WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tetra Laval Holdings & Finance S.A. v. Registration Private, Domains by Proxy, LLC / Brian Potvin
Case No. D2021-3443
1. The Parties
Complainant is Tetra Laval Holdings & Finance S.A., Switzerland, represented by Aera A/S, Denmark.
Respondent is Registration Private, Domains by Proxy, LLC, United States of the America (“United States”) / Brian Potvin, United States.1
2. The Domain Name and Registrar
The disputed domain name <tetrappak.com> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2021. On October 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 20, 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 October 21, 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 October 26, 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 November 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2021. Respondent did not submit any Response. Accordingly, the Center notified Respondent’s default on November 24, 2021.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on December 7, 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 company organized under the laws of Switzerland which is part of the Tetra Laval group of companies that includes three independent industry groups, namely Tetra Pak, De Laval, and Sidel Group, all of which are engaged in the food processing and packaging industry, with more than 25,000 employees and operations in 160 countries worldwide, including in the United States.
Complainant has evidenced to be the registered owner of numerous trademarks relating to its brand TETRA PAK, inter alia, the following with protection in the United States where Respondent apparently is domiciled:
- Word mark TETRA PAK, United States Patent and Trademark Office (“USPTO”), registration number: 586480, registration date: March 9, 1954, status: active;
- Word mark TETRA PAK, USPTO, registration number: 580219, registration date: September 22, 1953, status: active.
Moreover, Complainant has substantiated to own numerous domain names relating to its TETRA PAK trademark, inter alia, the domain name <tetrapak.com>, which resolves to Complainant’s official website at “www.tetrapak.com”, used to promote Complainant’s products and related services in the food processing and packaging industry worldwide.
Respondent, according to the disclosed WhoIs information for the disputed domain name, is domiciled in the United States and has registered the disputed domain name on August 11, 2021, which is offered on the Internet for online sale. Complainant has evidenced that on September 17, 2021, emails were sent under the disputed domain name impersonating one of Complainant’s employees, either in order to obtain sensitive financial information or money.
Complainant requests that the disputed domain name be transferred to Complainant.
5. Parties’ Contentions
Complainant contends that due to the long use of its TETRA PAK trademark and the quality of the goods and services traded thereunder, the TETRA PAK trademark is meanwhile well-known worldwide and enjoys high reputation.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s TETRA PAK trademark, as it includes the latter together with a deliberate misspelling that is hardly noticeable. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent is neither affiliated with or related to Complainant nor has Respondent been licensed or otherwise authorized to use Complainant’s TETRA PAK trademark in any way; and (2) Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but rather to impersonate Complainant’s employees in connection with email phishing directed to Complainant’s clients. Finally, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith since (1) given the deliberate misspelling of Complainant’s well-known TETRA PAK trademark in the disputed domain name, it is clear that Respondent must have known of such trademark and of Complainant’s business when registering the disputed domain name; (2) the fact that Respondent has registered and is using the disputed domain name for the purpose of impersonating Complainant’s employees to obtain information in connection with email phishing directed to Complainant’s clients, is relevant for indicating bad faith; and finally (3) Respondent has submitted false contact information in the WhoIs register for the disputed domain name, thus hiding its true identity in a bad faith manner.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant; however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent’s failure to submit a Response as it considers appropriate.
A. Identical or Confusingly Similar
The disputed domain name incorporates the TETRA PAK trademark in its entirety with a simple misspelling caused by doubling the letter “p”. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, the fact that the disputed domain name obviously includes a misspelling of Complainant’s TETRA PAK trademark is not at all inconsistent with such finding of confusing similarity. Typosquatted domain names are, on the contrary, intended to be confusing so that Internet users, who unwittingly make common typing errors, will enter the typosquatted domain name instead of the correctly spelled trademark associated domain name (see, e.g., National Association of Professional Baseball Leagues, Inc, d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011).
Therefore, Complainant has established the first element under the Policy as set forth by paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent obviously has not been authorized to use Complainant’s TETRA PAK trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the term “tetra pak” on its own. Finally, Respondent has so far neither used the disputed domain name for a bona fide offering of goods or services nor for a legitimate noncommercial or fair purpose, but rather to send emails impersonating at least one of Complainant’s employees in addition to offering the disputed domain name for online sale. While it remains unclear from the record, whether Respondent was seeking sensitive financial information or even money from one of Complainant’s customers, it is, however, very clear that Respondent was thus engaged in an unlawful phishing activity, which clearly constitutes neither bona fide nor legitimate use of the disputed domain name. Also, given that the disputed domain name consists entirely of Complainant’s somewhat fanciful TETRA PAK trademark together with a deliberate misspelling constituting a typosquatting, the Panel is unable to consider an plausible good faith use to which the disputed domain name may be put.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Having done so, the burden of production shifts to Respondent to come forward with appropriate evidence demonstrating such rights or legitimate interests (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1). Given that Respondent has not submitted a Response, it has not met that burden.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The circumstances to this case leave no doubt that Respondent was fully aware of Complainant’s rights in the TETRA PAK trademark (notwithstanding its claimed worldwide recognition) when registering the disputed domain name and that the latter clearly is directed thereto. Moreover, using the disputed domain name for phishing activities by sending fraudulent emails to Complainant’s customers, thereby impersonating one of Complainant’s employees, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own email communication by creating a likelihood of confusing with Complainant’s TETRA PAK trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s email. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the larger meaning of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel holds that Complainant has also satisfied the third element under the Policy as set forth by 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 <tetrappak.com> be transferred to Complainant.
Stephanie G. Hartung
Date: December 9, 2021
1 It is evident from the case file that Registration Private, Domains by Proxy, LLC, United States, is a privacy protection service and that Brian Potvin, United States, is the underlying registrant of the disputed domain name. Therefore, unless otherwise indicated, the term “Respondent” is used by the Panel in the case at hand to refer to the latter underlying registrant only.