The Complainant is Tetra Laval Holdings & Finance S.A. of Pully, Switzerland, represented by Valea AB, Sweden.
The Respondent is Su JinLe of Shanghai, China.
The disputed domain name <cn-tetrapak.com> (“Disputed Domain Name”) is registered with Shanghai Meicheng Technology Information Development Co., Ltd. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2017. On August 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 17, 2017, 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. On August 21, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on August 22, 2017. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in English and Chinese of the Complaint, and the proceedings commenced on August 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 18, 2017.
The Center appointed Kar Liang Soh as the sole panelist in this matter on September 25, 2017. 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 Swiss corporation is associated with the Tetra Pak Group, a multinational food processing and packaging equipment business which traces its roots back to 1947. The Tetra Pak Group employs over 32,000 people operating in over 170 countries.
The Complainant owns the trademarks used by the companies of the Tetra Pak Group, including the TETRA PAK trademark registered in over 160 countries. These include:
|
Jurisdiction |
Trademark no. |
Registration date |
|
Sweden |
71196 |
December 14, 1951 |
|
European Union (EUTM) |
001202522 |
June 10, 1999 |
|
China |
70313 |
March 22, 1973 |
The TETRA PAK trademark has been the subject of many past UDRP cases. It is noted that several prior UDRP panels in these cases have found the TETRA PAK trademark to be well-known (e.g., Tetra Laval Holdings & Finance S.A. v. TetraPak Global PH-AU, Gerald Smith, WIPO Case No. D2012-0847; Tetra Laval Holdings & Finance S.A. v. Vahid Moghaddami, AzarNet.Co, WIPO Case No. D2010-0268; Tetra Laval Holdings & Finance S.A. v. Named Redacted, WIPO Case No. D2015-2034; Tetra Laval Holding & Finance S.A. v. MATT BROWNING, WIPO Case No. D2016-1122). The Complainant is also the holder of over 300 domain name registrations incorporating the TETRA PAK trademark (e.g., <tetrapak.com>, <tetra-pak.com>, <tetrapak.cn>) and domain name registrations similar to the TETRA PAK trademark (e.g., <tetrapack.com>).
The Disputed Domain Name was registered on July 16, 2017. At the time of the Complaint, the Disputed Domain Name did not appear to resolve to any webpage.
Not much is known about the Respondent beyond the WhoIs information of the Disputed Domain Name. The Respondent appears to be an individual. A reverse WhoIs lookup on the Respondent’s email address as reflected on the WhoIs information of the Disputed Domain Name conducted on August 16, 2017 indicated that the Respondent’s email address is associated with at least 10 other domain names, including <cn-hitachi.com>, <cn-volkswagen.com> and <chn-adidas.com>, all of which were registered in 2017. An MX Lookup on the Disputed Domain Name conducted on August 16, 2017 identified the existence of mail servers configured to operate with the Disputed Domain Name. No line connection was detected on the Respondent’s facsimile number reflected in the WhoIs information of the Disputed Domain Name when the Center attempted to transmit the Written Notice of the Complaint. The Center’s attempt to deliver the Written Notice to the Respondent’s address reflected in the WhoIs information of the Disputed Domain Name was returned with a report that the address is incomplete or wrong.
The Complainant contends that:
a) The Disputed Domain Name is identical or confusingly similar to the Complainant’s TETRA PAK trademark. It incorporates the TETRA PAK trademark in its entirety. The addition of the hyphen and the geographic term “cn” is the only difference between the Disputed Domain Name and the Complainant’s <tetrapak.com> domain name. The term “cn” is a well-known abbreviation of China and is insufficient to give any distinctiveness to the Disputed Domain Name to avoid confusing similarity;
b) The Respondent has no rights or legitimate interests in the Dispute Domain Name. The Complainant has not licensed or otherwise permitted the Respondent to use the TETRA PAK trademark. There is no relationship between the Parties which justify the registration of the Disputed Domain Name. The Respondent cannot have been ignorant of the Complainant’s rights. The Respondent is not making a bona fide offering of goods or services, is not commonly known by the Disputed Domain Name and is not making a noncommercial or fair use of the Disputed Domain Name; and
c) The Disputed Domain Name was registered and is being used in bad faith. The Respondent must have known of the TETRA PAK trademark. The Respondent used the word “tetrapak” in the Disputed Domain Name to capitalize on the goodwill of the TETRA PAK trademark and attract commercial gain. The Respondent has registered several domain names that infringe famous trademarks of others and is engaged in a pattern of bad faith registration of domain names. The Disputed Domain Name has no other meaning except for the reference to the name and trademark of the Complainant. The fact that MX-records are set up for the Disputed Domain Name indicates a potential risk of use of the Disputed Domain Name in fraudulent email correspondence.
The Respondent did not reply to the Complainant’s contentions.
Based on the Registrar’s verification in this proceeding, the language of the registration agreement is Chinese. Therefore, the default language of the proceeding is Chinese. Pursuant to paragraph 11(a) of the Rules, the Panel may determine a different language of the proceeding having regard to the circumstances of the case.
The Panel has noted the Complainant’s request for the language of the proceeding to be English. Having reviewed the circumstances of the case, the Panel determines that English be adopted as the language of the proceeding. In coming to this determination, the following factors were considered:
a) The Complaint has already been submitted in English;
b) The Respondent did not object to the Complainant’s request for English to be the language of the proceeding;
c) The Respondent did not respond to the Complaint, the nature of which was clearly communicated to the Respondent by the Center in Chinese;
d) The Panel is bilingual in English and Chinese and is competent to review both English and Chinese language documents;
e) Requiring a translation to be submitted at this stage of the proceeding will likely lead to unnecessary delay to the proceeding;
f) Requiring a translation to be submitted will likely, as submitted by the Complainant, lead to additional expenses on the Complainant; and
g) No administrative or procedural benefit will be achieved in this proceeding by requiring the proceeding to be held in Chinese.
The Complainant is required to establish all of the following three limbs of paragraph 4(a) of the Policy in order to succeed in this proceeding, namely:
a) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights;
b) The Respondent has no rights or legitimate interests in the Disputed Domain Name; and
c) The Disputed Domain Name was registered and is being used in bad faith.
In view of the trademark registrations provided by the Complainant in this proceeding, the Panel accepts that the Complainant has rights in the TETRA PAK trademark. The Disputed Domain Name obviously incorporates the TETRA PAK in its entirety. The Panel agrees with the Complainant that the “cn-” prefix in the Disputed Domain Name is a common abbreviation for “China”. It being a generic geographical reference, the Panel holds that the prefix “cn-” does not detract from the overall impression of the TETRA PAK trademark in the Disputed Domain Name. It is the consensus view of past UDRP panels that the Top Level Domain (“TLD”) of a disputed domain name should be ignored for the purpose of comparing it with a trademark. The Panel is satisfied that, having disregarded the TLD “.com” in the Disputed Domain Name, the Disputed Domain Name is confusingly similar to the TETRA PAK trademark and accordingly determines that the first limb of paragraph 4(a) is established in this proceeding.
In dealing with the second limb of paragraph 4(a), the Complainant is only required to establish a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has declared that it has not licensed or otherwise permitted the Respondent to use the TETRA PAK trademark in the Disputed Domain Name. Moreover, the Complainant has denied any relationship with the Respondent to justify the registration of the Disputed Domain Name. There is no evidence before the Panel to suggest that the Respondent is commonly known by the Disputed Domain Name, or that the noncommercial and fair use has been made of the Disputed Domain Name by the Respondent. In the circumstances, the Panel is satisfied that the Complainant has discharged its evidential burden to establish a prima facie case that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. The burden of production, having shifted to the Respondent, remains unanswered by the Respondent in the absence of a response. Therefore, the Panel holds that a prima facie case of the second limb of paragraph 4(a) stands.
Based on the evidence in this proceeding, not least of all the fact that the TETRA PAK trademark has been registered and put to use decades before the registration of the Disputed Domain Name, the Panel cannot conceive that the Respondent could have been unaware of the TETRA PAK trademark. In the face of the Complainant’s forceful submissions of the well-known status of the TETRA PAK trademark as well as allegations of the Respondent’s knowledge and intentions as such, a reasonable person in the Respondent’s shoes would have objected vehemently if such allegations were incorrect. The Respondent’s lack of reaction and utter silence of response leads the Panel to an inevitable inference that the Complainant’s allegations have basis.
The Respondent’s email address associated the Respondent with other domain name registrations which, are not only alleged to be well known marks of other parties, but have in fact been held to be so by prior WIPO UDRP panels. For example, the trademark HITACHI incorporated in the associated domain name <cn-hitachi.com> has been held to be “highly recognizable and famous” (e.g., Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi, Ltd.) v. Click Consulting, Ltd., WIPO Case No. D2007-0809). Similarly, the trademark ADIDAS incorporated in the associated domain name <chn-adidas.com> and the trademark VOLKSWAGEN in the associated domain name <cn-volkswagen.com> have also been held to be well-known by past WIPO UDRP panels (e.g., Adidas AG and Adidas (Ireland) Limited v. Gabor Varga and Jozsef Petho, WIPO Case No. DIE2006-0004; Volkswagen AG v. Hui Min Wang, Wang Hui Min, 王慧敏, WIPO Case No. D2017-0860).
Paragraph 4(b)(ii) of the Policy identifies the following example of bad faith use and registration pursuant to the third limb of paragraph 4a):
“[the respondent has] 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 [the respondent has] engaged in a pattern of such conduct;”
In the Panel’s view, the registration of the Disputed Domain Name has clearly prevented the Complainant from reflecting the TETRA PAK trademark in a domain name corresponding to the Disputed Domain Name. The registration of <cn-hitachi.com>, <cn-volkswagen.com>, <chn-adidas.com> and the other domain names associated with the Respondent has clearly also prevented the owners of respective trademarks like HITACHI, VOLKSWAGEN and ADIDAS from similarly reflecting their trademarks as such. The circumstances of the present case appear to fit well within spirit of the example of bad faith use and registration identified in paragraph 4(b)(ii) of the Policy.
The fact that the Disputed Domain Name does not resolve to a website does not prevent a finding of bad faith under paragaraph 4(a)(iii). Further, the WhoIs information of the Disputed Domain Name contains invalid, if not false, contact details. In the absence of any explanation by the Respondent, the Panel can only infer that it was deliberate. A domain name registrant has a duty to provide valid contact details and the deliberate use of fictitious and/or ineffective contact details to register a domain name without valid reason has been held by past UDRP panels to corroborate a finding of bad faith registration and use (see ECCO Sko A/S v. Protected Domain Services Customer ID: NCR-2448048 / jizhiteam, WIPO Case No. D2010-1113; Farouk Systems Inc. v. David, WIPO Case No. D2009-1245). In the present case, the Panel takes the view that the finding of bad faith use and registration finds corroboration in the Respondent’s invalid contact details.
Therefore, in the totality of the above circumstances, the Panel concludes that the third limb of the paragraph 4(a) is established.
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, <cn-tetrapak.com>, be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Date: October 23, 2017