WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tetra Laval Holdings & Finance S.A. v. Jake Austin / Tetraval

Case No. D2019-0133

1. The Parties

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

The Respondent is Jake Austin / Tetraval of Mesa, Arizona, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <tetralavalgroup.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2019. On January 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 January 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2019.

The Center appointed Zoltán Takács as the sole panelist in this matter on February 26, 2019. 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.

On March 1, 2019, the Center received an unsolicited email from an individual with the same name as the Respondent. The Center confirmed receipt of this filing and sent it to the Panel for consideration as to its admissibility.

4. Factual Background

The Complainant is the holding company and financial support and control function for the Tetra Laval Group and its three autonomous subsidiaries Tetra Pak, DeLaval and Sidel Group, which are involved in the food packaging industry.

Worldwide the Tetra Laval Group has about 35 plants, more than 30 service units with operations in almost 200 countries.

The Complainant owns extensive number of registrations for the trademark TETRA LAVAL, including:

- German Trademark Registration No. 2083744 with priority of December 18, 1992 for goods of Classes 7, 9, 11, 16 and 20 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks (hereinafter: the “Nice Classification”) and

- Chinese Trademark Registration No. 905703 with priority of November 28, 1996 for goods of Class 21 of the Nice Classification.

The disputed domain name was registered on January 16, 2019 and has been used in a fraudulent email scheme, attempting to extract monetary transactions from the Complainant’s business units.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name <tetralavalgroup.com> is confusingly similar to its TETRA LAVAL trademark since it reproduces it in its entirety

The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy.

The Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith. Taking into account the global reputation of its TETRA LAVAL trademark no individual or business could legitimately adopt it for any other reason than creating a false impression of an association with the Complainant.

The Complainant states that the Respondent hijacked the name of the chairman of the Board of Tetra Laval Group and used it in connection with the disputed domain name trying to obtain personal and financial information from the Complainant’s business units.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

I. Procedural Matters

On March 1, 2019 the Center received an email from individual with the same name as the Respondent.

The email was sent from an address different to that of confirmed by the Registrar on the underlying registrant verification and the sender among others states: “I received a letter about complaint around contact info listed under the whois info on the domain mentioned in subject”; “I am not sure what is going here”; “I can’t say for sure what is going on here but seems like a mistake on godaddy side possibly on how my info got put into this domain information”.

Neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the panel (see Rules, paragraph 12.).

Paragraph 10 of the Rules require that the panel conduct the proceeding “with due expedition”.

The sender of this unsolicited email does not allege anything substantial, let alone provide evidence on whether in fact he is the individual confirmed as the underlying registrant and whose personal data have been used without his knowledge. On balance the Panel declines to consider whether these circumstances fall under the so-called “Name Redacted” identity theft scenarios which have been increasingly common among UDRP cases.

II. Substantive Matters

Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

As noted in many previous UDRP panel decisions, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The complainant must prove each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.

As noted by many UDRP panels, if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.

The Complainant proved that it holds registered rights in the trademark TETRA LAVAL, and for the purpose of this proceeding the Panel establishes that the Complainant’s German Trademark Registration No. 2083744 and Chinese Trademark Registration No. 905703 satisfy the requirement of having trademark rights for the purpose of the Policy.

Having determined that the Complainant has trademark rights in the TETRA LAVAL mark, the Panel next assessed whether the disputed domain name <tetralavalgroup.com> is identical or confusingly similar to the TETRA LAVAL trademark of the Complainant.

According to section 1.7 of the WIPO Overview 3.0 “[t]he standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.”

According to section 1.8 of the WIPO Overview 3.0 “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”

According to section 1.11.1 of the WIPO Overview 3.0 “[t]he applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusingly similar test.”

The disputed domain name contains the Complainant’s TETRA LAVAL trademark in its entirety.

The only elements in the disputed domain name that differ from the TETRA LAVAL trademark of the Complainant are the descriptive terms “group” and the applicable top level domain, in this case “.com” which are not sufficient to prevent finding of confusing similarity under the first element of the Policy. The Panel finds that the disputed domain name <tetralavalgroup.com> is confusingly similar to the TETRA LAVAL trademark of the Complainant and that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:

(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;

(ii) it has been commonly known by the domain name;

(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well‑established rights in the trademark TETRA LAVAL.

The Complainant has never authorized the Respondent to use its TETRA LAVAL trademark in any way, and the Complainant’s prior rights in the TETRA LAVAL trademark long precede the date of registration of the disputed domain name.

According to section 2.1 of the WIPO Overview 3.0 while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent.

As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights of legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Complainant presented undisputed evidence which convince the Panel that the Respondent has registered and is using the disputed domain name in bad faith.

According to section 3.1.4 of the WIPO Overview 3.0, panels have consistently found that mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an affiliated entity can itself create a presumption of bad faith.

The globally reputed TETRA LAVAL trademark of the Complainant has no dictionary meaning; it’s invented by the Complainant and therefore highly distinctive. It is therefore implausible to presume that the Respondent knowingly decided to incorporate it into the disputed domain name for any other reason than to target the Complainant and its TETRA LAVAL trademark.

The Respondent has hijacked the name of the chairman of the Board of Tetra Laval Group and combining it with the disputed domain name in an email address tried to deceive recipients into believing that such emails are sent from a legitimate and highly important account, all in attempting to extract monetary transactions from the Complainant’s business units. Impersonating a complainant by use of its mark and the name of one of its employees in a fraudulent email scam is disruptive and evidence of bad faith registration and use (see, e.g. Minerva S.A. c. Miranda Nyenhuis, WIPO Case No. D2018-0763).

Based on the above discussed facts and circumstances the Panel finds that the disputed domain name was registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy is 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 disputed domain name <tetralavalgroup.com> be transferred to the Complainant.

Zoltán Takács
Sole Panelist
Date: March 8, 2019