The Complainant is Tetra Laval Holdings & Finance S.A., Switzerland, represented by Valea AB, Sweden.
The Respondent is Kilt Kully, Huy, United States of America (“United States” or “US”). 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 9, 2019. On April 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 2019, 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 April 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2019.
The Center appointed George R. F. Souter as the sole panelist in this matter on May 14, 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. Preliminary Matter
After a copy of the Complaint was served at the at the name and address listed for the Respondent by the disputed domain name’s registrar, the Center received communications from an individual (with a name different to the name Respondent) at that address, claiming that the registration of the disputed domain name had not been effected by him. Similar situations have occurred in previous cases under the Policy, in particular recently in JanSport Apparel Corp v Name Redacted,WIPO Case No. D2018-0063. The Panel has decided that he will take notice of the individual’s claim, as it may include an element of identity fraud or can be considered as further evidence of bad faith 4. Factual Background
The Complainant is a member of the Tetra Laval group of companies, which includes the Tetra Pak Group. The Complainant owns the trademarks of the Tetra Pak Group 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. These trademarks include the TETRA PAK trademark, in respect of which the Complainant is the proprietor of trademark registrations in 160 countries. Details of these registrations have been supplied to the Panel, and these include Swedish trademark registration number 71196, which dates from 1951, and US trademark registrations numbers 580219 and 586480, dating back to 1953 and 1954 respectively. The Tetra Pak Group companies have been trading internationally in the food processing and packaging sector for over half a century, and currently trade in over 170 countries.
The disputed domain name was registered on January 17, 2019. At the time of the filing of the Complaint, the disputed domain name did not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain is confusingly similar to its TETRA PAK trademark, including the TETRA PAK trademark in its entirety, with the mere addition of the descriptive or non-distinctive element “online”.
The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that, to the best of its knowledge, the Respondent is not generally known by the disputed domain name, and the Respondent has never received permission from the Complainant to use its TETRA PAK trademark in connection with a domain name or otherwise.
The Complainant alleges that the disputed domain name was registered in bad faith and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is well-established in prior decisions under the UDRP, with which the Panel agrees, that the mere addition of a generic Top-Level Domain (“gTLD”) indicator is irrelevant when comparing a trademark with a disputed domain name. Accordingly, the Panel finds that the gTLD indicator “.com” is irrelevant when comparing the disputed domain name with the Complainant’s trademark in the circumstances of the present case.
In the Panel’s opinion, the element “online” is clearly a descriptive or non-distinctive element added to the Complainant’s TETRA PAK trademark, and the dominant element of the disputed domain name is the Complainant’s TETRA PAK trademark. It is well established in prior decisions under the Policy, with which the Panel agrees, that the mere addition of a descriptive or non-distinctive element to a trademark in which the Complainant has rights is insufficient to avoid a finding of confusing similarity between the Complainant’s TETRA PAK trademark and the disputed domain name. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s TETRA PAK trademark. B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel considers the submissions put forward by the Complainants as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Accordingly, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. In the circumstance of the present case, in which the Panel believes that the Respondent has clearly had the Complainant’s trademark in mind when registering the disputed domain name, the Panel regards it as appropriate to find that the disputed domain name was registered in bad faith, and so finds.
The Panel agrees with the panel in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, that there are circumstances in which passive holding of a disputed domain name can constitute use in bad faith. The Panel is of the opinion that the circumstances of the present case, in which the Complainant has a legitimate concern as to the use to which the disputed domain name might be put, render it appropriate to find that the disputed domain name is being used in bad faith, and so finds. 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.
George R. F. Souter
Sole Panelist
Date: May 28, 2019
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