The Complainant is Tetra Laval Holdings & Finance S.A. of Pully, Switzerland, represented by Valea AB, Sweden.
The Respondent is VistaPrint Technologies Ltd of Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <tetraspak.com> is registered with Tucows Inc. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 14, 2014. On August 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 14, 2014, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 14, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 15, 2014.
The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on September 23, 2014. 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.
The Complainant is a globally operating company for food processing and packaging founded in 1947 and is currently a leading company in the packaging industry.
The Complainant owns the TETRA PAK trademark, which is registered in numerous countries worldwide, among others as:
- United States Trademark Registration No. 0580219 TETRA PAK (word mark) filed on January 10, 1952, registered on September 22, 1953, for goods in Class 23 including packaging machines;
- United States Trademark Registration No. 0586480 TETRA PAK (word mark) filed on January 10, 1952, registered on March 9, 1954, for goods in Class 2 including cartons;
- European Community Trademark Registration No. 007242969 PROTECTS WHAT'S GOOD Tetra Pak (figurative) filed on September 18, 2008, registered on June 17, 2009, for goods in various classes including packaging containers and packaging material in class 16.
The Complainant is also the owner of numerous domain names including <tetrapak.com> which was registered on August 12, 1993.
According to the WhoIs excerpt provided in Exhibit B to the Complaint, the disputed domain name <tetraspak.com> has been created and registered by the Respondent on May 1, 2014.
The Complainant argues that the disputed domain name is highly similar to the Complainant's trademark. Due to the fact that the trademark TETRA PAK is included in the disputed domain name in its entirety with the letter "s" being added in between "TETRA" and "PAK", the disputed domain name represents a mistyped version of the Complainant's trademark. Hence, people are led to assume a connection between the disputed domain name and the Complainant.
Further, the Complainant contends that the Respondent has no legitimate rights or interests in the disputed domain name. Its registration occurred when the trademark TETRA PAK had already gained international status. The Respondent is using the disputed domain name merely to link to its local website. Furthermore, the disputed domain name is used in email correspondence to the Complainant's customers maliciously. The Complainant refers to one case in which one of its customers has been contacted via email sent from the address "[…]@tetraspak.com" containing false bank information of Tetra Pak New Zealand Ltd. contending that the Respondent has created a scam email address using name and information of an employee of Tetra Pak Marketing Pty Ltd.
The Complainant concludes that the Respondent must have known of the Complainant's trademark and is registered and using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
The Complainant must prove that the requirements of paragraph 4(a) of the Policy are met.
The similarity test under paragraph 4(a)(i) of the Policy demands a direct comparison between the Complainant's trademark and textual string of the disputed domain name.
The disputed domain name fully incorporates the Complainant's trademark TETRA PAK adding the letter "s" in between "TETRA" and "PAK" and the generic Top-Level Domain ("gTLD") ".com". Having a middle position, the only additional letter "s" in the second-level-domain of the disputed domain name is likely to remain unobserved by the public visually as well as phonetically. As the Complainant's trademark TETRA PAK does not merge with the additional element to a new coherent term, there is no significant difference in concept either. In the end, the letter "s" in the middle does not serve to differentiate the disputed domain name from the Complainant's trademark.
Moreover, the gTLD does not affect the confusing similarity in any way due to the fact that it is a top-level-domain which people normally do not take into consideration when identifying a website as to its origin. ".com" merely serves to indicate a worldwide operating business.
Thus, the overall impression of the signs must be considered as confusingly similar in accordance to paragraph 4(a)(i) of the Policy.
Under paragraph 4(a)(ii) of the Policy, a complainant is required to prove that a respondent has no rights or legitimate interests in the disputed domain name.
In the present case, the Complainant makes a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the Respondent, as ruled in Stoxx AG v. 247 Holdings Group, WIPO Case No. D2012-1582.
The Respondent did not show any proof of rights or legitimate interests in the disputed domain name. Furthermore, based on the record there do not appear to be any rights or legitimate interests of the Respondent.
Therefore, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(ii) of the Policy.
Under paragraph 4(a)(iii) of the Policy, the Complainant has to establish that the disputed domain name has been registered and is being used in bad faith by the Respondent. According to paragraph 4(b)(iv) of the Policy, using the domain name in an intentional attempt to attract, for commercial gain, Internet users to the web site by creating a likelihood of confusion with the complainant's trademark as to the source or affiliation of the web site shall be evidence of the registration and use of a domain name in bad faith.
The fact that the Respondent in its scam email (Annex I of the Complaint) used false banking information of Tetra Pak New Zealand (in its correct spelling) and used the name of an actual employee of Tetra Pak Marketing Pty Ltd. is evidence of the Respondent having known the Complainant's name and trade mark when registering the disputed domain name. In view of this, it is inconceivable that the Respondent was unaware of the TETRA PAK name and trademark. The content the Respondent has made available on the website under the disputed domain name represents merely a link to its main website "www.vistaprint.com/websites". From these facts it can be inferred that the Respondent used the disputed domain name to create likelihood of confusion and to attract Internet users. Further, the Respondent has used the disputed domain name in scam email correspondence with a customer of the Complainant creating the impression that the email was sent by an employee of the Complainant.
All in all, the Panel concludes that the disputed domain name has been registered and is being used in bad faith in the sense of paragraph 4(b)(iv) of the Policy.
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 <tetraspak.com> be transferred to the Complainant.
Andrea Jaeger-Lenz
Sole Panelist
Date: September 30, 2014