The Complainant is Tetra Laval Holdings & Finance S.A of Pully, Switzerland, represented by Valea AB, Sweden.
The Respondent is Yang Yi of Suzhou, Jiangsu, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2014. On November 6, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 7, 2014, 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.
On November 10, 2014, the Center transmitted an email to the parties in English and Chinese regarding the language of the proceeding. On the same day, the Complainant submitted its request that English be the language of the proceeding. On November 11, 2014, the Respondent submitted its request that Chinese be the language of the proceeding.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint in Chinese and English, and the proceedings commenced on November 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2014. A Response was filed with the Center on November 11 and 28 and December 1, 2014.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on December 23, 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
The Complainant, Tetra Laval Holdings & Finance S.A, is in the business of development, production and sale of equipment and processing plants for making, packaging and distribution of foods and accessories. The Complainant employs more than 32, 000 people and is operative in more than 170 countries worldwide. The Complainant owns the TETRA PAK trademark, which is registered, both as word marks as well as part of device marks, in more than 160 countries throughout the world with more than 2,000 registrations including China. Furthermore, the Complainant is the owner of more than 300 domain name registrations throughout the world containing the TETRA PAK mark distributed among generic Top-Level Domains (gTLD) and country Top-Level Domains (ccTLD).
The disputed domain name is registered on September 23, 2014. 5. Parties’ Contentions A. Complainant
First, the Complainant asserts that the disputed domain name is identical or confusingly similar to its marks. The reasons are summarized as follows:
1. The disputed domain name is identical to Complainant’s trademark and trade name TETRA PAK as the disputed domain name incorporates the entirety of the well-known trademark and trade name TETRA PAK. The gTLD, here “.xyz” must be excluded from consideration as being a generic or functional component of the domain names as well established by prior UDRP decisions.
2. As a result of the widespread reputation and high degree of recognition of the Complainant’s TETRA PAK marks and the lack of distinguishing factors between the disputed domain name and the Complainant’s marks, the disputed domain name should be considered as identical or confusingly similar to the TETRA PAK mark in which the Complainant has rights.
3. Considering the brand awareness of the trademark TETRA PAK worldwide, an Internet user would most probably assume a connection with the Complainant when seeking information on a website with the disputed domain name .
Second, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The grounds are summarized as follows:
1. The Respondent has no rights to or legitimate interest in the disputed domain name based on the Complainant’s continuous and long prior use of its trademark and trade name TETRA PAK.
2. The Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
3. There is no relationship between the parties which would justify the registration of the disputed domain name by the Respondent and nothing in the record, including the WhoIs information, suggests that the Respondent is commonly known by the disputed domain name .
4. The Respondent has no registered trademark or trade name corresponding to the disputed domain name. Its registration occurred later than those of a vast majority of the Complainant’s TETRA PAK marks, at a time when those had already gained international status as, also from a legal point of view, well known marks.
5. The Respondent cannot have been ignorant of the rights held by the Complainant. Even a simple search on any search engine, would have clearly indicated the rights of the Complainant.
Third, the Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The grounds are summarized as follows:
1. The Respondent has intentionally registered and is using the disputed domain name in bad faith. The starting point in this inquiry must surely be that the Respondent, like everyone else, must have known of Complainant’s trademark TETRA PAK. That being so, Respondent could not have chosen or subsequently used the word “tetrapak” in its domain name for any reason other than to trade off the goodwill and reputation of Complainant’s trademark or otherwise create a false association, sponsorship or endorsement with or of the Complainant.
2. Prior UDRP decisions have held that a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration.
3. Prior UDRP decisions have also held that registration followed by a passive holding of a domain name when there is no way in which it could be used legitimately, can amount to use in bad faith, see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In this case, the disputed domain name has no other meaning except for the reference to the name and trademark of the Complainant, and there is no way in which it could be used legitimately.
4. It must reasonably be inferred that the Respondent knew about the Complainant and the prior use of the disputed domain name when the Respondent registered the disputed domain name. B. Respondent
The Respondent did not submit a formal Response to the Complainant’s assertions. However, the Respondent has through three emails, dated November 11, 2014, November 28, 2014 and December 1, 2014, raised the following points in his defense:
1. That the Complainant’s registered trademark and the disputed domain name have nothing to do with each other. The Respondent, or any other person, is free to combine letters in the alphabet and register them as domain names. No one should have a monopoly over the ownership and use of such independently created domain names. The domain name registration system functions on a first to register basis. The “xyz” domain was open for registration and anyone is eligible to register. Others who fail to register should bear the consequences of failing to do so.
2. The Respondent claims that the disputed domain name was registered for his personal and noncommercial use. It is not for commercial and the purpose of making a profit. Therefore, there is no intention to mislead consumers by being confusingly similar to the Complainant’s registered trademark.
3. After registration, the Respondent has promoted the disputed domain name with his own products and intends to continue to use the disputed domain in a bona fide offering of goods and services.
4. The registration of the disputed domain does not interfere with the rights of any company or trade mark owner.
5. There is no intention to use the disputed domain name to attract, for commercial gain, Internet users to the Respondent’s 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location. The Respondent intends to sell his own products on the disputed domain name website, and not the products of third party companies.
6. The Respondent asserts that domain names and trademarks are different types of intellectual property and there is no relationship between them. The disputed domain name is not put to use. Therefore the disputed domain name does not indicate the source of the establishment of relations with any goods or services and will not have any relationship or conflict with the Complainant’s trademark. 6. Discussion and Findings 6.1. Language of the Proceeding
According to the information received by the Center from the Registrar, the language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the case file, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be in English. Complying with the invitation from the Center, the Complainant has submitted a request that the proceeding should be in English. The Respondent in an email dated November 11, 2014 indicated that that the language of the proceeding should be Chinese and the proceeding should also be in China. The reasons are that he does not understand English and requires assistance of translation from his friend.
After considering the circumstances of the present case and the submission of the Complainant’s request, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:
(i) The Panel’s discretion under the Policy
Paragraph 11(a) of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Thus, the parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
(ii) The circumstances of this proceeding
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. In particular, the Panel notes that (a) the disputed domain name is made up of letters in Ascii-Script and could be pronounced phonetically in English; (b) although the Respondent has asserted that he does not understand English, he was able to communicate his response, albeit an informal one, in three emails; (c) the Center has notified the Respondent of the proceeding in both Chinese and English and the Respondent has been able to make an informal response which the Panel will take into consideration in rendering her decision.
Therefore the Panel is of the view that the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English. 6.2. Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the TETRA PAK mark in connection with its food processing and packaging solutions business in many countries in the world. Furthermore, the Panel finds that the Complainant has registered trademark rights in the TETRA PAK mark in China, the country in which the Respondent appears to reside. The Panel finds that the Complainant’s TETRA PAK mark is well known in connection with food processing and packaging solutions offered by the Complainant in many countries as well as in China.
In assessing the degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s trademark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet users seeking information about the Complainant’s products or services.
The disputed domain name consists of the Complainant’s TETRA PAK mark in its entirety with the addition of the gTLD suffix “.xyz”. The Panel is of the view that the most prominent and distinctive part of the disputed domain name is the word “tetrapak” which is identical to the Complainant’s registered trademark TETRA PAK. Given the fame and notoriety of the Complainant’s TETRA PAK mark, the addition of suffixes such as “.xyz” being the gTLD is not typically a distinguishing factor.
Bearing in mind the following factors, in particular the distinctive character of the Complainant’s TETRA PAK mark and the dominant component of the disputed domain name, the Panel therefore finds that the disputed domain name is identical to the TETRA PAK mark in which the Complainant has rights.
The Panel finds for the Complainant on the first part of the test. B. Rights or Legitimate Interests
Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:
(1) The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “tetrapak”. The mere registration of a domain name does not necessarily confer upon the Respondent rights or legitimate interests;
(2) There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the TETRA PAK mark;
(3) There is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services;
(4) Although the Respondent has asserted that he intends to the use the disputed domain name for in connection with a bona fide offering of goods or services, he has not adduced any concrete evidence to substantiate his assertion. To date, the disputed domain name remains passive and inactive. The Panel finds that the Respondent therefore does not have the right to use the TETRA PAK mark in the disputed domain name. The Panel further finds there is no evidence that clearly shows that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services and as such the Respondent has no rights or legitimate interests in the disputed domain name.
(5) The Complainant and its TETRA PAK mark enjoy a widespread reputation and high degree of recognition as a result of their fame and notoriety in connection with its food processing and packaging solutions business and have registered trademarks in many countries all over the world, including China. Consequently, in the absence of contrary evidence from the Respondent, the TETRA PAK mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
The Panel notes that the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. (See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1). Based on the above reasons, the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden of production to the Respondent to produce evidence to rebut this presumption.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to [the respondent] of the dispute, [the 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) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the 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 notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. In particular, the Respondent has failed to make submissions or adduce evidence to demonstrate that it has rights or legitimate interests in the disputed domain name.
In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent has not adduced evidence of any rights or legitimate interests in the disputed domain name.
The Panel finds for the Complainant on the second part of the test. C. Registered and Used in Bad Faith
(iParagraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that a respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before a panel can also constitute registration and use of the domain name in bad faith by a respondent in appropriate cases.
One important consideration in the Panel’s assessment of whether the Respondent has registered and used the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks often transcend national borders. Taking into account the worldwide reputation of the Complainant and its TETRA PAK mark, as well as the market presence of the Complainant in numerous countries including China, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name.
A simple search on the Internet would reveal the presence of the Complainant’s trademark and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with the Complainant and its products. In this regard, the Panel finds that the Respondent has not provided an acceptable explanation for his choice of the domain name which for all intents and purpose is identical to a world famous registered trademark TETRA PAK in order to market his own goods and services.
Where the Respondent has chosen to register a disputed domain name that is identical to the Complainant’s trademark and where the trademark in question has through substantial use acquired worldwide fame, reputation and notoriety, a reasonable conclusion is that the trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the Respondent may show that the choice of the disputed domain name was made legitimately and in good faith for the genuine offering of goods or services on the Internet. In this case, there is no evidence that the Respondent has used or intends to use the disputed domain name for purposes of bona fide offering of goods and services over the Internet. On the contrary, the disputed domain name remains passive and inactive since registration. It should be noted that passive holding of a disputed domain name does not negate the possibility of bad faith registration and use, especially where the Complainant’s trademark is a well known mark. Such behaviour on the part of the Respondent is indicative of bad faith registration and use as per paragraph 4(b)(iv) of the Policy. The Respondent could have explained its choice of the disputed domain name and its subsequent conduct. However, the Respondent has failed to do so and the Panel was not provided with any plausible explanation.
The Panel finds that given the widespread fame of the Complainant’s TETRA PAK mark and a lack of plausible explanation for the choice of incorporating the Complainant’s well known trademark in the disputed domain name, the lack of any rights or legitimate interests on the part of the Respondent in the disputed domain name, the passive holding of the disputed domain name since registration without any definitive plans for use in connection with bona fide offering of goods or services, are certainly relevant factors indicating bad faith registration and use.
Thus, the Panel finds for the Complainant on the third part of the test. 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 be transferred to the Complainant.
Susanna H.S. Leong
Sole Panelist
Date: January 6, 2015
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