew or should have known of the existence of the Complainant's TETRA PAK name and trademark, which evidences bad faith registration.
While the disputed domain name does not resolve to an active website, the Panel is of the view that the Respondent could not make any legitimate use of the disputed domain due to its similarity with the Complainant's well-known trademark TETRA PAK. This has been held to amount to registration and use in bad faith. Following the criteria of the UDRP panel in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the Panel in this case cannot think of any plausible contemplated active use of the disputed domain name by the Respondent that would not be illegitimate.
The Complainant contends that the Respondent is using the name of an employee to contact other employees of the Complainant for the purpose of fraudulently making travel reservations, as evidenced in Annex H, by using the address: […]@tetrapak-uk.com.
Furthermore, the Complainant alleges that the Respondent is using the disputed domain name for fraudulent email communications for receiving personal and financial information and gives the impression in these emails that the Respondent is associated with the Complainant. None of these allegations have been denied by the Respondent. It is well known that "phishing" is a form of Internet fraud that aims to steal valuable and sensitive information such as credit card numbers, passwords, etc.
It seems to this Panel that the registration and use of the disputed domain name by the Respondent was motivated by the intention to capitalize on the reputation of the Complainant's trade name and trademark TETRA PAK.
For such reasons and in the absence of any Response from the Respondent to the Complainant's allegations, the Panel finds that the Respondent both registered and is using the disputed domain name in bad faith and that the Complainant has therefore made out the third element of its case.
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 <tetrapak-uk.com> be transferred to the Complainant.
Miguel B. O'Farrell
Date: January 5, 2016