The Complainant is Tetra Laval Holdings & Finance S.A. of Pully, Switzerland, represented by Valea AB, Sweden.
The Respondent is Prince Amin, Access Point Technologies of Lagos, Nigeria. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2016. On May 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 27, 2016, 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 May 31, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 27, 2016.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on July 7, 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 of which the Tetra Pak Group, founded in 1947 in Sweden, also forms part. Tetra Pak Group is a multinational food processing and packaging company which develops, markets and sells equipment for processing, packaging and distribution of foods.
The Complainant is the owner of a number of trademark registrations encompassing the TETRA PAK mark, including the following:
- Swedish Trademark Registration No. 71,196 for TETRA PAK (word mark), registered on December 14, 1951;
- European Union Trademark Registration No. 1,202,522 TETRA PAK (word mark), registered on October 2, 2000;
- Nigerian trademark registration No. 30960 of TETRAPAK (word mark), filed on May 23, 1977 and registered on April 19, 1984 and No. 30961 TETRAPAK (word mark), filed on May 23, 1977 and registered on March 20, 1986.
These trademark registrations are together referred to in this decision as the “Trade Marks”.
The Complainant is also the owner of a number of domain names registered in generic Top-Level Domains (“gTLDs”) and country Top-Level Domains (“ccTLDs”), including , registered on August 12, 1993.
The Domain Name was registered on April 26, 2016 and is not pointed to an active web site. Mail exchanger records have been set up for the Domain Name, indicating that it can be used for email correspondence. 5. Parties’ Contentions A. Complainant
According to the Complainant, by virtue of long use and the renown of its mark TETRA PAK, the Trade Marks are now associated exclusively with the Complainant and its licensees and is undisputedly considered a well-known trademark within its field of business.
The Complainant contends that the Domain Name is confusingly similar to the Trade Marks as it contains the TETRAPAK mark, of which the Trade Marks consist, and the gTLD “.com”.
The Complainant submits that the Respondent has no rights to or legitimate interests in the Domain Name based on the Complainant’s continuous and long prior use of the mark TETRA PAK worldwide and in Nigeria. Furthermore, the Complainant states that it has not licensed or otherwise permitted the Respondent to use the Trade Marks, and there is no relationship between the parties which would justify the registration of the Domain Name by the Respondent. The Complainant also brings forward that there are no known facts, including the WhoIs information of the disputed domain name, that suggest that the Respondent is commonly known by the Domain Name, while the Respondent holds no registered trade mark corresponding to the Domain Name. Accordingly, the Complainant contends, the Respondent is not making a bona fide offering of goods or services under the Domain Name, is not commonly known under the Domain Name and is not making a noncommercial or fair use of the Domain Name.
The Complainant submits that the Respondent intentionally registered and is using the Domain Name in bad faith since the Respondent must have known of the Trade Marks. In view of the reputation of the TETRA PAK mark, it is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant and the Trade Marks. In addition, the Complainant asserts that a simple browser search would have disclosed the Complainant’s rights in the Trade Marks. Therefore, according to the Complainant, the Domain Name has been chosen and used to trade off the goodwill and reputation of the Trade Marks or otherwise create the false impression of an association with or endorsement from the Complainant.
Finally, the Complainant states that - as in the present case - it is common for third parties to misspell a trade mark in a domain name, in order to create similarity and thereby misuse the trade mark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Trade Marks consist of the element “tetrapak” which is incorporated in its entirety, be it misspelled, in the Domain Name. The gTLD “.com” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks. B. Rights or Legitimate Interests
The Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name (WIPO Overview 2.0, paragraph 2.1). Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade Marks as part of the Domain Name, is not commonly known by the Domain Name and has not acquired trademark rights in the Domain Name. Furthermore, the fact that the Domain Name contains an obvious misspelling of the Trade Marks shows that the Respondent is not using the Domain Name for a bona fide offering of goods or services, nor is it making a noncommercial or fair use of the Domain Name.
In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name the Respondent was or should have been aware of the Trade Marks, since
- the Respondent’s registration of the Domain Name occurred 16 years after the registration of the youngest of the Trade Marks;
- the mark TETRAPAK, which is incorporated - be it misspelled - in its entirety in the Domain Name, was widely-known at the time of registration of the Domain Name;
- the misspelling of the TETRAPAK mark, which is not a generic name or a name of which it is likely that a potential domain name registrant would accidentally think of;
- a simple trade mark register search, or even a browser search, prior to the registration of the Domain Name would have informed the Respondent of the existence of the Trade Marks.
Under these circumstances, the Panel concludes that the Domain Name has been registered in bad faith.
The fact that the Domain Name at this stage does not appear to resolve to an active web site does not imply a lack of bad faith. As set out in the WIPO Overview 2.0, paragraph 3.2, the consensus view is that the apparent lack of so-called active use (e.g., to resolve to a website) of a domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and recently HUGO BOSS Trade Mark Management GmbH & Co. KG, HUGO BOSS AG v. Dzianis Zakharenka, WIPO Case No. D2015-0640). In accordance with this UDRP jurisprudence, a UDRP panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith.
In this case, the Panel finds that the following circumstances together are found to be indicative of bad faith use of the Domain Name:
- the reputation of the Trade Marks and the likelihood that the Respondent was aware or should have been aware of the Complainant’s rights in the Trade Marks;
- the lack of a formal Response of the Respondent;
- the use of MX records, showing that the Respondent may use the Domain Name actively in the future for email correspondence.
Therefore, the Panel concludes that the Domain Name has been registered and is being used 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.
Wolter Wefers Bettink
Sole Panelist
Date: July 20, 2016
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