The Complainant is Tetra Laval Holdings & Finance S.A. of Pully, Switzerland, represented by Valea AB, Sweden.
The Respondent is John Koontz of Lagos, Nigeria. 2. The Domain Name and Registrar
The disputed 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 September 13, 2016. On September 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 14, 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 September 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2016.
The Center appointed David J.A. Cairns as the sole panelist in this matter on October 19, 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, part of the Tetra Pak Group, dedicated to the production and sale of equipment and processing plants for making, packaging and distribution of foods and accessories.
The Complainant is the registered owner of numerous TETRA PAK trademarks. Among these registrations, are the Swedish trademark registration number 71196 for the word mark TETRA PAK dated December 14, 1951, and the European Union trademark (EUTM) registration number 001202522 for the word mark TETRA PAK based on an application dated June 10, 1999.
The Complainant holds more than 300 additional domain names registrations worldwide containing the TETRA PAK mark as generic Top-Level Domains (gTLDs) and country-code Top-Level Domains (ccTLDs).
The disputed domain name was registered on September 6, 2016. The Panel entered the disputed domain name in its web browser on October 20 and October 24, 2016. The Panel was not able to reach any website associated with the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant states that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights. The Complainant states that the disputed domain name incorporates the TETRA PAK trademark in its entirety and only differs from the Complainant’s TETRA PAK trade mark in the addition of the geographical prefix “us” and a hyphen.
The Complainant cites several WIPO UDRP decisions that have previously recognised the fame and reputation of the Complainant’s trademark (i.e., Tetra Laval Holdings & Finance SA. v. TetraPak Global PH-AU, Gerald Smith, WIPO Case No. D2012-0847; Tetra Laval Holdings & Finance SA. v. Vahid Moghaddami, AzarNet.Co,WIPO Case No. D2010-0268; and Tetra Laval Holdings & Finance SA. v. Mohammad Ali Mokhtar,WIPO Case No. DIR2010-0007).
The Complainant states that the abbreviation “us” for “United States” is a geographical term and as such is generic. It avers that generic terms fail to provide singularity or to lessen the likelihood or confusion of a domain name. The Complainant asserts that the widespread reputation of the TETRA PAK mark and the lack of distinctive terms in the disputed domain name are two factors that mean that is confusingly similar to the trademark in which the Complainant has rights.
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant avers that there exists no relationship between it and the Respondent and that it has never allowed the Respondent to employ its trademark. There is nothing to suggest that the Respondent is commonly known by the disputed domain name. It states that the Respondent has no registered trademark or trade name corresponding to the disputed domain name, which was registered long after the registration of the substantial majority of the Complainant’s trademarks and domain names and the establishment of their international reputation. The Complainant asserts that there is no possibility the Respondent was uninformed of the existence of the Complainant’s rights in relation to the trademark and its reputation.
The Complainant states that the disputed domain name was registered and is being used in bad faith. The Complainant contends that the bad faith registration of the disputed domain name can be inferred as the Respondent cannot have chosen the name TETRA PAK for any other reason than to profit from the Complainant’s trademark or otherwise create a false association, sponsorship or endorsement with the Complainant.
The Complainant states that the Respondent has used the domain name in bad faith by fraudulently using the name of one of the Complainant’s employee to send an email with the purpose of gaining access to personal and financial information. The Complainant states that this practice is commonly known as “phishing” and is a form of Internet fraud. The Complainant presented an email in evidence dated September 6, 2016 and sent from an email address incorporating the disputed domain name which purported to be from the “Project Director Greater Minneapolis-St Paul Area” of “Tetra Pak Processing Inc”. The email seeks details of the recipient’s travel agency, and asks for an introduction so that the sender can work with them.
The Complainant asks that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel is required to decide on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. (Paragraph 15(a) of the Rules).
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or 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.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. A. Identical or Confusingly Similar
The Panel accepts that the Complainant owns the trademark registrations for the word mark TETRA PAK referred to above.
The disputed domain name is not identical to the Complainant’s TETRA PAK trademark. The disputed domain incorporates the Complainant’s trademark entirely and adds the geographical prefix “us” and a hyphen.
Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition. (“WIPO Overview 2.0”), states that “[t]he threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms (…) typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.”
Paragraph 1.9 of the WIPO Overview 2.0 states that “the addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP.”
In the present case, the Panel considers that on a visual comparison the disputed domain name is confusingly similar to the TETRA PAK trademark for the following reasons: (i) TETRA PAK is a highly distinctive invented name; (ii) the disputed domain name incorporates the TETRA PAK trademark in its entirety; (iii) the TETRA PAK trademark remains easily recognizable and distinctive in the disputed domain name; and (iv) the addition of the geographical prefix “us-” does not avoid confusing similarity.
For the above reasons, the Panel considers that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent has any proprietary or contractual rights in any registered trademark corresponding to the disputed domain name; (ii) the Respondent is not authorized or licensed by the Complainant to use the TETRA PAK trademark or to register and use the disputed domain name; (iii) there is no evidence that the Respondent has been commonly known by the disputed domain name.
Paragraph 4(c) of the Policy refers to three circumstances, any of which is sufficient to evidence that the Respondent has rights or legitimate interests in the disputed domain names. There is no evidence of any use of the disputed domain name to offer goods or services; rather the only evidence of use of the disputed domain name is an email address to send a deceptive and fraudulent email. This is clearly neither a bona fide nor legitimate use of the disputed domain name within the meaning of paragraph (4)(c)(i) or (iii) of the Policy.
For all of the above reasons, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that a disputed domain name was registered in bad faith and also that it is being used in bad faith. Paragraph 4(b) of the Policy sets out four circumstances “in particular but without limitation” which, if found to be present by a Panel, shall be evidence of the registration and use of a domain name in bad faith.
Although there is no evidence of a website associated with the disputed domain name, there is evidence of use of the disputed domain name as an email address to send an email purporting to originate with the Complainant or an affiliate. Apart from the deceptive use of the Complainant’s identity in this email, the Panel accepts, on the balance of probabilities and in the absence of any response from the Respondent, that this email has a fraudulent purpose. It was sent on the same date that the disputed domain name was registered. On this basis, the Panel is satisfied that the disputed domain name was registered and is being used in bad faith.
The Panel also finds that bad faith within the meaning of paragraph 4(b)(iv) of the Policy is established in the present case for the following reasons: (i) TETRA PAK is a well-known international trademark; (ii) the Panel finds from the evidence that the Respondent’s linkage of the abbreviation “us-“ and “tetrapak” in the disputed domain name was not coincidental but deliberate and in full knowledge of the Complainant’s TETRA PAK trademark (suggesting a US subsidiary or affiliate of the owner of the TETRA PAK mark), and chosen precisely because of the fame and goodwill of the TETRA PAK trademark; (iii) the disputed domain name in its entirely identities an address that Internet users will assume relates to the Complainant’s business in the United States; and (iv) the Respondent intentionally registered and has used the disputed domain name to attract Internet users to communicate with an on-line location (namely an email address based on the disputed domain name) by creating a likelihood of confusion as to the source, affiliation or endorsement of that on-line location and the Complainant’s TETRA PAK trademark.
The Panel is further satisfied that the Respondent is using the disputed domain name in bad faith because: (i) the Respondent continues to hold the disputed domain name so as to be in a position to take advantage of the commercial reputation of the Complainant’s trademark (see Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti,WIPO Case No. D2005-0037; and (ii) it is not possible to conceive of any plausible actual or contemplated use of the disputed domain name by the Respondent that would not in all likelihood amount to be bad faith use within the meaning of the Policy because it would involve the intentional deception of Internet users (see Ladbroke Group PLC v. Sonoma International LDC, WIPO Case No. D2002-0131).
For these reasons, the Panel finds that the Respondent has registered and used 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.
David J.A. Cairns
Sole Panelist
Date: November 2, 2016
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