The Complainant is Tetra Laval Holdings & Finance S.A. of Pully, Switzerland, represented by Valea AB, Sweden.
The Respondent is سیدمحمدحسین رضوی پور of یزد, Islamic Republic of Iran ("Iran"), self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Realtime Register B.V. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 9, 2016. On March 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 March 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2016. The Response was filed with the Center on March 15, 2016.
The Center appointed Luca Barbero as the sole panelist in this matter on April 8, 2016. 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 by Ruben Rausing and develops, markets and sells equipment for processing, packaging and distribution of foods.
The Complainant owns the Tetra Pak Group's trademarks and licenses them to the independent market companies within the Tetra Pak Group for use in connection with their respective businesses.
The Complainant is the owner of more than 2000 trademark registrations encompassing TETRA PAK in more than 160 countries throughout the world, including the following:
- Swedish Trademark Registration No. 71,196 for TETRA PAK (word mark), registered on December 14, 1951, in classes 6, 7, 17, 20 and 21;
- European Union Trademark Registrations Nos. 1,202,522 TETRA PAK (word mark), registered on October 2, 2000, in classes 6, 7, 9, 11, 16, 17, 20, 21, 29, 30, 32, 33 and 37; 3,276,565 for TETRA PAK PROTECTS WHAT'S GOOD (device mark), registered on November 24, 2004, in classes 6, 7, 9, 11, 16, 17, 20, 21, 29, 30, 32, 33, 35, 37, 40 and 42; 3,188,323 for TETRA PAK PROTECTS WHAT'S GOOD (device mark), registered on November 8, 2004, in classes 6, 7, 9, 11, 16, 17, 20, 21, 29, 30, 32, 33, 35, 37, 40 and 42; and 7,242,969 for PROTECTS WHAT'S GOOD TETRA PAK (device mark), registered on June 17, 2009, in classes 16, 20, 29, 30, 32;
-Iranian Trademark Registration Nos. 194,998 for TETRA PAK (word mark), registered on November 18, 2012, in classes 7, 9, 11, 29, 30, 32 and 37; and 137, D2009-0701731 TETRA PAK (in Farsi language), registered on December 23, 2006, in classes 6, 7, 9, 11, 16, 20, 21, 29, 30, 32, 37 and 40.
The Complainant is also the owner of more than 300 domain names registered in generic Top-Level Domains ("gTLDs") and country Top-Level Domains ("ccTLDs"), including , registered on August 12, 1993.
The disputed domain name was registered on January 9, 2016 and is not pointed to an active web site. 5. Parties' Contentions A. Complainant
The Complainant states that Tetra Pak Group is world leading within the development, production and sale of equipment and processing plants for making, packaging and distribution of foods and accessories, employing more than 32000 people and being operative in more than 170 countries worldwide.
The Complainant submits that, by virtue of the Complainant's long use and the renown of its trademark TETRA PAK, the trademark is now associated exclusively with the Complainant and its licensees and is undisputedly considered a well-known trademark within its field of business, as also confirmed in previous UDRP cases.
The Complainant also claims that the Respondent is manufacturing counterfeit products and marketing them under the trademark TETRA PAK PARS, with the aim at disturbing the business of the Complainant in Iran and intentionally create likelihood of confusion with the Complainant's mark. The Complainant further states that the Respondent filed a trademark application No. 139450140001028731 for LIFE IS BEAUTIFUL TETRA PAK PARS T.P.P (device mark) that is confusingly similar to the Complaint's well-known trademark PROTECTS WHAT'S GOOD TETRA PAK.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant's trademark TETRA PAK as the disputed domain name contains the trademark with the addition of the generic term "pars", which refers to the Fars province in Iran, and the gTLD ".com".
The Complainant states that 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 TETRA PAK worldwide and in Iran as well as on the following circumstances:
- The Complainant has not licensed or otherwise permitted the Respondent to use its trademark, and there is no relationship between the parties which would justify the registration of the disputed domain name by the Respondent;
- Nothing in the record, including the WhoIs information of the disputed domain name, suggests that the Respondent is commonly known by the disputeddomain name;
- The Respondent has no registered trademark corresponding to the disputed domain name;
- The Respondent's registration of the disputed domain name 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. Consequently, the Respondent could not have been unaware of the Complainant and its business when registering the disputed domain name;
- Since the Complainant and its trademark TETRA PAK enjoy a worldwide reputation since as early as 1952, the trademark TETRA PAK is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant and consequently dilution of the trademark TETRA PAK.
The Complainant states that the Respondent intentionally registered and is using the disputed domain name in bad faith since the Respondent, like everyone else in its industry, must have known of the Complainant's trademark TETRAPAK and used the mark in the disputed domain name 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. Therefore, the Complainant submits that the Respondent's registration of a domain name confusingly similar to a registered trademark by a person with no connection to that trademark amounts to "opportunistic bad faith".
As additional circumstances supporting the Respondent's alleged bad faith registration, the Complainant asserts that the trademark TETRA PAK enjoys a considerable reputation and high degree of recognition in Iran and worldwide and that a simple browser search would have disclosed the Complainant's presence on the Internet. The Complainant also informs the Panel that it has a local office in Iran and has been present in Iran, where the Respondent is based, since 1975, being also part of the "School Milk Programme" which covers 12 million school children in Iran. The Complainant further points out that, since the Respondent is providing counterfeit packages on the market, it must reasonably be inferred that the Respondent knew about the Complainant and the prior use of the disputed domain name at the time of registration.
With reference to the bad faith use, the Complainant states that, even though the disputed domain name is not active at the date of the filing of the Complaint, the Respondent is blocking the Complainant as trademark owner from use of its trademark as a website address or as an email address in Iran. Therefore, the passive holding of the disputed domain name by the Respondent would be, in the circumstances, evidence of bad faith registration and use. B. Respondent
The sole communication submitted by the Respondent in reply to the Complaint is the following:
"Hi
What means????" 6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint 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". Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(ii) that the 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. A. Identical or Confusingly Similar
The Complainant has established rights in the trademark TETRA PAK based on, inter alia, the several trademark registrations mentioned above.
The Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark as it incorporates it in its entirety with the mere addition of the generic term "pars", which is insufficient to exclude confusing similarity. In fact, this term enhances the confusion as it describes a province in Iran, a country in which the Complainant also operates.
In view of the above, the Panel finds that the requirements prescribed by paragraph 4(a)(i) of the Policy have been met. B. Rights or Legitimate Interests
It is well established that a complainant is required to make a prima facie case that the respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393; Accor v. Eren Atesmen,WIPO Case No. D2009-0701, and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
In the case at hand, the Panel finds that the Complainant has made a prima facie case and that the Respondent has failed to demonstrate, pursuant to paragraph 4(c) of the Policy, or otherwise any rights or legitimate interests in the disputed domain name.
According to the documents and statements submitted, there is no relation between the Respondent and the Complainant, the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant's trademark or to register the disputed domain name. In addition, there is also no indication before the Panel that the Respondent was commonly known by the disputed domain name.
Furthermore, there is no evidence on records that the Respondent might have used, or made preparations to use, the disputed domain name in connection with a bona fide offering of goods or services prior to receiving notice of the dispute, as the disputed domain name has not been pointed to an active web site. The Respondent has also failed to provide any explanations as to the reasons why it registered the disputed domain name, confusingly similar to the Complainant's widely known trademark.
In view of the distinctive and well-known character of the Complainant's trademark TETRA PAK and in line with prior UDRP panel decisions, the Panel also finds that the trademark TETRA PAK is not one that traders would legitimately adopt unless seeking to create an impression of an association with the Complainant.
The Panel therefore finds that the Complainant has proven the Respondent's lack of rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
In light of the Complainant's prior registration and use of the trademark TETRA PAK worldwide, including in Iran, where the Respondent is based, and in view of the well-known character of the trademark worldwide –as recognized in several prior panel decisions-, the Panel finds that the Respondent was more likely than not aware of the Complainant's trademark at the time of the registration of the disputed domain name, with which it is confusingly similar.
The disputed domain name has not been pointed to an active website. However, it is well established that also passive holding of a domain name could amount to bad faith under certain circumstances as decided i.a. in Telstra Corporation Limited. v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
In the case at hand, the Complainant stated that the Respondent has used the mark TETRA PAK PARS on products not manufactured by the Complainant, and has provided also photographs of said products. In addition, the Complainant asserted that the Respondent filed a trademark application for a device mark including the terms "Life Is Beautiful Tetra Pak Pars T.P.P." The Respondent has not contested said allegations.
In view of the above and since the Respondent, according to the elements available on records, appears to operate in the same sector of the Complainant, the Panel finds that the Respondent was in all likelihood well aware of the Complainant's trademark TETRA PAK and registered the disputed domain name to trade upon the Complainant's goodwill and renowned trademark.
Moreover, in light of the well-known character of the Complainant's trademark TETRA PAK, the Panel finds that any active use of the disputed domain name made by the Respondent would likely cause confusion with the trademark TETRA PAK as to the source, sponsorship, affiliation or endorsement of the site, as Internet users visiting the site may be doing so expecting to reach a site managed by, or authorized by, the Complainant.
Therefore, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy. 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.
Luca Barbero
Sole Panelist
Date: April 21, 2016
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