The Complainant is Tetra Laval Holdings & Finance S.A., Switzerland, represented by Valea AB, Sweden.
The Respondent is Dickran Paul, Nigeria. 2. The Domain Name and Registrar
The disputed domain name, , is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2019. On July 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 17, 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 July 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2019.
The Center appointed Mihaela Maravela as the sole panelist in this matter on August 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
The 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 founded in 1947 in Sweden, which develops, markets, and sells equipment for processing, packaging, and distribution of foods.
The Complainant is the exclusive owner of the TETRA PAK trademark, which is registered, both as word trademark as well as part of device trademarks throughout the world with more than 2,000 registrations, including the following:
- the European Union Trademark for the word TETRA PAK, with registration number 1202522, registered on October 2, 2000,
- the International Trademark for the word TETRA PAK, having registration number 1146433, registered on November 6, 2012,
- the Swedish Trademark for the word TETRA PAK, having registration number 71196, registered on December 14, 1951,
- the Nigerian Trademark for the word TETRA PAK, having registration number 54709, registered on November 6, 1996.
The Complainant is the owner of more than 300 domain name registrations containing the term “tetra pak”.
The disputed domain name was registered on May 21, 2019, and does not resolve to an active website. According to the evidence provided by the Complainant, the disputed domain name has been used in an email address pretending to be an employee of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant shows that Tetra Pak Group, of which it is a part, employs more than 32,000 people and is operative in more than 170 countries worldwide and that, by virtue of the Complainant’s long use and renown of its TETRA PAK trademark, TETRA PAK is exclusively associated with the Complainant and its licensee.
The Complainant argues that the disputed domain name is visually, phonetically, and conceptually confusingly similar to the Complainant’s trademark and trade name TETRA PAK, as the disputed domain name is an obvious purposeful misspelling of the well-known trademark and trade name TETRA PAK, by adding the letter “l” in the disputed domain name.
Further, the Complainant argues that the Respondent has no rights or legitimate interest in the disputed domain name since 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, and nothing in the record, including the WhoIs information, suggests that the Respondent is commonly known by the disputed domain name. The Complainant further argues that, immediately after registration of the disputed domain name, the Respondent used it in an email scam, hijacking the name of one of the Complainant’s employees (the Credit & Collection Officer) for obtaining personal and financial information.
In addition, the Complainant argues that the Respondent has intentionally registered and is using the disputed domain name in bad faith. The Complainant contends that the Respondent could not have chosen or subsequently used the disputed domain name for any other reason than to trade off the goodwill and reputation of the Complainant’s trademark, or otherwise create a false association, sponsorship, or endorsement, with or of the Complainant. The Complainant further argues that the Respondent is using the disputed domain name in fraudulent email communication for receiving personal information and creates the impression that the Respondent is associated with the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”, paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant must establish that it has a trademark or service mark, and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.
Given the evidence put forward by the Complainant, the Panel is satisfied that the Complainant has proved its rights over the TETRA PAK trademark.
As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademark in which the Complainant holds rights. According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “this test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”.
Here the disputed domain name consists of the obvious misspelling of the TETRA PAK trademark of the Complainant, with the addition of the letter “l” in the disputed domain name. This misspelling in the disputed domain name, also referred to as typosquatting, is insufficient to avoid a finding of confusing similarity. See Virgin Enterprises Limited v. Registration Private, Domains by Proxy, LLC / Name Redacted,WIPO Case No. D2018-0644; Comerica Bank v. Online Management / Registration Private, Domains By Proxy, LLC,WIPO Case No. D2014-1018, and also section 1.9 of the WIPO Overview 3.0.
It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark.
This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
In the present case, the Complainant has established a prima facie case that it holds rights over the trademark TETRA PAK, and claims that the Respondent has no legitimate reason to acquire the disputed domain name.
There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Rather, according to the unrebutted evidence put forward by the Complainant, the Respondent used the disputed domain name for scamming activities, and such activity cannot amount to a fair use of the disputed domain name and can never grant any rights or legitimate interests to the Respondent. See Clifford Chance LLP v. WhoisGuard, Inc. / Ellen Cheung / ons onso / Domain Administrator,WIPO Case No. D2019-0050, and also section 2.13 of the WIPO Overview 3.0.
Also, there is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “tetra pak”. See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei,WIPO Case No. D2014-0957.
By not replying to the Complainant’s contentions, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. See for a similar finding Cash Converters Pty Ltd v. Mirriam Musonda-salati,WIPO Case No. D2014-1839.
Accordingly, the Panel gives prevalence to the Complainant’s affirmation that no license or authorization was ever given for the use of the trademark TETRA PAK in the disputed domain name.
With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name was registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
The disputed domain name consists of a misspelling of the Complainant’s trademark TETRA PAK. The email sent from the disputed domain name uses the name of the Credit & Collection Officer of the Complainant. Under these circumstances, it is most likely that the Respondent was aware of the Complainant’s trademark at the registration of the disputed domain name, and sought to take advantage of the TETRA PAK trademark. For a similar finding see Tetra Laval Holdings & Finance S.A. v. Whois Privacy Protection Service, Inc. / Younas Rehan,WIPO Case No. D2018-2707.
Furthermore, according to the evidence submitted by the Complainant, the Respondent used the disputed domain name shortly after registration to pass itself off as one of the Complainant’s employees, apparently as part of a phishing scam. Given such evidence, the Panel agrees with previous UDRP decisions that, “the Respondent’s fraudulent use of the disputed domain name, which began almost immediately after its registration, confirms the possibility that the disputed domain name was registered to conduct a “social engineering” attack or other type of scam”. For such reasons, the Panel finds that the Respondent must have been fully aware of the Complainant’s trademarks and activities when it registered the disputed domain name. See, e.g., Virgin Enterprises Limited v. Vincent Battista,WIPO Case No. D2018-1416.
As regards the use of the disputed domain name, given that the Respondent has registered the disputed domain name with a misspelling of the Complainant’s trademarks (“typosquatting”), an intention of the Respondent to attract Internet users and consumers for commercial gain by creating a likelihood of confusion with the Complainant and its business can be inferred. See Virgin Enterprises Limited v. On behalf of Owner, c/o / Tulip Trading Company,WIPO Case No. D2018-1135.
The Complainant argues that the Respondent is using the disputed domain name in fraudulent email communications for receiving personal and financial information. The evidence put forward by the Complainant in this respect has not been rebutted by the Respondent.
The use of a domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the Complainant’s actual or prospective customers and employees constitutes bad faith on the side of the Respondent (section 3.4 of the WIPO Overview 3.0). See for similar findings, e.g. Elecnor, S.A. v. Helroo, S,WIPO Case No. DCO2017-0044.
In the Panel’s view, these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondents failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy 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.
Mihaela Maravela
Sole Panelist
Date: August 29, 2019
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