WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tetra Laval Holdings & Finance S.A. v. WhoisGuard Protected, WhoisGuard, Inc. / Zetao Wang

Case No. D2021-0559

1. The Parties

Complainant is Tetra Laval Holdings & Finance S.A., Switzerland, represented by Aera A/S, Denmark.

Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Zetao Wang, China.

2. The Domain Name and Registrar

The disputed domain name <tetrapak-com.xyz> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2021. On February 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 24, 2021, 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 March 3, 2021 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 March 5, 2021.

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 March 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2021. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on April 6, 2021.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on April 13, 2021. 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

Complainant is a Swiss corporation whose related entity, the Tetra Pak Group, is a multinational food processing and packaging company. Complainant is the proprietor of registrations in more than 160 countries for the TETRA PAK mark, including the following:

- Swedish Trademark No. 71196 for TETRA PAK (word mark), registered on December 14, 1951 for goods in classes 6, 7, and 16;

- European Union Trade Mark 001202522 for TETRA PAK (word mark), registered on October 2, 2000 for goods and services in classes 6, 7, 9, 11, 16, 17, 20, 21, 29, 30, 32, 33, and 37;

- International Trademark 1146433 for TETRA PAK (word mark), registered on November 6, 2012 for goods and services in classes 7, 11, 16, 29, 30, 32, 33, 37, and 42;

- Chinese Trademark 70315 for TETRA PAK (word mark), registered on March 22, 2003 for goods in class 7;

- Chinese Trademark 1657801 for TETRA PAK (in Chinese characters), registered on October 28, 2001 for goods in class 7.

Complainant and its licensees own more than 300 domain name registrations containing the TETRA PAK mark.

The disputed domain name was registered on February 18, 2021. Previously, the disputed domain name resolved to a site featuring pay-per-click links. Additionally, MX servers have been configured for the disputed domain name. The Complaint refers to a fraudulent e-mail sent by Respondent using the disputed domain name, but the record did not contain a copy of said email.

5. Parties’ Contentions

A. Complainant

Complainant’s contentions may be summarized as follows:

Under the first element, Complainant states that the Tetra Pak Group was founded in Sweden in 1947 and is the world leading company within development, production, and sale of equipment and processing plants for making, packaging, and distributing foods and accessories. The Tetra Pak Group employs more than 25,000 employees and operates in more than 160 countries worldwide. The TETRA PAK mark is registered with more than 1,500 registrations in 160 countries and has been recognized by previous UDRP panels as a famous mark. The disputed domain name incorporates the entirety of the TETRA PAK mark.

Under the second element, Complainant states that Respondent is not affiliated or related to Complainant in any way and has no authorization to use the TETRA PAK mark for any purpose. Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, is not generally known by the disputed domain name, and has not acquired any rights in the mark. The disputed domain name points to a site featuring pay-per-click advertisements. Additionally, MX records have been set up for the disputed domain name. Respondent has used the disputed domain name to send phishing emails to employees of Complainant.

Under the third element, Complainant states that, due to the composition of the disputed domain name, Respondent must have known of Complainant’s TETRA PAK brand and business. The TETRA PAK mark is well-known. The use of the disputed domain name in phishing emails is not likely to amount to a mere coincidence. Respondent impersonated an employee of Complainant to obtain information and money. Such a scam cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use.

Complainant requests transfer of the disputed domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:

(i) the disputed domain names are 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 disputed domain names; and

(iii) Respondent has registered and is using the disputed domain names in bad faith.

A. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the TETRA PAK mark through registrations internationally, including in China, where Respondent is based. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview 3.0, section 1.2.1.

Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”

In comparing Complainant’s TETRA PAK mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar with Complainant’s mark. The disputed domain name contains Complainant’s TETRA PAK mark in its entirety, and the addition of the term “-com” does not prevent a finding of confusing similarity with Complainant’s TETRA PAK mark. See Microsoft Corporation v. Charilaos Chrisochoou, WIPO Case No. D2004-0186.

It is the well-established view of UDRP panels that the generic Top-Level Domain (“gTLD”), here “.xyz”, is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).

Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it 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 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 circumstances stated in the Complaint, the Amended Complaint, and evidence in support set forth in the annexes thereto indicate that, at the time that Respondent registered the disputed domain name, Respondent had no rights or legitimate interests in the disputed domain name. The nature of the disputed domain name, which comprise Complainant’s TETRA PAK mark together with the term “-com”, cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by the trademark owner. Such use does not establish rights or legitimate interests in the disputed domain name. See, for example, Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057.

The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names.

Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain names.

Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. The uncontested evidence in the record indicates that, at the time of filing of the Complaint, the disputed domain name resolved to a pay-per-click website, which does not confer rights or legitimate interests on Respondent as the disputed domain name is comprised primarily of Complainant’s long-established mark rather than a dictionary word. Philip Morris USA Inc. v. Prophet Partners Inc., WIPO Case No. D2007-1614.

Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.

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 a disputed domain name in bad faith:

(i) circumstances indicating that Respondent has registered or has acquired the disputed 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 the documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered the disputed 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) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed 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 finds that Respondent has demonstrated bad faith through registration and use of the disputed domain name. This Panel concurs with previous UDRP panels that the TETRA PAK mark is well-known in the field of food packaging, and that Respondent had Complainant’s mark in mind when registering the disputed domain name. Tetra Laval Holdings & Finance S.A. v. Privacy Hero Inc / Pat Honeysalt, Honey Salt Ltd., WIPO Case No. D2020-3398 and cases cited therein. The disputed domain name resolves to a pay-per-click website for commercial gain, which is indicative of bad faith. See WIPO Overview 3.0, section 3.5, and cases cited thereunder; see also, Harpo, Inc. and Oprah’s Farm, LLC v. Robert McDaniel, WIPO Case No. D2013-0585. The configuration of MX records for email is additionally indicative of probable use of the disputed domain name for the purpose of impersonating Complainant and misleading Internet users. See Drägerwerk AG & Co. KGaA v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / BLACK ROSES, WIPO Case No. D2020-3167.

Respondent has failed to file any response or provide any evidence of actual or contemplated good faith use, and the circumstances do not make any such use plausible.

The Panel therefore finds that Complainant has established the third element under paragraph 4(a) of the Policy.

7. Decision

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-com.xyz> be transferred to Complainant.

Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: April 27, 2021