The Complainant is Tetra Laval Holdings & Finance S.A. of Pully, Switzerland, represented by Valea AB, Sweden.
The Respondent is Registration Private, Domains By Proxy LLC of Scottsdale, Arizona, United States of America ("United States") / Name Redacted1. 2. The Domain Name and Registrar
The disputed domain name ("the Disputed Domain Name") is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 20, 2016. On April 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 21, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 25, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 27, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 19, 2016.
The Center appointed Isabel Davies as the sole panelist in this matter on May 26, 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.
On June 3, 2016 The Center served a Panel Procedural Order. On June 8, 2016 the Complainant filed a further amended Complaint in response to the Panel Procedural Order. The Respondent did not respond. 4. Factual Background
Tetra Laval Holdings & Finance S.A. 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 2000 registrations, hereunder, but not limited to: Swedish Trademark Registration no. 71196 TETRA PAK, registered on December 14, 1951, European Union trademark ("EUTM") Registration no. 1202522 TETRA PAK, registered on October 2, 2000, United States Registration no. 580,219 TETRA PAK registered on September 22, 1953 and United Kingdom of Great Britain and Northern Ireland ("United Kingdom") Registration no. 705710 registered on July 3, 1956.
The Disputed Domain Name was registered on January 4, 2016. The Disputed Domain Name does not resolve to an active website. 5. Parties' Contentions A. The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
The Complainant states that it 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. The Tetra Pak Group develops, markets and sells equipment for processing, packaging and distribution of foods. The Tetra Pak Group is now a part of the Tetra Laval Group.
The Complainant states that the Tetra Pak Group is world leading within the development, production and sale of equipment and processing plants for making, packaging and distributing foods and accessories. The Tetra Pak Group employs more than 32.000 people and is operative in more than 170 countries worldwide.
The Complainant also states that it owns all the Tetra Pak Group's trademarks throughout the world and licenses these trademarks to the independent market companies within the Tetra Pak Group for use in connection with their respective businesses.
The Complainant states that, by virtue of the Complainant's long use and the renown of the Complainant's TETRA PAK mark, TETRA PAK is associated exclusively with the Complainant and its licensee and is considered a well-known trademark within its field of business.
The Complainant states that the fame of the trademark TETRA PAK has been confirmed in previous UDRP cases, e.g. Tetra Laval Holdings & Finance S.A. v. TetraPak Global PH-AU, Gerald Smith, WPO 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 among others.
Furthermore, the Complainant states that it is the owner of more than 300 domain name registrations throughout the world containing the TETRA PAK mark distributed among generic Top-Level Domains ("gTLDs") and country code Top-Level Domains ("ccTLDs").
The Complainant states that the Disputed Domain Name is confusingly similar 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 with a prefix comprising a geographical abbreviation for the United Kingdom followed by a hyphen. The addition of the geographic term "uk" and the hyphen is the only difference between the Disputed Domain Name and the Complainant's domain name. It states that the gTLD, here ".com" must according to well-accepted principal be excluded from consideration because such gTLD has no legal significance.
Furthermore, it states, "uk" is an abbreviation of United Kingdom which is a generic term and one of the places where the Complainant has a long established trading operation and consequently, adding a generic term to another's registered mark does not deprive the trademark owner of rights in the mark nor does it avoid confusing similarity. Panels have repeatedly held that the addition of a generic term is not sufficient to avoid a finding of confusing similarity.
The Complainant submits that, bearing in mind in particular the following factors, (a) the widespread reputation and high degree of recognition of the Complainant's TETRA PAK marks and (b) the lack of distinguishing factors between the Disputed Domain Name and the Complainant's marks, the Disputed Domain Name should be considered as confusingly similar to the TETRA PAK mark in which the Complainant has rights and that an Internet user would most probably assume a connection with the Complainant and its business in United Kingdom when seeking information on a website connected with the Disputed Domain Name. Furthermore, it submits, since MX-records are set up for the Disputed Domain Name that the Disputed Domain Name is deliberately designed by the Respondent to misuse the trademark TETRA PAK.
The Complainant submits that the Disputed Domain Name is visually, phonetically and conceptually confusingly similar to the Complainant's well-known trademark TETRA PAK and to the company name "Tetra Pak". B. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
The Complainant states that the Respondent has no rights or legitimate interests in the Disputed Domain Name based on Complainant's continuous and long prior use of its trademark and trade name TETRA PAK.
The Complainant states that none of the situations listed in paragraph 4(c) of the Policy can be established in this case.
It states that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark. 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 Complainant states that 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 and TETRA marks, at a time when those had already gained international status as well known marks.
The Complainant submits that the Respondent cannot have been ignorant of the rights held by the Complainant. The Complainant and its trademark TETRA PAK have enjoyed a worldwide reputation since as early as 1952. Hence, the TETRA PAK trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
The Complainant submits that, even if the Disputed Domain Name is not used, since the Respondent has no permission from Complainant, its use of the Disputed Domain Name is without rights or legitimate interests.
The Complainant submits that, since MX-records were set up for the Disputed Domain Name at the time of its registration and evidence has been found that supports the fact that the Disputed Domain Name is used in phishing scams, the Respondent is not making a bona fide offering of goods or services.
Accordingly, the Complainant states that the Respondent has no rights to or legitimate interests in the Disputed Domain Name as the Respondent is not commonly known by the Disputed Domain Name and is not making a noncommercial or fair use of it. C. The Disputed Domain Name was registered and is being used in bad faith.
The Complainant states that the Respondent has intentionally registered and is using the Disputed Domain Name in bad faith. It submits that the Respondent must have known of the Complainant's trademark TETRA PAK. That being so, the Respondent could not have chosen or subsequently used the term "tetrapak" for any reason other than to trade-off the goodwill and reputation of the Complainant's trademark or otherwise create a false association, sponsorship or endorsement with the Complainant by also adding generic terms that reflect the geographic location of the Complainant.
It states that the Respondent is using the Disputed Domain Name in fraudulent email communication for receiving personal and financial information and gives the impression that the Respondent is associated with the Complainant by using the name of an employee of the Complainant. The Complainant annexes this communication to the amended Complaint. It states that phishing is a form of Internet fraud that aims to steal valuable information such as credit card numbers, social security numbers, user IDs, passwords etc.
The Complainant states that the Respondent is using this employee's name to contact other employees fraudulently to make travel reservations. The Respondent creates a likelihood of confusion with the intention to take advantage of the reputation of the TETRA PAK trademark and to fraudulently receive financial information by using the address "[…]@".
The Complainant states that it must reasonably be inferred that the Respondent knew about the Complainant's employees at the time of registration of the Disputed Domain Name. It submits therefore that therefore the Respondent has registered and used the Disputed Domain Name in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:
(i) The Disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the Disputed Domain Name;
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
Each of these elements will be addressed below.
The Complainant must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party's failure to comply with any provision of or requirement under, the Rules, including the Respondent's failure to file a Response.
In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009)).
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, the Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the Disputed Domain Name. A. Identical or Confusingly Similar
The Panel accepts that the Complainant owns all the Tetra Pak Group's trademarks throughout the world and licenses these trademarks to the independent market companies within the Tetra Pak Group for use in connection with their respective businesses. It owns the TETRA PAK trademark in more than 160 countries throughout the world with more than 2000 registrations.
The Panel accepts that, by virtue of the Complainant's long use and the renown of its TETRA PAK mark, TETRA PAK is associated exclusively with the Complainant and its licensees.
The Panel accepts that the fame of the trademark TETRA PAK has been confirmed in previous UDRP cases, including 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 MokhtariWIPO Case No. DIR2010-0007.
The Panel accepts that the Complainant is the owner of more than 300 domain name registrations throughout the world containing the TETRA PAK trademark distributed among gTLDs and ccTLDs.
The Panel finds that the Disputed Domain Name is confusingly similar to the 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 with a prefix comprising a geographical abbreviation for the United Kingdom followed by a hyphen. The addition of the geographic term "uk" and the hyphen is the only difference between the Disputed Domain Name and the Complainant's domain name.
The Panel accepts that the gTLD ".com" must be excluded from consideration because such gTLD has no legal significance, as found in e.g. Belo Corp v. George Latimer,WIPO Case No. D2002-0329, where the Panel held that: "it is well established that the generic top level domain, in this case ".com" must be excluded from consideration as being a generic or functional component of the Domain Name". Also see Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409 and Missoni S.p.A. v. Chen Zhu, Chen Guang Yao, Cheng-Hong Wu,WIPO Case No. D2014-0420.
The Panel accepts that "uk" is an abbreviation of United Kingdom which is a generic term and one of the places where the Complainant has a long established trading operation. Several UDRP cases have recognized that adding a generic word is insufficient to give any distinctiveness to a disputed domain name and geographic terms are considered as generic term, as found in PepsiCo, Inc. v. Kieran McGarry,WIPO Case No. D2005-0629.
Consequently, adding a generic term to another's registered mark does not deprive the trademark owner of rights in the mark nor does it avoid confusing similarity. Panels have repeatedly held that the addition of a generic term is not sufficient to avoid a finding of confusing similarity.
The Panel accepts that the Complainant's TETRA PAK marks have a widespread reputation and high degree of recognition and that there is a lack of distinguishing factors between the Disputed Domain Name and the Complainant's marks.
The Panel therefore finds that the Disputed Domain Name is visually, phonetically and conceptually confusingly similar to the Complainant's well-known trademark TETRA PAK and to the company name TETRA PAK. B. Rights or Legitimate Interests
The Panel accepts that none of the situations listed in paragraph 4(c) of the Policy can be established in this case. The Complainant has not licensed or otherwise permitted the Respondent to use its trademark. 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 Panel accepts that the Respondent has no registered trademark or trade name corresponding to the Disputed Domain Name and that its registration occurred later than those of a vast majority of the Complainant's TETRA PAK and TETRA marks, at a time when those had already gained international status as well known marks.
The Panel accepts that the Respondent cannot have been ignorant of the rights held by the Complainant as the Complainant and its trademark TETRA PAK have enjoyed a worldwide reputation since as early as 1952. Hence, the TETRA PAK trademark 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 therefore finds that 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 of it. C. Registered and Used in Bad Faith
The Panel accepts that the Respondent must have known of the Complainant's trademark TETRA PAK, and that the Respondent could not have chosen or subsequently used the term "tetrapak" for any reason other than to trade - off the goodwill and reputation of the Complainant's trademark or otherwise create a false impression of association, sponsorship or endorsement with the Complainant by also adding generic terms that reflect the geographic location of the Complainant.
The Panel accepts that the Respondent is using the Disputed Domain Name in fraudulent email communication for receiving personal and financial information and gives the impression that the Respondent is associated with the Complainant by using the name of an employee of the Complainant. The Panel accepts that phishing is a form of Internet fraud that aims to steal valuable information such as credit card numbers, social security numbers, user IDs, passwords, etc.
The Panel accepts that the Respondent is using the name of the employee contact to other employees of the Complainant for the purpose of fraudulently making travel reservations.
The Panel accepts that in previous UDRP decisions, e.g. Pfizer Inc v. Michael Chucks / Whoisguard Protected, Whoisguard Inc,WIPO Case No. D2014-0887, registration and use of a domain name in connection with fraudulent phishing scheme constitutes bad faith under the Policy. Furthermore, in CMA CGM v. Diana Smith,WIPO Case No. D2015-1774 it was stated "The phishing scheme uses the Domain Name as its root to create the impression that an email is sent by the financial director of Complainant to customers of Complainant in order to fraudulently induce customers to provide banking information. Obviously, such phishing scam cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name..."
The Panel accepts that, when using the Disputed Domain Name, the Respondent creates a likelihood of confusion with the intention to take advantage of the reputation of the TETRA PAK trademark and to fraudulently receive financial information by using the address "[…]@".
Accordingly, the Panel finds that the Respondent has registered and is using the Disputed Domain Name in bad faith. 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.
Isabel Davies
Sole Panelist
Date: June 15, 2016
1 Given that the record suggests that the true registrant (whomever that may be) has fraudulently used a Complainant employee's name when registering the Disputed Domain Name, apparently to lend credence to the claim that emails sent from the Disputed Domain Name were in fact from this employee, the Panel has decided to redact that name from this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published based on exceptional circumstances. See Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788.
Full & Egal Universal Law Academy