WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tetra Laval Holdings & Finance S.A. v. Himali Hewage
Case No. D2020-0472
1. The Parties
The Complainant is Tetra Laval Holdings & Finance S.A., Switzerland, represented by Valea AB, Sweden.
The Respondent is Himali Hewage, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <tetrapaktubex.com> is registered with 1&1 IONOS SE (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2020. On February 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 2020, 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 March 9, 2020, 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 March 11, 2020.
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 March 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 17, 2020.
The Center appointed Andrew F. Christie as the sole panelist in this matter on May 7, 2020. 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: Tetra Pak Group, DeLaval Group, and Sidel Group. The Tetra Pak Group is a multinational food processing and packaging company founded in Sweden in 1947. It develops, markets and sells equipment for processing, packaging and distribution of foods, with products in a range of categories. The Tetra Pak Group is now a part of the Tetra Laval Group and employs more than 32,000 people and is operative in more than 170 countries worldwide, including the United States.
The Complainant’s TETRA PAK trademark is a combination of two word elements, “tetra” and “pak”. The element “tetra” comes from the word tetrahedron, the shape of the Complainant’s first liquid food carton, and the element “pak” is a shortening of the word “pack” or “package”. The Complainant owns numerous trademark registrations for the TETRA PAK trademark, in more than 160 countries throughout the world. These include Swedish Trademark Registration No. 71196 for the word TETRA PAK, registered in 1951, and United States Trademark Registration No. 580219 for the word TETRA PAK, registered in 1953.
The Complainant is also the owner of more than 300 domain name registrations throughout the world containing the TETRA PAK trademark, in generic Top-Level Domains (“gTLDs”) and country-code Top-Level Domains (“ccTLDs”).
The disputed domain name was registered on January 17, 2020. The Complainant has provided evidence that MX-records have been set up for the disputed domain name. Currently, it appears that the disputed domain name does not resolve to a website.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it has rights because: (i) it incorporates the entirety of its well-known trademark and trade name TETRA PAK followed by the trade name “Tubex”, which is one of the Complainant’s straw factories; (ii) the gTLD “.com” must be excluded from consideration as it has no legal significance; (iii) considering the worldwide brand awareness of the trademark TETRA PAK, an Internet user would most probably assume that the disputed domain name had a connection with the Complainant and its companies; and (iv) the disputed domain name is visually, phonetically, and conceptually confusingly similar to the Complainant’s well-known trademark TETRA PAK, and identical to the Complainant’s trade name “Tetra Pak Tubex”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the Complainant has not licensed or otherwise permitted the Respondent to use its trademark; (ii) there is no relationship between the parties which would justify the registration of the disputed domain name by the Respondent; (iii) there is nothing in the record, including in the WhoIs information, that suggests the Respondent is commonly known by the disputed domain name; (iv) the Respondent has no registered trademark or trade name corresponding to the disputed domain name; (v) the registration of the disputed domain name occurred later than the vast majority of the Complainant’s TETRA PAK trademark registrations; (vi) the TETRA PAK trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant and its business, and a simple search on the search engine Google would have clearly indicated the rights of the Complainant; and (vii) the Respondent is not making a bona fide offering of goods or services, is not commonly known by the disputed domain name, and is not making a noncommercial or fair use of the disputed domain name.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the Respondent must have known of the Complainant’s trademark TETRA PAK and its business related to the company “Tetra Pak Tubex”, and therefore could not have chosen or subsequently used the word “tetrapaktubex” in its domain name for any reason other than to trade off the goodwill and reputation of the Complainant’s trademark, or to create a false association, sponsorship or endorsement with the Complainant; (ii) the registration of a domain name confusingly similar to a registered trademark, by a person with no connection to that trademark, amounts to “opportunistic bad faith”; (iii) the disputed domain name has no meaning except for the reference to the trademark of the Complainant, and there is no way in which it could be used legitimately; and (iv) MX-records are set up for the disputed domain name and consequently there is a high risk that it is being, or will be, used in fraudulent email communications.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Once the gTLD “.com” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the Complainant’s registered word trademark TETRA PAK with the addition of the word “tubex”. The Complainant’s trademark is clearly recognizable within the disputed domain name. The addition of the word “tubex”, which is the trade name of one of the Complainant’s straw factories, does not avoid the confusing similarity between the disputed domain name and the Complainant’s word trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant. The Respondent has not been authorized by the Complainant to use its TETRA PAK trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. It appears that the disputed domain name does not currently resolve to a website. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name was registered many years after the Complainant first registered its TETRA PAK trademark. The evidence on the record provided by the Complainant with respect to the use of its TETRA PAK trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time of registration of the disputed domain name, the Respondent knew of the Complainant’s trademark. The evidence on the record provided by the Complainant shows that the Respondent has set up MX-records for the disputed domain name, indicating that the disputed domain name may be being used for fraudulent email communications. Given the Respondent’s lack of rights or legitimate interests in the disputed domain name, and the confusing similarity of the disputed domain name to the Complainant’s trademark, any use of the disputed domain by the Respondent for email communication would carry a high risk of implied affiliation with the Complainant and be a use in bad faith. Furthermore, given the Complainant’s substantial reputation in its trademark and the Respondent’s failure to submit a Response to the Complaint, it is not possible to conceive of any good faith use to which the Respondent could put the disputed domain name. The Respondent is, therefore, holding the disputed domain name in bad faith. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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 <tetrapaktubex.com> be transferred to the Complainant.
Andrew F. Christie
Date: May 21, 2020