WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tetra Laval Holdings & Finance S.A. v. Harry Bradley, Harry B. Holdings Ltd.
Case No. D2016-0616
1. The Parties
The Complainant is Tetra Laval Holdings & Finance S.A. of Pully, Switzerland, represented by Valea AB, Sweden.
The Respondent is Harry Bradley, Harry B. Holdings Ltd. of the United Kingdom of Great Britain and Northern Ireland ("UK").
2. The Domain Name and Registrar
The disputed domain name <teitrapak.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 31, 2016. On March 31, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 1, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 3, 2016.
The Center appointed Marcin Krajewski as the sole panelist in this matter on May 23, 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.
4. Factual Background
The Complainant is a corporation based in Switzerland forming a part of the Tetra Laval Group which consists of three independent industrial groups, including the Tetra Pak Group. The latter is a food processing and packaging company which operates in more than 170 countries in the world and employs more than 32,000 people. The Complainant owns all the trademarks used by Tetra Pak Group. In particular, the Complainant holds the following:
- Community Trademark Registration No. 1202522 for the nominative trademark consisting of the words TETRA PAK, published on November 13, 2000;
- Swedish Trademark Registration No. 71196 for the nominative trademark consisting of the words TETRA PAK, registered on December 14, 1951;
- UK Trademark Registration No. 921965 for the nominative trademark consisting of the words TETRA PAK, published on July 29, 1970;
- International Trademark Registration No. 1146433 for the nominative trademark consisting of the words TETRA PAK, registered on November 6, 2012
The Complainant holds more than 300 domain name registrations, most of them including the words TETRA and PAK or their variations.
The Respondent registered the disputed domain name on March 16, 2016. It does not resolve to an active website.
In March 2016 the disputed domain name was used to send fraudulent emails. The emails aimed at diverting payment, due from a Tetra Pak Group customer, to an unknown bank unassociated with a real Tetra Pak Group account, and were signed using the name of an employee of the Tetra Pak Group.
5. Parties' Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are present in this case. In particular the Complainant claims that:
(i) The disputed domain name is confusingly similar to trademarks in which the Complainant has rights
The Complainant claims that the disputed domain name is purposefully misspelled by the addition of the letter "i" to the Complainant's famous trademarks. This misspelling is a classic example of typosquatting, a practice by which a domain name registrant deliberately introduces slight deviations into a famous mark for commercial gain.
According to the Complainant the addition of the generic Top-Level Domain ("gTLD") should be considered irrelevant to the assessment of confusing similarity between the Complainant's trademarks and the disputed domain name.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name
The Complainant contends that none of the situations listed in paragraph 4(c) of the Policy can be established in the present case. No license or permission of any kind has been given by the Complainant to the Respondent to use the Complainant's trademarks. The Respondent is not affiliated with or in any other way related to the Complainant. Nothing in the record suggests that the Respondent is commonly known by the disputed domain name.
The Complainant claims that the Respondent has no registered trademark or trade name corresponding to the disputed domain name, which was registered much later than the vast majority of the Complainant's famous trademarks. According to the Complainant this means that the Respondent cannot have been ignorant of the rights held by the Complainant.
The Complainant contends that the Respondent is using the disputed domain name to send "phishing" emails in order to obtain fraudulent financial gains. The Respondent's aim is to create the impression that the emails are sent by an actual Tetra Pak Group employee. Such a phishing scheme cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.
(iii) The disputed domain name was registered and is being used in bad faith
The Complainant contends that the Respondent must have known of the Complainant's trademarks when registering the disputed domain name. In this connection the Respondent could not have chosen or subsequently used the term "teitrapak" in the disputed domain name for any reason other than to trade off the goodwill and reputation of the Complainant's TETRA PAK trademarks or otherwise to create a false impression of association with, sponsorship from or endorsement by the Complainant.
The Complainant cites a previous UDRP case to support the proposition that the registration and use of a domain name in connection with a fraudulent phishing scheme constitutes bad faith under the Policy. When using the disputed domain name the Respondent creates an apparent likelihood of confusion with the intention of taking advantage of the Complainant's famous trademarks and fraudulently sending email communications.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the following facts must be established in order to grant the Complainant the remedy requested:
(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 Panel agrees with the prevailing opinion from past UDRP panels that a domain name which contains a common or obvious misspelling of a trademark should be found confusingly similar to that trademark.
Therefore, the Panel agrees with the Complainant that the addition of the letter "i" in the disputed domain name does not prevent a finding of confusing similarity between the disputed domain name <teitrapak.com> and the Complainant's TETRA PAK trademarks.
For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the gTLD suffix ".com" is typically disregarded as being simply a necessary component of a domain name registration.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances establishing a respondent's rights or legitimate interests in a domain name. However, it seems that none of the mentioned circumstances is present in this case. In particular, there is no evidence that the Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use.
In light of its fraud allegations, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has chosen not to respond to the Complaint, and thus has failed to provide any evidence of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove registration as well as use in bad faith of the disputed domain name.
The Panel finds it obvious that the Respondent knew of the existence of the Complainant's trademarks and had these trademarks in mind at the time of registration of the disputed domain name. The Panel, therefore, finds that the disputed domain name was registered in bad faith.
It is equally clear that the disputed domain name is also being used in bad faith. However, the Panel cannot agree with the Complainant that the disputed domain name was used to launch phishing attacks. "Phishing" is a form of Internet fraud that aims to obtain valuable information such as credit card numbers, user IDs, passwords or other personal data. In contrast, the aim of the emails mentioned and attached to the Complaint was not to steal such data but to directly divert money transfers due from Tetra Pak Group's customer to an unknown bank account, presumably held by a fraudster.
However, this Panel finds that if supporting a phishing scheme is regarded as an example of using a domain name in bad faith (See e.g., DeLaval Holding AB v. Registration Private, Domains By Proxy LLL / Craig Kennedy, WIPO Case No. D2015-2135, and other cases cited in this decision), then this is all the more reason why bad faith must be found in the circumstances of the present case, where the disputed domain name was used in an attempt to perpetrate a more common form of fraud.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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 <teitrapak.com> be transferred to the Complainant.
Date: June 1, 2016