WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tetra Laval Holdings & Finance S.A. v. JERRI BROWN

Case No. D2016-1663

1. The Parties

The Complainant is Tetra Laval Holdings & Finance S.A. of Pully, Switzerland, represented by Valea AB, Sweden.

The Respondent is JERRI BROWN of Kansas City, Kansas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <chinatetrapak.com> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2016. On August 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 August 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 9, 2016.

The Center appointed Sok Ling MOI as the sole panelist in this matter on September 14, 2016. 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 which consists of three industries Tetra Pak, DeLaval and Sidel Group. Tetra Pak is a leading multinational food processing and packaging company founded in 1947 in Sweden. It has operations in more than 170 countries and employs more than 32,000 people worldwide.

The Complainant owns Tetra Pak’s trade marks throughout the world, including the TETRA PAK word and device marks, which have been registered in more than 160 countries throughout the world. These registrations include:

- Swedish Registration No. 71196 for TETRA PAK - registered in 1951;

- United States of America (“US”) Registration No. 4374470 for TETRA PAK - registered in 2013;

- Chinese Registration No. 70313 for TETRA PAK - registered in 1973.

The Complainant also owns more than 300 domain name registrations containing the TETRA PAK mark, including <tetrapak.com>, through which it operates websites to promote its products and services.

The disputed domain name was registered by the Respondent on June 7, 2016, long after the Complainant and/or Tetra Pak used and registered its TETRA PAK mark. The disputed domain name resolves to a website with contents entirely in Chinese, reflecting the name of a Sichuan-incorporated company as the website owner, and seemingly offering for sale tools and equipment such as welding machines, linear vibration screens and laser lights.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its trade mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered 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 directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain name to be transferred:

(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trade mark 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.

On the basis of the evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the TETRA PAK mark acquired through use and registration.

The disputed domain name effectively incorporates the Complainant’s TETRA PAK trade mark in its entirety. The addition of the prefix “china” does not serve to distinguish the disputed domain name from the Complainant’s trade mark; on the contrary, it increases the confusing similarity as the public may mistakenly assume the Complainant had registered the disputed domain name to promote its business activities in China. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not impact on the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii), the burden of production shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

(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 trade mark 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 trade mark or service mark at issue.

See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, Ltd, WIPO Case No. D2013-0974.

The Complainant has clearly established that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the TETRA PAK trade mark or register the disputed domain name. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term “tetrapak”.

The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name.

The Panel further notes that the Respondent used the disputed domain name to publish a website that offers for sale tools and equipment presumably for use in the coal mining industry. Given the long-established use and fame of the Complainant’s trade mark, it appears that the Respondent has intent to, for commercial gain, mislead Internet users into believing that its website “www.chinatetrapak.com” is somehow connected with the Complainant, and divert Internet users looking for the Complainant’s products and services to the Respondent’s website. The Panel does not find such use to be bona fide use of the disputed domain name for the purposes of the Policy.

The Respondent did not file a Response to the Complaint and has thus failed to provide any evidence to establish its rights or legitimate interests in the disputed domain name. As such, the prima facie case has not been rebutted.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or acquired the disputed 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 trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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.

The Complainant and its TETRA PAK trade mark enjoy a worldwide reputation. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. A cursory Internet search would have disclosed the TETRA PAK trade mark and its extensive use by the Complainant. Given the long-established use and reputation of the TETRA PAK trade mark, a presumption arises that the Respondent was aware of the Complainant’s TETRA PAK trade mark when it registered the disputed domain name. Registration of a domain name that incorporates a complainant’s long-established and well-known trade mark suggests opportunistic bad faith.

The Panel notes, from a reverse WhoIs search independently conducted on the Respondent’s email address, that the Respondent has registered more than 3,000 other domain names such as <dg-pegasus.com>, <china-demeter.com>, <chinatbboy.com>, <chinatenax.com> and <fuxinled.com>. This suggests that the Respondent is engaged in a pattern of cybersquatting and has registered the disputed domain name in order to prevent the Complainant from reflecting its trade mark in a corresponding domain name.

The Respondent has failed to file a Response to deny the Complainant’s allegation of bad faith. In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain name, and given that the disputed domain name differs from the Complainant’s domain name by the mere addition of the term “china”, the Panel determines that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. As such, the Panel is satisfied that the Respondent is using the disputed domain name for mala fide purposes and illegitimate financial gain, and the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.

The Panel also notes that efforts to contact the Respondent at the physical address provided by the Registrar failed which suggests that the Respondent had provided false contact details when registering the disputed domain name.

Taking into account all the circumstances, the Panel concludes that the Respondent has registered and used the disputed domain name in bad faith.

Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the Policy.

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 <chinatetrapak.com> be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: September 28, 2016