WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tetra Laval Holdings & Finance S.A. v. Wang Zhihua
Case No. D2016-0753
1. The Parties
The Complainant is Tetra Laval Holdings & Finance S.A. of Pully, Switzerland, represented by Valea AB, Sweden.
The Respondent is Wang Zhihua of Shanghai, China.
2. The Domain Names and Registrar
The disputed domain names <cntetrapak.com>, <tetracarton.com>, <tetracarton.net>, <tetrapakco.com>, <tetrapakgroup.com>, <tetrapaper.com> and <tetrapaper.net> (the "Domain Names") are registered with HiChina Zhicheng Technology Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 15, 2016. On April 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 18, 2016, 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 April 20, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On April 20, 2016, 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 in both Chinese and English, and the proceedings commenced on April 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 19, 2016.
The Center appointed Karen Fong as the sole panelist in this matter on June 1, 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 Swiss corporation which is a part of the Tetra Laval Group. The Tetra Laval Group consists of three independent industry groups: Tetra Pak, DeLaval and Sidel Group. The Tetra Pak Group is a multinational food processing and packaging company founded in 1947 in Sweden by Ruben Rausing. The Tetra Pak Group develops, markets and sells equipment for the processing, packaging and distribution of foods. The Tetra Pak Group is now a part of the Tetra Laval Group.
The Tetra Pak Group is world leading within the development, production and sale of equipment and processing plants for making, packaging and distribution of foods and accessories. The Tetra Pak Group employs more than 32,000 people and is operative in more than 170 countries worldwide.
The Complainant owns all the Tetra Pak Group's trade marks throughout the world and licenses these trade marks to the independent market companies within the Tetra Pak Group for use in connection with their respective businesses. The Complainant owns the TETRA PAK trade mark, which is registered, both as word marks as well as part of device marks, in more than 160 countries throughout the world with more than 2000 registrations. This includes the Swedish Trade Mark Registration No. 71196 TETRA PAK, registered in 1951; European Union Trade Mark (EUTM) Registration No. 1202522 TETRA PAK; EUTM Registration No. 3276565 TETRA PAK PROTECTS WHAT'S GOOD (device mark); Chinese Registration No. 70315 TETRA PAK, registered in 1973. Furthermore the Complainant also owns the TETRA trademark which is registered throughout the world including EUTM No. 001202332 TETRA and Chinese Registration No. 178075 TETRA registered in 1983.
By virtue of the Complainant's long and extensive use of the TETRA PAK and TETRA marks (the "Trade Marks"), they are associated exclusively with the Complainant and its licensee and have been recognized as well-known trade marks by panels in previous UDRP cases.
Furthermore, the Complainant is the owner of more than 300 domain name registrations throughout the world containing the TETRA PAK mark distributed among generic Top-Level Domains ("gTLDs") and country-code Top-Level Domains.
The Domain Names were registered on March 10, 2016. The Domain Names have not been connected to active websites.
5. Parties' Contentions
The Complainant contends that the Domain Names are confusingly similar to the Trade Marks; the Respondent has no rights or legitimate interests with respect to the Domain Names; and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are 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 Names; and
(iii) The Domain Names were registered and are being used in bad faith.
B. Language of the Proceeding
The Rules, paragraph 11, provides that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to a disputed domain name, the language of the 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 proceedings. According to the information received from the Registrar, the language of the registration agreement for the Domain Names is Chinese.
The Complainant submits in Paragraph IV of the Complaint and confirmed in an email of April 26, 2016 that the language of the proceeding should be English. The Complainant contends that in the interest of ensuring fairness and the maintenance of an inexpensive and expeditious avenue of resolving disputes (L'Oreal v. Liao Quanyong, WIPO Case No. D2007-1552),the language of the proceeding should be English. To translate the Complaint and the annexes would cause substantial additional expense and delay. The Respondent has registered the Domain Names in Latin characters and in combination with generic terms in English which leads the Complainant to believe that the Respondent is conversant and proficient in the English language and the purpose of the registration is hijacking the Domain Names for commercial gain.
The Panel accepts the Complainant's submissions regarding the language of the proceeding and is satisfied that the Respondent appears to understand the English language. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that in any case all of the communications from the Center to the parties were transmitted in both Chinese and English. There is therefore no question of the Respondent not being able to understand the Complaint. The Respondent chose not to respond to the Complaint or the language of the proceeding issue by the specified due dates. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has registered and unregistered rights to the Trade Marks.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark most generally be recognizable within the domain name. In this case, the Domain Names contain the Complainant's distinctive trade marks TETRA PAK and TETRA in their entirety and also incorporate the following generic words and terms – "carton", "paper", "group" and "co" and the geographical term "cn". The addition of these terms which reflect the Complainant's business and the Respondent's geographical location do nothing to dispel confusion. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the gTLD suffix, in this case, ".com" or ".net".
The Panel therefore finds that the Domain Names are confusingly similar to the Complainant's Trade Marks and the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that it has not licensed or otherwise permitted the Respondent to use the Trade Marks. There is no relationship between the parties which would justify the registration of the Domain Name and nothing in the record, including the WhoIs information, suggests that the Respondent is commonly known by the Domain Names. The Respondent has no registered trade mark or trade name corresponding to the Domain Names. Its registration occurred later than those of a vast majority of the Complainant's Trade Marks.
The Respondent cannot have been ignorant of the rights held by the Complainant and the Trade Marks which have enjoyed a worldwide reputation since as early as 1952. Even a simple search on the Internet would have clearly indicated the rights of the Complainant. Hence, the TETRA PAK and TETRA trade marks are not marks that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant, in particular when adding terms that reflect the business of the Complainant.
Although the Domain Names are not being actively used, it has been concluded by the panel in Statoil ASA v. David Campbell, WIPO Case No. D2013-1130 (<statoilgroup.com>), that "since Respondent has no permission from Complainant, the Panel finds that based on the available evidence, Respondent's use of the disputed domain name is without rights or legitimate interests".
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
E. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Names have been both registered and used in bad faith. It is a conjunctive requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant's widely known Trade Marks when he registered the Domain Names. There can be no other explanation for combining the Trade Marks and the generic and geographic terms which reflect the Complainant's business and the Respondent's location other than to trade-off the goodwill and reputation of the Complainant's trade mark or otherwise create a false impression of association, sponsorship or endorsement with the Complainant. The registration of a third party's trade mark when one has no legitimate interest in such trade mark is clear evidence that the registration of the Domain Names was in bad faith.
None of the Domain Names are connected to active websites. The passive holding of the Domain Names does not prevent a finding of bad faith. The Consensus View in paragraph 3.2 of the WIPO Overview 2.0 states that the apparent lack of active use of a domain name without any active attempt to sell or to contact the trade mark owner does not prevent a finding of bad faith. The Panel has to examine the circumstances of the case to determine whether the respondent is acting in bad faith. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.
In addition to the circumstances of registration referred to above, the following facts indicate that the Domain Names are being used in bad faith – the Complainant has well known trade marks; the Respondent has registered a series of domain names incorporating the Trade Marks together with additional terms which reflect the business of the Complainant; the fax numbers and email addresses on the WhoIs are incorrect; and the Respondent has failed to file a response. Considering the circumstances, the Panel considers that the Domain Names are also being used in bad faith.
Accordingly, the Complaint has satisfied the third element of the UDRP.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <cntetrapak.com>, <tetracarton.com>, <tetracarton.net>, <tetrapakco.com>, <tetrapakgroup.com>, <tetrapaper.com> and <tetrapaper.net>, be transferred to the Complainant.
Date: June 20, 2016