WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tetra Laval Holdings & Finance S.A. v. Above.com, Domain Privacy / Belcanto Investment Group Limited

Case No. D2013-2200

1. The Parties

Complainant is Tetra Laval Holdings & Finance S.A. of Pully, Switzerland, represented by Valea AB, Sweden.

Respondent is Above.com Domain Privacy of Beaumaris, Victoria, Australia / Belcanto Investment Group Limited of Charlestown, Saint Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name <tetrapaksustainability.com> (“the Domain Name”) is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2013. On December 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 20, 2013, 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 Complainant on January 6, 2014 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 January 9, 2014.

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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 31, 2014.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on February 5, 2014. 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 that is part of the Tetra Laval Group consisting of three independent industry groups – Tetra Pak, DeLaval and Sidel Group. Founded in 1947, the Tetra Pak Group (“TPG”) is a multinational food processing and packaging business, which develops, markets and sells equipment for processing, packaging and distributing foods. TPG is now a part of the Tetra Laval Group. It employs more than 32,000 people and operates in more than 170 countries worldwide.

Complainant owns all of TPG’s trademarks worldwide and it licenses them to the independent market companies within the TPG. That ownership includes the TETRA PAK Mark, which is registered both as word marks and as part of device marks in more than 160 countries consisting of more than 2000 registrations (e.g., Swedish Trademark Registration No. 71196 – TETRA PAK registered in 1951; Community Trademark Registration No. 1202522 – TETRA PAK registered in 2000; U.S. Trademark Registration No. 0580219 registered in 1953). Complainant also owns more than 300 domain name registrations containing the TETRA PAK Mark.

The Domain Name was registered on March 19, 2013, and on the date the Complaint was filed the associated website included sponsored links for dating (“www.single-baltic-lady.com); energy producing products (“www.innosund.se”); and car insurance (“www.ncg.group.com”).

Complainant contacted Respondent by email on October 9, 2013 and October 23, 2013 but received no response.

5. Parties’ Contentions

A. Complainant

The TETRA PAK Mark is a well-known trademark within Complainant’s field of business. “Sustainability” is a core value of TPG’s business. It works throughout its entire production process to protect what’s good in terms of the environment, society and the economy. Since 2003, an official sustainability report has been published to report the progress throughout the year on such issues. For example TPG is working to ensure there is a sustainable supply of paperboard by promoting “Forest Stewardship Council™” certification. The goal is to offer fully renewable carton and to spread knowledge of recycling. Complainant is currently promoting their recycling campaign through the following registered websites: “www.tetrapaksustainability.co.uk”; “www.tetrapaksustainability.ie”; “www.tetrapakrecycling.biz”; “www.tetrapakrecycling.co.uk”; “www.tetrapakrecycling.com”; “www.tetrapakrecycling.us” and “www.tetrapakrecycling.ie”.

The Domain Name is confusingly similar to the TETRA PAK Mark because it contains that mark, the generic term “sustainability” and the generic Top-Level Domain (gTLD) “.com.” The gTLD has no legal significance. Adding “sustainability” does not impact the overall impression of the dominant part of the TETRA PAK Mark.

Respondent has no rights or legitimate interests in the Domain Name. Complainant has not licensed or otherwise permitted Respondent to use the TETRA PAK Mark. There is no relationship between the parties justifying the registration of the Domain Name and no information suggesting that Respondent is commonly known by the Domain Name. Respondent has no registered trademark or trade name corresponding to the Domain Name. Respondent was not ignorant of Complainant’s rights in the TETRA PAK Mark based on the renown of the Mark. The Domain Name is associated with a website with pay-per-click links which use is not a bona fide offering of goods or services.

Respondent must have known of the TETRA PAK Mark and chose to include it in the Domain Name to trade off the goodwill and reputation in the Mark. Respondent is deriving revenue from the site from “sponsored listings” which are related to Tetra Pak and recycling, generally. Also, Respondent has engaged in a pattern of registering domain names to prevent the owners of the respective trademarks from reflecting the marks in corresponding domain names.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights;

(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 Panel is satisfied that Complainant has rights in the TETRA PAK Mark through the long-standing use of the Mark worldwide and Complainant’s many trademark registrations around the world.

Furthermore, the Panel finds that the Domain Name is confusingly similar to the TETRA PAK Mark because it uses the entire mark and merely adds the generic word “sustainability.” The addition of a common, generic word does not lessen the extent to which the Domain Name is confusingly similar to Complainant’s Mark. Moreover, given the fact that a core aspect of Tetra Pak’s business is sustainability, adding the term “sustainability” to the TETRA PAK Mark in a Domain Name is more likely to exacerbate confusion than to avoid it. See e.g., “www.tetrapaksustainability.co.uk”: On a webpage devoted to “Sustainability” it states: “Tetra Pak® is working hard to ensure that, throughout our entire production process, we protect what’s good in terms of the environment, society and the economy.” and on “http://www.tetrapak.com/environment/policy-and-goals - the policy and goals” state: “We are committed t​​​o running our business in an environmentally sound and sustainable manner.”).

Lastly, it is well settled that the use of the gTLD “.com” is not significant in determining whether a domain name is identical or confusingly similar to a trademark. CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834.

For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

Complainant asserts that Respondent does not have any rights or legitimate interests in the Domain Name because: (1) Complainant has never granted Respondent a license or consent to use the TETRA PAK Mark in any manner; (2) Respondent has not been commonly known by the Domain Name nor does it have a trademark or trade name corresponding to the Domain Name; (3) Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain because the Domain Name is being used in conjunction with pay-per-click sites and sponsored ads; and (4) Respondent’s use of the Domain Name has not been in connection with a bona fide offering of goods or services, but rather with an unauthorized use.

Complainant’s assertions and evidence, without contrary evidence from Respondent, are sufficient to permit a finding in Complainant’s favor on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007.

For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Respondent has failed to invoke any of the circumstances that could demonstrate it did not register and use the Domain Name in bad faith.

Respondent registered the Domain Name in March 2013 well over sixty years after Complainant began using the TETRA PAK Mark and after Complainant registered many of its domain names using the Mark (e.g., <tetrapaksustainability.co.uk>, registered in September, 2006; <tetrapak.us>, registered in April 2002). Furthermore, Respondent has a link to Tetra Pak on its website. Given the widespread and long-term use of the TETRA PAK Mark, the worldwide registrations for it, a link to Tetra Pak on Respondent’s website, incorporation of the Mark in its entirety in the Domain Name along with the term “sustainability” – one used by Complainant prominently on its websites and in domain names – the Panel finds it is highly unlikely Respondent was unaware of the TETRA PAK Mark when it registered the Domain Name.

With regard to the bad faith use, Respondent is using a domain name that is confusingly similar to Complainant's mark to host a site with links from which it receives revenue. The Panel concludes that by using the Domain Name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's TETRA PAK Mark as to the source, sponsorship, affiliation or endorsement of such site or the products or services advertised on such site, within the meaning of paragraph 4(b)(iv) of the Policy. Advance Magazine Publishers Inc. v. Red Wagon Films, WIPO Case No. D2006-0893. Even if the Internet users who access Respondent's website may conclude that it is not what they were originally looking for, Respondent has already succeeded in its purpose of using Complainant’s mark to attract users for commercial gain. See Red Bull GmbH v. Unasi Management Inc., WIPO Case No. D2005-0304.

Additional evidence of bad faith is that Complainant contacted Respondent twice without obtaining any response.

For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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 Domain Name <tetrapaksustainability.com> be transferred to Complainant.

Harrie R. Samaras
Sole Panelist
Date: February 19, 2014