The Complainant is Tetra Laval Holdings & Finance S.A., Switzerland, represented by Aera A/S, Denmark.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Name Redacted 1 , Collabo, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2021. On March 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 12, 2021, 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 the Complainant on March 22, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 24, 2021. 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 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 22, 2021. The Center appointed Assen Alexiev as the sole panelist in this matter on May 3, 2021. 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 part of the Tetra Laval Group, which includes the Tetra Pak 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 food products. It employs more than 25,000 people and operates in more than 160 countries worldwide. The Complainant is the owner of the following trademark registrations of the sign TETRA PAK (the “TETRA PAK trademark”): - the Swedish trademark TETRA PAK with registration No. 71196, registered on December 14, 1951 for goods in International Classes 6, 7, 16, 17, 20 and 21; - the United States trademark TETRA PAK with registration No. 0586480, registered on March 9, 1954 for goods in International Class 16; - the European Union trademark TETRA PAK with registration No. 1202522, registered on October 2, 2000 for goods and services in International Classes 6, 7, 9, 11, 16, 17, 20, 21, 29, 30, 32, 33 and 37; and - the International trademark TETRA PAK with registration No. 1146433, registered on November 6, 2012 for goods and services in International Classes 7, 11, 16, 29, 30, 32, 33, 37 and 42. The disputed domain name was registered on February 28, 2021. At the time of filing of the Complaint, it resolved to a parking webpage containing a variety of links to third-party websites. 5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain name is confusingly similar to, and a deliberate misspelling of, the Complainant’s well-known TETRA PAK trademark, and the change of the letter “e” and “a” in the disputed domain name is hardly noticeable and does not sufficiently distinguish it from the trademark. According to the Complainant, the disputed domain name is a classic example of typosquatting, showing the Respondent´s intention to confuse email recipients and misleadingly give an impression of connection with the Complainant. The Complainant submits that the Respondent is using the disputed domain name to set up email accounts by which to impersonate employees of the Complainant in connection with an email phishing scheme directed at clients of the Complainant. According to the Complainant, Internet users and email recipients are likely to assume a connection with or endorsement by the Complainant when seeking information on the website at the disputed domain name or when receiving emails from an email account at the disputed domain name. The Complainant maintains that the Respondent has no rights to or legitimate interests in the disputed domain name, as it is not affiliated to the Complainant or authorized to use the TETRA PAK trademark, and is not known by the disputed domain name and has not acquired any trademark rights in it. The Complainant states that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Rather, the disputed domain name points to a website containing commercial pay-per-click links, and the Respondent is using it to set up email accounts to impersonate employees of the Complainant for the purposes of email phishing directed at clients of the Complainant. The Complainant contends that the Respondent has registered and used the disputed domain name in bad faith. In light of the well-known status of the TETRA PAK trademark and the composition of the disputed domain name, the Respondent must have been aware of this trademark when registering the disputed domain name, and has chosen and used it to trade-off the goodwill and reputation of TETRA PAK trademark by creating a false association with the Complainant and by using the disputed domain name for a phishing scheme. The Complainant also states that the registrant information for the disputed domain name is incorrect, and the Respondent is likely to have provided false contact information to the Registrar. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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. By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […].” The Respondent has however not submitted any Response and has not disputed the Complainant’s contentions and evidence in this proceeding. A. Identical or Confusingly Similar The Complainant has provided evidence that it is the owner of the TETRA PAK trademark. In view of this, the Panel accepts that the Complainant has established its rights in this trademark for the purposes of the present proceeding. The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD of the disputed domain name. The relevant element of the disputed domain name is therefore the element “tatrepek”. This element reproduces all consonant letters of the TETRA PAK trademark in the same sequence, while each “e” and “a” letters in the trademark is replaced respectively by “a” and “e” in the disputed domain name. This difference is not significant, and the TETRA PAK trademark is easily recognizable in the disputed domain name, both visually and phonetically. In view of this, the Panel finds that the disputed domain name is confusingly similar to the TETRA PAK trademark in which the Complainant has rights. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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. See section 2.1 of the WIPO Overview 3.0. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, as it is not affiliated to the Complainant or authorized to use the TETRA PAK trademark, and is not commonly known by the disputed domain name and has not acquired any trademark rights in it. According to the Complainant, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, because it points to a website containing commercial pay-per-click links, and the Respondent has set up email accounts at the disputed domain name and uses them to impersonate employees of the Complainant for the purposes of email phishing directed at clients of the Complainant. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not submitted a Response and has not denied the Complainant’s contentions in this proceeding. In the absence of any plausible explanation by the Respondent for its choice of the disputed domain name, it indeed appears to the Panel as a typosquatting version of the TETRA PAK trademark. The disputed domain name has resolved to a parking webpage containing pay-per-click commercial links to various third-party websites. The case file shows that the name and contact details provided by the Respondent to the Registrar are likely to be incorrect. The evidence submitted by the Complainant includes a copy of an email message, which supports the Complainant’s allegation that the Respondent has used the disputed domain name to impersonate employees of the Complainant in relation to the issuance and processing of invoices, which may well be part of a phishing scheme. In view of the above, it appears as more likely than not that the disputed domain name has been registered and used in an attempt to exploit the goodwill of the TETRA PAK trademark by attracting Internet users to the Respondent’s website and to the pay-per-click links on it for commercial gain, and by impersonating the Complainant for illegitimate activities such as phishing. Such conduct is not legitimate and does not give rise to rights or legitimate interests of the Respondent in the disputed domain name. Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: “(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.” In the absence of any plausible explanation by the Respondent for its registration and use, or of any evidence to the contrary, the disputed domain name appears as a typosquatting version of the TETRA PAK trademark, which was registered almost 70 years earlier. The evidence in the case file shows that it has been used for a parking website containing commercial pay-per-click links, and for setting up email accounts which may have been used to impersonate the Complainant for phishing purposes. It also appears from the case file that the registrant of the disputed domain name has indicated false contact details to the Registrar. Taking the above into account, the Panel concludes that it is more likely than not that the Respondent has registered the disputed domain name with knowledge of the Complainant and targeting the TETRA PAK trademark in an attempt to attract traffic to the disputed domain name and to the pay-per-click links on the associated website by creating a likelihood of confusion with the Complainant and its trademark, and in an attempt to impersonate the Complainant for phishing purposes, which supports a finding of bad faith registration and use of the disputed domain name. Therefore, the Panel finds that the disputed domain name has been registered and used 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 Assen Alexiev 1 The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST‑12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788.
Sole Panelist
Date: May 17, 2021
Full & Egal Universal Law Academy