The Complainant is Tetra Laval Holdings & Finance S.A. of Pully, Switzerland, represented by Valea AB, Sweden.
The Respondent is David Barr of Surrey, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). 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 April 12, 2017. On April 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 13, 2017, 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. In response to a notification by the Center regarding the registrant information, the Complainant filed an amended Complaint on April 19, 2017.
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 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 12, 2017.
The Center appointed Charles Gielen as the sole panelist in this matter on May 17, 2017. 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 owns worldwide more than 2,000 registrations for trademarks consisting in whole or in part of the words “tetra pak”, such as European Union Trademark Registration No. 001202522 for TETRA PAK, registered on October 2, 2000 for goods and services in classes 6, 7, 9, 11, 16, 17, 20, 21, 29, 30, 32, 33 and 37; and International Registration No. 1146433 for TETRA PAK, registered on November 6, 2012 for goods and services in classes 7, 11, 16, 29, 30, 32, 33, 37 and 42.
The disputed domain name was created on April 11, 2017 and does not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant argues that it is world leading within development, production and sale of equipment and processing plants for making, packaging and distribution of foods and accessories. The Tetra Pak Group to which the Complainant belongs employs more than 32,000 people and is operative in more than 170 countries worldwide. By virtue of the long use of the trademark TETRA PAK by the Complainant and the renown of this trademark, this trademark is associated exclusively with the Complainant and the group to which the Complainant belongs. The Complainant argues that the reputation associated with the trademark TETRA PAK is excellent by virtue of the quality of the goods and services provided under that trademark, that is undisputedly considered a well-known trademark within its field of business. The Complainant also is the owner of more than 300 domain name registrations throughout the world containing the TETRA PAK trademark.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark.
Furthermore the Complainant argues that the Respondent does not have any rights or legitimate interests in the disputed domain name which was registered long after the Complainant established rights in the trademark TETRA PAK. 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 suggests that the Respondent is commonly known by the disputed domain name. 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 trademarks, at a time when those had already gained international status as, also from a legal point of view, well-known marks. The Respondent cannot have been ignorant of the rights held by the Complainant. 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 the domain name.
Finally the Complainant argues that the Respondent registered and is using the disputed domain in bad faith. The Complainant argues that the Respondent must have known of the Complainant’s trademark TETRA PAK and therefore, the Respondent could not have chosen or subsequently used the word “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 (namely “-eu”) reflecting the geographic location of the Complainant. Further, the Complainant argues 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. The Respondent is using a name of an employee for the purpose of fraudulently getting hold of valuable information and making travel reservations. According to the Complainant registration and use of a domain name in connection with fraudulent phishing scheme constitutes bad faith under the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel is of the opinion that the Complainant’s contentions are reasoned and that the disputed domain name should be transferred to the Complainant pursuant to the Policy. A. Identical or Confusingly Similar
The Complainant proves that it has rights in the trademark TETRA PAK based on numerous trademark registrations. The term “tetrapak” in the disputed domain name is identical to this trademark. The fact that the disputed domain name contains the term “eu” does not alter the conclusion that the disputed domain name is confusingly similar to the trademark TETRA PAK. The reason is twofold. First of all, the term “eu” is purely descriptive as the well-known abbreviation of the “European Union” and secondly the term “tetrapak” in the disputed domain name is the first word and therefore the dominant element. The added suffix “.com” does not change the finding that the disputed domain name is confusingly similar, since the “.com” is understood to be a technical requirement. In making the comparison between the trademark and the disputed domain name, the generic Top-Level Domain (“gTLD”) “.com” is disregarded. The Panel is of the opinion that applying these principles to this case, the disputed domain name is confusingly similar to the trademark.
Therefore, the requirement under paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests
The Panel is of the opinion that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The first reason is that the Complainant’s trademark is not a term one would choose as a domain name without having specific reasons to choose such a term and this word certainly is not a descriptive term serving to indicate specific characteristics of any goods or services. Furthermore, the disputed domain name was registered long after the Complainant started to use the trademark TETRA PAK. The Panel is convinced that the term “tetrapak” in the disputed domain name has no other meaning except to refer to the Complainant and its businesses. In view of the international fame of the trademark TETRA PAK, the Respondent must have been aware of the prior existence of this trademark. Finally, the Respondent has not come forward claiming any rights or legitimate interests and the Panel does not find so in the present record.
In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith
The Panel is of the opinion that the disputed domain name was registered and is being used in bad faith.
The main reasons for this conclusion are as follows. The trademark TETRA PAK enjoys international fame and consists of a coined term. The intention of the Respondent is to mislead consumers in believing that the disputed domain name is in one way or the other connected to the Complainant and its business. This intention also follows from the fact that the Respondent is using the disputed domain name in emails using the name of an employee of the Complainant in order to get personal and financial information from the addressees. The Panel is of the opinion that registration and use of a domain name in connection with such fraudulent phishing scheme constitutes bad faith under the Policy. The intention of the Respondent clearly is to capitalize on the reputation of the Complainant’s trademark TETRA PAK.
The Panel therefore considers the requirement of paragraph 4(a)(iii) of the Policy to be met. 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.
Charles Gielen
Sole Panelist
Date: May 29, 2017
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