Complainant is Tetra Laval Holdings & Finance S.A of Pully, Switzerland, represented by Valea AB, Sweden.
Respondent is Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America / Younas Rehan of Dawsonville, Gabon. 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2018. On November 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 26, 2018, 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 Complainant on November 28, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 3, 2018.
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 Respondent of the Complaint, and the proceedings commenced on December 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 26, 2018.
The Center appointed Gregor Vos as the sole panelist in this matter on January 15, 2019. 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
Complainant is a Swiss corporation which is 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. It develops, markets and sells equipment for processing, packaging and distribution of foods and operates in more than 170 countries worldwide.
Complainant is the owner of numerous registrations throughout the world for the trademark TETRA PAK including, inter alia (the “Trademarks”):
- Swedish Trademark Registration No. 71196 for TETRA PAK (word mark), registered on December 14, 1951;
- United States of America (“United States”) Registration No. 580219 TETRA PAK, registered on September 22, 1953;
- European Union Trade Mark Registration (“EUTM”) No. 1202522 TETRA PAK, registered on October 2, 2000;
- International Trade Mark Registration No. 1146433 TETRA PAK, registered on November 6, 2012.
The Domain Name was registered on September 18, 2018 by Respondent. Respondent has used the Domain Name to send various emails to customers of Complainant in Pakistan in October 2018, signed in the name of an employee of Complainant. In these fraudulent emails Respondent, impersonating Complainant, demanded payments of invoices to revised bank accounts, which were sent to the customers earlier. The Domain Name currently does not resolve to an active website. 5. Parties’ Contentions A. Complainant
Complainant asserts that the Domain Name is confusingly similar to the Trademarks. According to Complainant, the Domain Name is simply a misspelling of the Trademarks, which is hardly noticeable. Complainant is of the view that the widespread reputation and high degree of recognition of the Trademarks, in combination with the lack of distinguishing factors between the Domain Name and Trademarks, should lead to the conclusion that the Domain Name and the Trademarks are confusingly similar.
Furthermore, Complainant asserts that Respondent has no rights to or legitimate interests in respect of the Domain Name. Complainant states that Respondent is not affiliated or related to Complainant in any way, nor would Respondent be licensed or otherwise authorized to use the Trademarks in connection with a website or for any purpose. Complainant further states that Respondent would not be using the Domain Name in connection with any bona fide offering of goods and services.
Finally, Complainant asserts that the Domain Name has been registered and used in bad faith. According to Complainant, registration and use of bad faith is evidenced by the fact that Respondent has knowingly chosen and subsequently used a Domain Name incorporating a sign which is confusingly similar to a well-known trademark. Respondent would have no other reason than to take unfair advantage of the reputation of the well-known Trademarks and to create confusion among Internet users, especially among the customers of Complainant, for financial gain. In this regard, Complainant refers to the emails Respondent has sent to customers of Complainant in which he requests for the payment to revised bank accounts. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Based on paragraph 4(a) of the UDRP, a request to transfer a domain name must meet three cumulative conditions:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the registrant of the domain name has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In the administrative proceedings, Complainant must prove that each of these three elements is present.
Only if all three elements are fulfilled can the Panel grant the remedy requested by Complainant. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the UDRP requires two elements to be proved. A disputed domain name should be (i) identical or confusingly similar to a trademark or service mark, (ii) in which a complainant has rights.
The Panel finds that Complainant has sufficiently proven that there are TETRA PAK trademarks in which it has rights.
With regard to the assessment of identity or confusing similarity of the disputed domain name, it is generally accepted that this test involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). For the purpose of assessing confusing similarity under the Policy, the generic Top-Level Domains (“gTLD”) suffix (in this case, “.com”) is generally ignored in the comparison between the disputed domain name and the trademark (See Bialetti Industrie S.p.A. v. Onno Brantjes, Stichting Taxaceae,WIPO Case No. D2016-1450; Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck,WIPO Case No. D2014-0206; Zions Bancorporation v. Mohammed Akik Miah,WIPO Case No. D2014-0269). This case does not contain any indications to the contrary.
Here, it is evident that the Domain Name is not identical to the Trademarks. The Domain Name consists of the term “tectrepak”, while the Trademarks contains the term “tetrapak”. Despite this difference, the Panel finds that an Internet user confronted with the Domain Name could recognize the Trademarks in the Domain Name. This is due to the fact that the Domain Name and the Trademark both contain the suffix “pak”, start with the same two letters and both contain twice the letter “t” in the first element. This results in a high degree of confusing similarity. This leads to the conclusion that overall impression of the Domain Name and Trademarks is so similar that the Panel finds that the Domain Name is confusingly similar to the Trademarks.
Consequently, the Panel finds that the requirement under paragraph 4(a)(i) of the UDRP has been fulfilled. B. Rights or Legitimate Interests
In order to fulfil the requirement of paragraph 4(a)(ii) of the UDRP, a complainant has to prove that the respondent lacks rights or legitimate interests in the disputed domain name. As this may result in the often impossible task of “proving a negative”, a complainant bears the burden of prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name. If a complainant succeeds in making its prima facie case, the burden of production shifts to the respondent, which will then have to come forward with appropriate allegations or evidence demonstrating a right or legitimate interest in the disputed domain name (see section 2.1 of the WIPO Overview 3.0).
Complainant has stated that Respondent was not authorized or licensed to use the Trademarks. In addition, Complainant has submitted that there is no evidence of Respondent’s use of the Domain Name in connection with a bona fide offering of goods and services. Complainant has submitted evidence that Respondent has used the Domain Name to send emails to customers of Complainant in the name of an employee of Complainant, in which he requests for payment to revised bank accounts.
Based on the above, the Panel finds that Complainant has sufficiently set out its prima facie case. The burden of production therefore shifts to Respondent.
As Respondent has not replied to Complainant’s allegations, the Panel finds that the requirement under paragraph 4(a)(ii) of the UDRP is fulfilled. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the UDRP, the circumstances in paragraph 4(b) of the UDRP, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
In this matter, the Panel finds that the situation under (iv) applies. As Respondent impersonated an employee of Complainant, Respondent must have been fully aware of the fact that he registered and used a domain name incorporating a sign confusingly similar to the Trademarks. It is clear from the case file that Respondent has registered and used the Domain Name primarily for the purpose of creating confusion among customers of Complainant, for commercial gain. Consequently, the Panel finds that Respondent has registered and used the Domain Name in bad faith.
Therefore, the Panel finds that the requirement under paragraph 4(a)(iii) of the UDRP is fulfilled. 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.
Gregor Vos
Sole Panelist
Date: February 4, 2019
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