Tetra Laval Holdings & Finance S.A. v Shi Lei

WIPO Case No. D2023-3837

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Tetra Laval Holdings & Finance S.A. v. Shi Lei

Case No. D2023-3837

1. The Parties

The Complainant is Tetra Laval Holdings & Finance S.A., Switzerland, represented by aera A/S, Denmark.

The Respondent is Shi Lei, China.

2. The Domain Name and Registrar

The disputed domain name <tetrapakreward.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2023. On September 14, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 14, 2023, 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 (Super Privacy Service LTD c/o Dynadot) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 15, 2023, 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 September 19, 2023.

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 September 25, 2023. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 16, 2023.

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The Center appointed Cherise Valles as the sole panelist in this matter on October 26, 2023. 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 a part of the Tetra Laval Group.

The Tetra Laval Group consists of three independent industry groups, including the Tetra Pak Group. The Tetra Pak Group is a multinational food processing and packaging company which develops, markets, and sells equipment for processing, packaging, and distribution of food products such as dairy products,

beverages, ice cream, cheese, vegetables, and pet food.

The Complainant owns the TETRA PAK trademark, which is registered, both as word marks as well as part of device marks, in more than 160 countries around the world with more than 1,500 registrations, including in Sweden, the European Union, and the United States of America (the “US”). The following are some of the trademark registrations:

Registration Number	Trademark	Year of Registration
Chinese trademark registration no. 70315	TETRA PAK	1983
Swedish trademark registration no. 71196	TETRA PAK	1951
US trademark registration no. 586,480	TETRA PAK	1954
US trademark registration no. 580,219	TETRA PAK	1953

The disputed domain name was registered on August 15, 2023.

The disputed domain name resolves to a parking page containing pay-per-click links to third party business providing packaging solutions.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

- The disputed domain name is confusingly similar to the Complainant’s registered TETRA PAK

trademark, in light of the fact that it wholly incorporates the Complainant’s mark.

The Respondent lacks rights or legitimate interests in the disputed domain name.

- The Complainant states that the Respondent should be considered as having no rights or legitimate

interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the
Respondent to use its trademarks or to register any domain name that included its trademarks.

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The disputed domain name has been registered and is being used in bad faith.

- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and

use.

The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In terms of paragraph 4(a) of the Policy, for a Complainant to succeed, the Complainant must prove each of the following elements:

(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 or is being used in bad faith.

The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant.

A. Identical or Confusingly Similar

To prove this element, the Complainant must have relevant UDRP rights in a trademark and the disputed domain name must be identical or confusingly similar to such trademark.

The Complainant submits that the disputed domain name is confusingly similar to the trademark in which it has rights. The disputed domain name incorporates the TETRA PAK trademark in its entirety with the addition of the term “reward”. Given the Complainant’s trademark registrations as detailed above, the Panel finds that the Complainant has established its trademark rights in TETRA PAK for the purposes of paragraph 4(a)(i) of the Policy.

As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise)

would not prevent a finding of confusing similarity under the first element”.

It is standard practice when comparing a disputed domain name to a complainant’s trademark not to take the Top-Level Domain (“TLD”) into account. See section 1.11.1 of the WIPO Overview 3.0, which states that the “applicable TLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration

requirement and, as such, is disregarded under the first element of the confusing similarity test”. In the
present case, the TLD “.com” is disregarded under the first element of the confusing similarity test.
In the light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the
Complainant’s registered trademark and that the Complainant has met its burden with respect to paragraph
4(a)(i) of the Policy.

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B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a non-exhaustive set of circumstances, any of which, if found by the rights or legitimate interests to a domain name for the purposes of paragraph 4(a)(ii) of the Policy, namely:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain

name or a name corresponding to the domain name in connection with a bona fide offering of goods or
services; or

(ii)       you (as an individual, business or other organization) have been commonly known by the domain

name, even if you have acquired no trademark or service mark rights; or

(iii)      you are making a legitimate noncommercial or fair use of the domain name, without intent for

commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, whether on the basis of the non-exhaustive examples set out in paragraph 4(c) of the Policy or on any other basis, and the Panel draws inferences from this failure, where appropriate, in accordance with paragraph 14(b) of the Rules.

It is recognised in cases under the Policy that it is sufficient for a complainant to make a prima facie case
under the second element of the Policy that the respondent has no rights or legitimate interests in the
domain name concerned, and the burden of production of evidence shifts to the Respondent (see, for
example, Paris Saint-Germain Football v. Daniel Macias Barajas, International Camps Network, WIPO Case
No. D2021-0019; Spinrite Inc. v. WhoisGuard, Inc. / Gabriella Garlo, WIPO Case No. D2021-0012, and the
discussion in section 2.1 of the WIPO Overview 3.0). If a respondent fails to rebut such a prima facie case
by demonstrating rights or legitimate interests in the disputed domain name in accordance with paragraph
4(c) of the Policy, or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the
Policy.

On the evidence before the Panel, it appears that the Respondent is not affiliated or related to the Complainant in any way. The Respondent does not seem to be licensed, or otherwise authorized, be it directly or indirectly, to register or use the Complainant’s TETRA PAK trademark in any manner, including in, or as part of, the disputed domain name.

The Complainant asserts that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy in order to demonstrate rights or legitimate interests in the disputed domain name. In particular, the Respondent cannot assert that, prior to any notice of this dispute, he was using, or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. Rather, the evidence presented illustrates that the Respondent sought to capitalize on the risk of implied affiliation found in the composition of the disputed domain name by using the disputed domain name to host pay-per-click links.

The Complainant submits that the Respondent is not an authorized reseller, service provider, licensee or distributor of the Complainant, or in any other way permitted to use the Complainant’s trademark.

In light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and concludes that paragraph 4(a)(ii) of the Policy is satisfied.

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C. Registered and Used in Bad Faith

For this element, the Complainant is required to prove that the disputed domain name was registered and is
being used in bad faith. The term “bad faith” is “broadly understood to occur where a respondent takes
unfair advantage of or otherwise abuses a complainant’s mark”. See section 3.1 of the WIPO Overview 3.0.
Paragraph 4(b) of the Policy sets out four non-exhaustive examples of circumstances which, if found by the

Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that the respondent registered or 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 the documented out-of-pocket costs directly related to the domain name; or

(ii) 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; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a
competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, 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 its website or location.

In the present case, the Complainant’s submissions relate to paragraph 4(b)(iv) of the Policy.

Previous UDRP panels have found that the mere registration of a domain name that is identical or
confusingly similar (particularly domain names comprising typographical errors or incorporating the mark plus
a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a
presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.

The disputed domain name currently resolves to a parking page containing pay-per-click links to third party business providing packaging solutions (Annex G to the Complaint). The Respondent appears to be using the disputed domain name in an intentional attempt to attract, for commercial gain, Internet users to the

website by creating a likelihood of confusion with the TETRA PAK mark as to the source, sponsorship, and disputed domain name was to create an impression of an association with the Complainant.

affiliation of the website to which the disputed domain name resolves. Given the well-known status of the
trademark TETRA PAK and the Complainant’s global business including in the Chinese market, the

The Respondent has not participated in the administrative proceeding and has not answered the Complainant’s contentions. The fact that the Respondent has decided not to provide any legitimate explanation or to assert any alleged good faith motivation in respect of the registration or use of the disputed domain name in the face of the Complainant’s contentions can be regarded as an indicator of registration or use in bad faith (see WIPO Overview 3.0, section 3.2).

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.

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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 <tetrapakreward.com> be transferred to the Complainant.

/Cherise Valles/
Cherise Valles
Sole Panelist
Date: November 9, 2023