WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tetra Laval Holdings & Finance S.A. v. Registration Private, Domains By Proxy, LLC / Marty Smith
Case No. D2019-0294
1. The Parties
The Complainant is Tetra Laval Holdings & Finance S.A. of Pully, Switzerland, represented by Valea AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States” or “US”) / Marty Smith of Cameron Park, New South Wales, Australia, self‑represented.
2. The Domain Name and Registrar
The disputed domain name <tetratrex.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2019. On February 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 7, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 8, 2019 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 February 12, 2019.
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 February 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2019. On February 13, 2019, and on February 21, 2019, the Center received two informal email communications from the Respondent. No Response was filed with the Center. On March 11, 2019, the Center informed the Parties that it would proceed to appoint the Panel.
The Center appointed Ellen B Shankman as the sole panelist in this matter on March 19, 2019. 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.
On March 22, 2019, the Center received an unsolicited communication from the Respondent, indicating, among other things, that it is not interested in keeping the Domain Name.
4. Factual Background
The date of the Domain Name registration was confirmed by the Registrar to be September 17, 2018.
The Panel also conducted an independent search to determine that the Domain Name resolves to an error message, and the website currently appears to be inactive.
The Complainant has trade mark registrations for TETRA REX in multiple jurisdictions including in Australia: Australia Trademark No. 1816397 (registered on December 16, 2016).
5. Parties’ Contentions
The Complaiant, Tetra Laval Holdings & Finance S.A. is a Swiss Corporation which is part of the Tetra Laval Group. The Complaint alleges that the Tertra 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 processing, packaging and distribution of foods. The Tetra Pak Group is now part of the Tetra Laval Group.
The Tetra Laval Group is among world leaders in food processing and packaging solutions, packaging equipment, distribution equipment, automation solutions and services. The Tetra Pak Group employs more than 32,000 people and operates in more than 170 countries worldwide.
The Complainant Tetra Laval Holdings & Finance S.A. owns all the Tetra Pak Group’s trademarks throughout the world and licenses these trademarks to the independent market companies within the Tetra Pak Group for use in connection with their respective businesses.
The Complaint alleges that the TETRA REX packaging was launched 1965 and this packaging became a staple item in fridges all over the world. The Complainant supplies the package TETRA REX to more than 860 brands worldwide in 50 markets and the total sale equals to 7.5 billion cartons annually. The TETRA REX package was historically used to replace heavy glass bottles for milk. Nowadays, the TETRA REX package is used for several foods and drink categories. Further, the Complainant launched a fully renewable package, TETRA REX Bio-based, which is rolled out to the Complainant’s customers worldwide. A regional version of the TETRA REX Bio-based package has been produced for the US market. During 2016 the Complainant delivered more than 100 million fully renewable packages to customers globally. In the last years, the package has been recognized with several awards including first place in the Sustainable Innovation category at the Ethical Corporation Responsible Business Awards – including recognition in Australia, where the Respondent appears to reside.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark TETRA REX, in respect of packaging and paper goods. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the letter “t” in the middle of the Domain Name that is a letter adjacent to the letter “r” on the keyboard, does not prevent a finding of confusing similarity. Therefore, the Domain Name <tetratrex.com> could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent registered the Domain Name through a proxy service which is also evidence of bad faith in this case. The Domain Name was registered and is being used in bad faith. That continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.
The Respondent sent three emails to the Center, the first dated February 13, 2019, asking about the procedure to which the Center provided a detailed and respectful response explanation; the second dated February 21, 2019, consisting of an expletive, the only portion of which the Panel includes here is the word “off” and six exclamation points; and the third dated March 22, 2019, indicating that it is not interested in keeping the “bloody” Domain Name. No other official response was filed with the Center.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for TETRA REX.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the mere addition of the letter “t” buried in the middle to the Domain Name does not change the overall impression of the designation as being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.”
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often‑impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name <tetratrex.com> and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the distinctiveness of the Complainant’s trademark and reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark and uses it for the purpose of misleading and diverting Internet traffic.
Further, the Panel finds that the passive holding of the Domain Name in this case, together with the proxy registration, to be evidence of bad faith registration and use. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.3 supports the position that a “passive holding” or non-use of a domain name may still support a finding of bad faith. Further, WIPO Overview 3.0, section 3.6 supports other circumstances where the use of a privacy or proxy services supports an inference of bad faith and the respondent may file a response to refute such inference. In this case the Panel does make such inference and it has not been disputed by the Respondent – and rather reinforced by the Respondent’s pointed email correspondence with the Center.
Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of and the Respondent’s email replies to the Center, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under 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 <tetratrex.com> be transferred to the Complainant.
Ellen B Shankman
Date: March 25, 2019