The Complainant is Tetra Laval Holdings & Finance S.A. of Pully, Switzerland, represented by Valea AB, Sweden.
The Respondent is Zhang Peng of Xi'an, Shanxi, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Jiangsu Bangning Science & technology Co. Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 19, 2015. On March 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 20, 2015, 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 March 20, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On March 23, 2015, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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, and the proceeding commenced on April 1, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 22, 2015.
The Center appointed Francine Tan as the sole panelist in this matter on May 11, 2015. 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 is a Swiss corporation which is a part of the Tetra Laval Group. The Tetra Laval Group consists of three independent industry groups: Tetra Pak, DeLaval and Sidel Group. The Tetra Pak Group is a multinational food processing and packaging company founded in 1947 in Sweden. The Tetra Pak Group develops, markets and sells equipment for processing, packaging and distribution of foods. The Tetra Pak Group is a part of the Tetra Laval Group. The Tetra Pak Group employs more than 32,000 people and is operative in more than 170 countries worldwide.
The Complainant owns all of the Tetra Pak Group's trade marks throughout the world and licenses these trade marks to independent market companies within the Tetra Pak Group for use in connection with their respective businesses.
The Complainant owns the TETRA PAK trade mark, which is registered both as word marks as well as part of device marks, in more than 160 countries throughout the world including in China. The Complainant's Chinese registration No. 70315 dates from 1973; its Swedish Registration No. 71196 dates from 1951.
By virtue of the Complainant's long use and the renown of the Complainant's TETRA PAK mark, the Complainant contends that TETRA PAK is associated exclusively with the Complainant and its licensees.
The Complainant states that the fame of the trade mark TETRA PAK has been confirmed in previous UDRP cases: Tetra Laval Holdings & Finance S.A. v. TetraPak Global PH-AU, Gerald Smith,WIPO Case No. D2012-0847; Tetra Laval Holdings & Finance S.A. v. Vahid Moghaddami, AzarNet.Co, WIPO Case No. D2010-0268; Tetra Laval Holdings & Finance S.A. v. Mohammad Ali Mokhtari, WIPO Case No.. DIR2010-0007; Tetra Laval Holdings & Finance S.A. v. A, Domain Privacy / Belcanto Investment Group Limited, WIPO Case No. D2013-2200;and Tetra Laval Holdings & Finance S.A. v. ICS Inc. WIPO Case No. D2014-0239.
The Complainant is the owner of more than 300 domain name registrations in both generic Top-level Domains ("gTLDs") and country code Top-level Domains ("ccTLDs") throughout the world containing the TETRA PAK mark.
The disputed domain name was registered on November 20, 2014. It does not resolve to any active website. 5. Parties' Contentions A. Complainant
(1) The disputed domain name is identical or confusingly similar to TETRA PAK, a trade mark in which the Complainant has rights. The disputed domain name incorporates the entirety of the well-known trade mark and trade name TETRA PAK. The gTLD ".top" is to be excluded from consideration as being a generic or functional component of the disputed domain name.
(2) The Respondent has no rights to or legitimate interests in the disputed domain name in view of the Complainant's continuous and long prior use of its trade mark and trade name TETRA PAK. None of the situations listed in paragraph 4(c) of the Policy can be established in this case. The Complainant did not license or otherwise permit the Respondent to use its TETRA PAK trade mark. 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. The Respondent has no registered trade mark or trade name corresponding to the disputed domain name. The disputed domain name was registered long after the vast majority of the Complainant's TETRA PAK trade mark registrations, at a time when the mark had already become well-known. The Respondent has no rights to or legitimate interests in the disputed domain name as the Respondent is not making a bona fide offering of goods or services, is not commonly known by the disputed domain name and is not making a noncommercial or fair use thereof.
(3) The Respondent has registered and is using the disputed domain name in bad faith. The Respondent must have known of the Complainant's trade mark TETRA PAK. The Respondent could not have chosen or subsequently used the word "tetrapak" in the disputed domain name for any reason other than to trade off the goodwill and reputation of the Complainant's trade mark or otherwise create a false association with, sponsorship or endorsement by the Complainant.
The passive holding of a domain name when there is no way in which it could be used legitimately amounts to use in bad faith. The disputed domain name has no other significance except for the reference to the name and trade mark of the Complainant, and there is no way in which it could be used legitimately. The Respondent has registered thousands of domain names, many of which contain well-known trade marks (e.g. , , , , , , , , and ). B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Language of the Proceeding
The Registration Agreement in this case was Chinese. The Complainant, however, requested that English be the language of the proceeding as the translation of the Complaint and annexes thereto would cause substantial delay and additional expense. The disputed domain name and the many other domain names registered by the Respondent are all in Latin characters, which suggest that the Respondent is familiar with the English language.
Paragraph 11(a) of the Rules stipulates that: "[u]nless 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".
Paragraph 10(b) and (c) of the Rules provides that:
"(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel."
The Panel is of the view that it would be appropriate in this instance for English to be the language of the proceeding. The primary factors which have led to the Panel's determination on this issue are (i) the fact that the Respondent has registered thousands of domain names with Latin characters, and (ii) the importance of ensuring that the administrative proceeding takes place with due expedition. Requiring the Complainant to translate all the documents would delay matters significantly. Considering that the Respondent did not object to the Complainant's request, the Panel concludes, in accordance with paragraph 11(a) of the Rules, that it would be equitable to proceed accordingly. B. Identical or Confusingly Similar
The Complainant has established rights in the trade mark TETRA PAK. The Panel finds that the disputed domain name is identical to the TETRA PAK mark since the gTLD ".top" can be disregarded when considering the issue of identity or confusing similarity and the entire mark is incorporated in the disputed domain name. This is a well-established principle.
Paragraph 4(a)(i) of the Policy has been established. C. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with nor authorized by the Complainant to use the TETRA PAK trade mark or to incorporate it in a domain name. Neither is there evidence that the Respondent is commonly known by the name "Tetra Pak" nor evidence of use of the disputed domain name in connection with a bona fide offering of goods. In the absence of any evidence to the contrary, the Panel finds for the Complainant on this issue.
Paragraph 4(a)(ii) of the Policy has been established. D. Registered and Used in Bad Faith
The Panel is of the view that the passive holding of a domain name where there is no way in which it could be legitimately used due to the well-known nature of the mark amounts to registration and use in bad faith. In this case, the Panel considered the criteria of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and is unable to conceive of any plausible contemplated active use of the disputed domain name by the Respondent that would not be illegitimate.
The Panel also finds evidence of bad faith registration and use from the Respondent's pattern of conduct in registering domain names which incorporate well-known marks, for which he is also involved in other UDRP cases (see, for example, CMA CGM v. Zhang Peng,WIPO Case No. D2015-0172). Paragraph 4(b)(ii) of the Policy provides that the following circumstance can constitute evidence of bad faith registration and use of a domain name:
"(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".
Whilst there is no prohibition per se against the business of domaining, the adoption of a third party's trade mark without its consent, especially one that is well-known, is something that the Policy is meant to address. The consensus view of UDRP panelists expressed in paragraph 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, is that "A pattern of conduct can involve multiple UDRP cases with similar fact situations or a single case where the respondent has registered multiple domain names which are similar to trade marks".
Apart from the above-mentioned bases for the Panel's finding for the Complainant in relation to this issue, the Panel is of the view that it is highly unlikely that the Respondent did not know of the Complainant's trade mark when he registered the disputed domain name. The name "tetrapak" is a most unusual and unlikely name for a Chinese individual to devise. The Respondent has not offered any explanation of how he came to adopt and choose the disputed domain name or how he has a legitimate claim to the disputed domain name. The Panel is persuaded by the Complainant's submission that the Respondent must have chosen the disputed domain name for no reason other than to trade off the goodwill and reputation of the Complainant's trade mark or otherwise create a false association with, sponsorship or endorsement by the Complainant. Alternatively, the intention must have been for the purpose of "selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the Respondent's] documented out-of-pocket costs directly related to the domain name" (paragraph 4(b)(i) of the Policy).
In the absence of any evidence to the contrary from the Respondent, the Panel finds that paragraph 4(a)(iii) of the Policy has been established. 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.
Francine Tan
Sole Panelist
Date: May 14, 2015
Full & Egal Universal Law Academy