WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tetra Laval Holdings & Finance S.A. v. Privacy Hero Inc / Pat Honeysalt, Honey Salt Ltd.
Case No. D2020-3398
1. The Parties
Complainant is Tetra Laval Holdings & Finance S.A., Switzerland, represented by Aera A/S, Denmark.
Respondent is Privacy Hero Inc., Turks and Caicos Islands / Pat Honeysalt, Honey Salt Ltd., United Kingdom, represented by Orrick, Herrington & Sutcliffe, LLP, United States of America.
2. The Domain Name and Registrar
The disputed domain name <tetrapak.sucks> is registered with Rebel Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2020. On December 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 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 Complainant on December 23, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 28, 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 Respondent of the Complaint, and the proceedings commenced on December 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 18, 2021. On January 12, 2020, the Registrar informed the Center that it had provided incomplete contact information for the Respondent. Accordingly, on January 15, 2021, the Center formally notified Respondent of the Complaint using the complete contact information provided by the Registrar and also informed the Parties that the due date for Response was extended until February 4, 2021.
On January 21, 2021, Complainant filed a supplemental filing with the Center. The Response was filed with the Center February 4, 2021.
The Center appointed Marina Perraki, Petter Rindforth, and Douglas M. Isenberg as panelists in this matter on February 23, 2021. The Panel finds that it was properly constituted. Each member of 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.
The Panel decided not to accept the unsolicited supplemental filing of Complainant. The Panel finds that Complainant has not satisfactorily explained why it was unable to provide the information and documents contained therein in its Complaint and amended Complaint (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6).
4. Factual Background
Complainant is a Swiss corporation which is part of the Tetra Laval Group. The Tetra Laval Group consists of three independent industry groups, one of which is Tetra Pak. Tetra Pak is a multinational food processing and packaging company founded in 1947 in Sweden. It develops, markets, and sells equipment for processing, packaging, and distribution of food products. Per Complainant, the Tetra Pak Group is a world leader in the development, production, and sale of equipment and processing plants for making, packaging, and distributing foods and accessories. It employs more than 25,000 people and is operative in more than 160 countries worldwide.
Complainant owns numerous trademark registrations for TETRA PAK including:
- Swedish trademark registration TETRA PAK (word), no. 71196, registered on December 14, 1951;
- United States trademark registration TETRA PAK (word), no 586480, filed on January 10, 1952, and registered on March 9, 1954, for goods in international class 2;
- European Union trademark registration TETRA PAK (word), no. 001202522, filed on June 10, 1999, and registered on October 2, 2000, for goods and services in international classes 6, 7, 9, 11, 16, 17, 20, 21, 29, 30, 32, 33, and 37; and
- International trademark registration TETRA PAK (word), no. 1146433, registered on November 6, 2012, for goods and services in international classes 7, 11, 16, 29, 30, 32, 33, 37, and 42.
Furthermore, per Complaint, Complainant is the owner of more than 300 TETRA PAK domain name registrations.
The Domain Name was registered on December 10, 2020, and resolves to a website that prominently displays Complainant’s trademark and contains what appears to be information about Complainant’s group and allegedly third party comments allegedly about Complainant, albeit mostly general and not referring specifically to Complainant, unnamed and undated, as well as links to other webpages with similar content about other brands, all under domain names combining a brand with the generic Top-Level Domain (“gTLD”) “.sucks” (the Website).
The Website also contains links to news sites and social media extracts in relation to Complainant bearing dates older than the registration of the Domain Name (e.g., November 3, 2019, September 14, 2020, September 15, 2020, etc.).
Furthermore, as Complainant has demonstrated, the Domain Name, immediately following its registration, namely at least on December 14, 2020, was being offered for sale for the amount of USD 2,598.
5. Parties’ Contentions
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for the transfer of the Domain Name.
Respondent asserts that Complainant has not established any of the three elements required under paragraph 4(a) of the Policy for the transfer of the Domain Name.
Per the Response, Respondent was formed on February 12, 2020, in order to register and hold domain names for the benefit of a non-profit organization, Everything.sucks Inc., which per Respondent, operates a platform for criticism and commentary on various topics, where users may create respective “Wiki” style webpages on which to post the relevant commentary. Per the Response, when Respondent registered the Domain Name, it caused it to resolve to such a corresponding Wiki page for Complainant (i.e., the Website), while its primary purpose was to provide a forum for users to engage in free expression and criticism of Complainant’s group. Respondent acknowledges that it offered the Domain Name for sale. Respondent also acknowledges that it has registered multiple domains combining a brand with the gTLD “.sucks”.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Domain Name consists of Complainant’s mark TETRA PAK.
The generic Top-Level Domain (“gTLD”) “.sucks” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122). The practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD (including with regard to “new gTLDs”) (Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt, WIPO Case No. D2020 – 2836). The Panel shall follow the approach described in sections 1.11 and 1.13 of the WIPO Overview 3.0, and address the merits of the case under the second and third elements (Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt, WIPO Case No. D2020-2836).
As further discussed in section 1.13 of the WIPO Overview 3.0, domain names consisting of a trademark and a negative or pejorative term are considered confusingly similar to the complainant’s trademark for the purpose of satisfying standing under the first element. The merits of such cases, in particular as to any potential fair use, are typically decided under the second and third elements. This section of the WIPO Overview 3.0 reflects practice involving domain names in the format <[trademark][negative term].TLD>. In recent cases involving <[trademark].sucks> domain names, Panels have found the respective domain names as either identical or confusingly similar to the trademarks of the complainants. See Naos vs. Honey Salt Ltd., CAC Case No.103142, for the domain name <bioderma.sucks>, Boehringer Ingelheim Pharma GmbH & Co. KG vs. Honey Salt Ltd., CAC Case No.103141, for the domain name <mirapex.sucks>, and Lockheed Martin Corporation v. Sam Kadosh, NAF Case No. FA1710001751762, for the domain name <lockheedmartin.sucks>.
The Panel finds that the Domain Name is identical to the TETRA PAK mark of Complainant.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to Respondent of the dispute, 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) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) 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 trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
As per Complainant, Respondent is neither affiliated with Complainant nor was it authorized to register the Domain Name. Respondent does not carry out any activity for, nor has any business with Complainant.
Respondent has not demonstrated that it has used the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrated and Respondent acknowledged, the Domain Name was being offered for sale for the amount of USD 2,598, which apparently exceeds Respondent’s out-of-pocket expenses and that, soon after its registration.
Respondent submitted evidence that its business model involves acquiring and reselling “.sucks” domain names to third parties (Annex 1, par. 9 of its evidence).
Furthermore, the Website contains many links to other webpages about third parties’ brands, with similar content, and Respondent has not provided a plausible explanation about the inclusion of these links on the Website. In the absence of such explanation, it appears not unlikely to the Panel, also in view of the admitted above aspect of the business model of Respondent, that the inclusion of these links was intended to increase the traffic to the respective domain names and websites, which would increase their attractiveness and price in case they are being offered for sale (Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt, WIPO Case No. D2020-2836). The Panel takes also into account that, as Respondent asserted, Respondent has registered multiple domains combining a third party brand with the gTLD “.sucks”.
Respondent submits that it has rights or legitimate interests in the Domain Name on the basis free speech and rights to criticism. However, Respondent asserts that it only uses the Domain Name to host a criticism website allowing independent third users to exercise their free speech rights to post criticism of Complainant’s business and this in the context of the third party Everything.sucks Inc. platform.
It follows that Respondent acknowledges that it is not itself exercising any free speech rights, but rather assists another entity to provide an online platform for third parties who may eventually wish to exercise their free speech rights. Respondent is therefore a third party and does not provide evidence of any direct relationship with any person who might be able to invoke rights of free speech and the fair use defense under the Policy (Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt, WIPO Case No. D2020-2836).
In any case, even if Respondent were in a position to invoke such rights (which is not the case at issue) as discussed in sections 2.6.1 – 2.6.3 of the WIPO Overview 3.0, to support fair use under UDRP paragraph 4(c)(iii), the respondent’s criticism must be genuine and noncommercial. In a number of UDRP decisions where a respondent argues that its domain name is being used for free speech purposes the panel has found this to be primarily a pretext for cybersquatting, commercial activity, or tarnishment (Marc John Randazza v. Contact Privacy Inc. Customer 1248477621 / Don Juravin, WIPO Case No. D2020-3041; Wikimedia Foundation Inc. v. Protected Domain Services - Customer ID: NCR 1181691 / webudaipur, web Udaipur, WIPO Case No. D2011-0107).
Under the circumstances of the present case, the Panel is not satisfied that the Website is an actual “gripe site” that could represent genuine and fair exercise of the right of free speech, giving rise to rights or legitimate interests of Respondent in the Domain Name.
Instead, it appears not unlikely to the Panel that the Website has been set up to serve as a pretext to create the impression that the registration and use of the Domain Name is legitimate and not in bad faith, and that the actual intent behind the actions of Respondent is possibly to increase the price that it may receive from the sale of the Domain Name (Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt, Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt, WIPO Case No. D2020-2836; De Beers Intangibles Limited v. Domain Admin, Whois Privacy Corp., WIPOCase No. D2016-1465).
To that end, the Panel takes into account the fact that the Domain Name was being offered for sale at an amount apparently exceeding Respondent’s out-of-pocket expenses and the business model admitted to by Respondent, which involves acquiring and reselling “.sucks” domain names to third parties (see also Capsugel Belgium NV v. Honey Salt Ltd. / Privacy Hero Inc., NAF case No. FA2101001927725, for the domain name <capsugel.sucks>, a case also involving Respondent).
The Panel notes that in any case, according to WIPO Overview 3.0, section 2.6.2, panels find that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark (i.e., <trademark.tld> (including typos)); even where such a domain name is used in relation to genuine noncommercial free speech, panels tend to find that this creates an impermissible risk of user confusion through impersonation (Crystal Lagoons B.V. v. Edward Cook, WIPO Case No. DEU2018-0004).
A respondent has a legitimate interest in using a trademark as part of the domain name of a criticism site if such use is prima facie noncommercial, genuinely fair, and not misleading or false (WIPO Overview 3.0, section 2.6.3). A limited degree of incidental commercial activity may be permissible in certain circumstances (e.g., as “fundraising” to offset registration or hosting costs associated with the domain name and website).
The Panel finds that in the present case these conditions are not met: a) the Domain Name was being offered for sale at an amount apparently exceeding the out-of-pocket expenses of Respondent soon after its registration, b) the criticisms included in the Website are not of Respondent itself, c) the comments appear anonymously and without dates on the Website, with no supporting evidence on their genuiness, d) the Website contains many links to other analogous “.sucks” webpages about third parties’ brands and Respondent has acknowledged that it is the registrant of multiple such domain names, whereas its business model involves acquiring and reselling such domain names, and e) the trademark TETRA PAK of Complainant is depicted prominently on the Website.
On top of all of this, the related Website contains links to news sites and social media extracts in relation to Complainant bearing dates older than the registration of the Domain Name; this raises a serious question about the overall veracity of Respondent’s claims and motivations.
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Lastly, the Panel notes that under WIPO Overview 3.0, section 4.8, “Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision”. In the present case, to the knowledge of the Panel, in three other UDRP cases for “.sucks” domain names that lead to analogous webpages, with the same Respondent, a transfer of the domain name was ordered (Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt, WIPO Case No. D2020-2836, for the domain name <sanofi.sucks>; Cargotec Oyj, Cargotec Patenter AB v. Honey Salt Ltd., CAC Case 103423, for the domain name <cargotec.sucks>; and, Naos v. Honey Salt Ltd., CAC Case No.103142, for the domain name <bioderma.sucks>).
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Complainant’s mark TETRA PAK is well known in the field of food packaging, as repeatedly recognised (Tetra Laval Holdings & Finance S.A. v TetraPak Global PH-AU, Gerald Smith WIPO Case No. D2012-0847; Tetra Laval Holdings & Finance S.A. v. Kilt Kully Huy, WIPO Case No. D2019-0802; and, Tetra Laval Holdings & Finance v. ddd Firat Analiz, WIPO Case No. D2019-2864).
Because the TETRA PAK mark had been widely used and registered at the time of the Domain Name registration by Respondent, the Panel finds that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000‑0226). Such knowledge has in any case been acknowledged by Respondent in its Response.
As set forth in section 3.1.4 of WIPO Overview 3.0, panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. In the case at issue, as Complainant has demonstrated, the TETRA PAK trademark is widely known and is reproduced in the Domain Name in its entirety.
As regards bad faith use, Complainant has demonstrated that the Domain Name was being offered for sale shortly after its registration for the amount of USD 2,598. This, in view of the finding that Respondent has no rights to or legitimate interests in the Domain Name, constitutes evidence of bad faith use (Aygaz Anonim Sirketi v. Arthur Cain, WIPO Case No. D2014-1206; WIPO Overview 3.0, section 3.1). The distinctiveness of the TETRA PAK trademark and the fact that the Domain Name is an exact match to it, coupled with the finding of a pretext above, is clear evidence that an offer to sell the Domain Name constitutes bad faith.
As discussed under the section on rights and legitimate interests, the Panel finds that the Domain Name has not been used in connection with any genuine noncommercial criticism of Respondent itself against Complainant, and the content of the Website includes anonymous and undated comments without any indication or evidence that these were genuine comments. It seems not unlikely, also in view of Respondent’s admitted business practice of acquiring and reselling “.sucks” domain names, that the Website has been set up as a pretext and that its aim was to take unfair commercial advantage of Complainant’s TETRA PAK trademark by increasing Internet traffic to the associated website and to other websites of Respondent or of a third party related to Respondent (and possibly the prices of the domain names to which these websites resolve) (see also Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt, Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt, WIPO Case No. D2020-2836).
The Panel also notes that the Domain Name was registered with a privacy shield service to hide the registrant’s identity.
Finally, the Panel notes the pattern of abusive registrations in which Respondent has been involved (see Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt, WIPO Case No. D2020-2836, for the domain name <sanofi.sucks>; Cargotec Oyj, Cargotec Patenter AB v. Honey Salt Ltd., CAC Case 103423, for the domain name <cargotec.sucks>; Naos v. Honey Salt Ltd., CAC Case No.103142, for the domain name <bioderma.sucks>; and, Capsugel Belgium NV v. Honey Salt Ltd. / Privacy Hero Inc., NAF Case FA2101001927725, for the domain name <capsugel.sucks>). This pattern, established by the decisions cited above, further supports a finding of bad faith pursuant to paragraph 4(b)(ii) of the Policy, which provides that a “pattern of such conduct” is evidence of bad faith.
Under these circumstances and on this record, the Panel finds that Respondent has registered and used the Domain Name in bad faith.
Complainant has established Policy paragraph 4(a)(iii).
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.sucks> be transferred to the Complainant.
Douglas M. Isenberg
Date: March 9, 2021