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WIPO Domain Name Decision: D2000-1708
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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tetra Laval Holdings & Finance S.A. v. Elaine Bell
Case No. D2000-1708
1. The Parties
The Complainant in this administrative proceeding is Tetra Laval Holdings & Finance S.A., a corporation organized under the laws of Switzerland, Address: P.O. Box 446, CH-1009 Pully, Switzerland. The Complainant’s authorized representative in this administrative proceeding is Euro909.com, legal division, Anna Maria Lagerqvist, LLM, P.O Box 7101, SE-200 42 Malmo.
According to the concerned registrar Network Solutions’ Whois database, i.e. the InterNIC database, the Respondent in this administrative proceeding is Elaine Bell. Elaine Bell is an individual located at 2501 S. Ocean Dr. in Florida, USA, according to her domain name registration. The Complainant believes that the Respondent may also be located at 4330 Hillcrest Drive, in Hollywood, Florida 33021, USA. and/or PO Box 220635 in Hollywood, Florida, US 33022. In addition, the Respondent referred to an additional address at Chrissyґs News and Paralegal Service, 500 Lincoln Highway, North Versailles, PA 15137, USA.
2. The Domain Name and Registrar
The domain name in question is "tetrapakamericas.com". The registrar with which the domain name is registered is: Network Solutions, Inc., 505 Huntmar Park Drive Herndon, VA 20170, USA.
3. Procedural History
On December 7, 2000, the Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") in electronic version. On December 13, 2000, a hardcopy of the Compliant was sent to the WIPO. It complied with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("the Supplemental Rules"). The appropriate fees were paid by the Complainant.
On December 11, 2000, a Request for Registrar Verification was transmitted to the Registrar. On December 14, 2000, the Registrar confirmed by e-mail to the Center that it had received the Complainant from the Complainants, that the Registrar is the registrar of the domain name "tetrapakamericas.com", that the Respondent is the current registration of the said domain name, that the Network 4.0 Service Agreement is in effect, and that the said domain name is in "Active" status.
On December 16, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding relating to the "tetrapakamericas.com" domain name to the Respondent by Post/Courier (with enclosures), by facsimile (Complaint without attachments) and by e-mail (Complaint with attachments). A copy of said Notification was sent to the authorized representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to Network Solutions Inc., the Registrar of the "tetrapakamericas.com" domain name (Complaint without attachments).
On January 4, 2001, the Respondent asked the Center for an extension of the deadline to submit a Response. At the same date, the Center extended the deadline until January 14, 2001. The Respondent did not submit any response to the Center. On January 16, 2001 the Center sent a Notification of Respondent Default to the Respondent advising the Respondent that the consequences of said default included inter alia that the Center would proceed to appoint a single member Administrative Panel.
On January 22, 2001 the Center invited Prof. Dr. Thomas Hoeren to act as Administrative Panel in these proceedings and having received a Statement of Acceptance and Declaration of Impartiality from the said Thomas Hoeren the Center proceeded to appoint this Administrative Panel consisting of a single member on January 23, 2001. On the same date, the case file was transferred to the Administrative Panel.
In the view of the Administrative Panel, the proper procedures were followed and this Administrative Panel was properly constituted.
4. Factual Background
Given the Respondent's failure to file a Response in this case, the Administrative Panel accepts as true and accurate, all statements of fact made by the Complainant in its submissions (see: Talk City Inc. v. Robertson, (WIPO Case D 2000-0009, February 24, 2000); Eauto, L.L.C. v. EAuto Parts, (WIPO Case D 2000-0096, April 9, 2000)).
The Complainant, Tetra Laval Holdings & Finance S.A., is a company within the multinational Tetra Laval group of companies. The Complainant is the proprietor of more than 700 trademark registrations of the word <Tetra Pak> in countries all over the world. The Complainant uses the mark to promote and market its products in many parts of the world. The Complainant also claims to have common-law rights to the name <Tetra Pak Americas>.
All companies and other business activities around the world within Tetra Pak are divided into three geographical areas: Europe & Africa, Asia, and America. All business activities and operations in these regions are denominated Tetra Pak Europe & Africa, Tetra Pak Asia, and Tetra Pak Americas. These names are not only used within Tetra Pak but also in connection with the promotion and marketing of its products and services all over the world through information and marketing material, on its Internet web site, etc.
The name <Tetra Pak Americas> has been extensively and continuously used by certain of Tetra Pak's business operations in America for many years. The name <Tetra Pak Americas> has gained substantial reputation and name recognition.
The Respondent is a former employee of Tetra Pak Americas Inc. (Tetra Pak Americas), a company within the Tetra Pak group of companies. On April 6, 1998, the Respondent was hired as an executive assistant and on May 15, 1999, the Respondent ended her employment. The Respondent’s employment was terminated.
The contents and the layout on the web site has changed from time to time but has mainly consisted of the following sites. One entry site displaying a picture of a beach, a frog, swimming fishes and the name TETRA. One sub site displaying another picture of a beach, a frog and hidden links to other web sites related to the word Tetra. A second sub site displaying more swimming fish and again the word TETRA.
In an email sent by the Respondent to the advocate of the Complainant dated on October 5, 2000, the Respondent stated that she was unaware of any trademark rights in the name <Tetra Pak Americas> and that the web site was not related to Tetra Pak’s activities. She also placed the following statement on the web site: "tetrapakamericas.com is not affiliated with Tetra Pak Inc., or tetrapak.com".
Due to the Respondents continued use of the domain name, Tetra Pak Americas made new efforts to contact the Respondent. On three different occasions Tetra Pak Americas tried to send certified and Federal Express letters to the Respondent to the Hillcrest Drive address, where the prior correspondence was accepted, without success. On November 10, 2000, the Respondent informed Tetra Pak Americas that a message had been left for their legal representative on the web site (at the time for filing this Complaint she has also posted some of the correspondence between the parties on a sub site that could be reached periodically by clicking on the word TETRA). Tetra Pak Americas responded on November 13, 2000, to which the Respondent subsequently replied on November 16.
5. Parties’ Contentions
The Complainant requested this Administrative Panel to issue a decision that the contested domain name be transferred to the Complainant. The Complainant asserted that each of the three conditions in paragraph 4(a) of the Policy is satisfied:
(i) The Complainant submits that the "tetrapakamericas.com" domain name is identical or confusingly similar to a trademark in which the Complainant has rights. It is submitted that the name "tetrapakamericas.com" domain name is identical to the Complainantґs trademarks.
The Complainant alleges: The name <Tetra Pak Americas> does not consist of either generic or common words. The name <Tetra Pak Americas> has a high degree of individuality, distinctiveness and wide reputation. The Complainant has worldwide registered trademark rights to the name <Tetra Pak> and common-law rights to the name <Tetra Pak Americas>. The Respondent is not, and has never been, authorized by the Complainant to use the mark <Tetra Pak Americas> whether in connection with a domain name or otherwise.
Furthermore the Complainant maintains: The Respondent has not shown any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. In its view, the Respondent has not been commonly known by the mentioned domain name; in addition, the domain name is not the legal name of the Respondent nor, to the knowledge of the Complainant, of any entity with which the Respondent is lawfully associated.
(ii) The Complainant submits that the Respondent should be considered as having no rights or legitimate interests in respect of the "tetrapakamericas.com" domain.
Instead, the Respondent’s registration of the domain name and the connection to the web site must have been done with the purpose of preventing the Complainant from reflecting the mark in a corresponding domain name, with the deliberate attempt to tarnish the Complainant’s trademark and disrupting the Complainant’s business.
(iii) The Complainant further submits that the said "tetrapakamericas.com" domain name has been registered and is being used in bad faith. It argues that in Tourism and Corporate Automation Ltd. v. TSI Ltd., Case No. DeC AF-0096 the Panel concluded that the setting up of a domain name by a former employee that incorporated the company name of his former employer was held to be sufficient evidence of bad faith under the Policy even when no offer to sell the domain etc. had been made to the Complainant.
According to the view of the Complainant, the same approach was followed by the Panel in ESAT Digifone Ltd. v. Michael Fitzgerald Trading as TELCO Resources, WIPO Case No. D2000-0602, where the Respondent as a former employee to the Complainant, according to the Panel, must have been aware of the Complainant’s reputation and use of the word <DIGIFONE> as part of its corporate name and as a distinctive element in the Complainant’s common law trademark and concluded that the domain name was registered and used in bad faith.
The Complainant submits: The domain name "tetrapakamericas.com" registered by the Respondent incorporates the company name of her former employer and the Respondent must have been aware of the Complainant’s extensive use and trademark rights to the name <Tetra Pak Americas>. Accordingly, the Respondent’s registration of the domain name "tetrapakamericas.com" must have been done in bad faith. There is a strong likelihood that consumers will assume that the web site connected to the domain name "tetrapakamericas.com" reflecting the Complainant’s trademark is controlled or endorsed by the Complainant, a web site over which the Complainant in reality has no control whatsoever. Despite the Respondent’s statement on the web site, the fact that the Respondent is a former employee erases any possibility that the registration and the use of the domain name "tetrapakamericas.com" are in some way honest, mistaken or non-exploitative.
The Complainant found that the factual circumstances in the case at hand, as described above, clearly amount to the conclusion that the act of registration in this case constitutes use in bad faith, in accordance of paragraph 4 (a), iii.
The Respondent has made no submissions.
6. Discussion and Findings
The Complaint must be rejected. Independent of the question whether the other requirements of Art. 4 (b) of the Policy can be asserted the Respondent has not acted in bad faith.
a) Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) the following circumstances, in particular but without limitation, if found by the Administrative Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has 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 Respondent's 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, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
None of these circumstances can be found in the existing case. In particular the Respondent has not tried to sell the domain to the complainant. Nothing indicates that she is a competitor or linked with a competitor of the complainant, hence her purpose in registering the domain name could not have been to disrupt the business of the competitor. In addition, it cannot be said that the Respondent has intentionally attempted to attract Internet users to her web site for commercial purposes. While the Respondent’registration does prevent the Complainant from reflecting its mark in a corresponding domain name.There is no evidence that the Respondent has engaged in a pattern of such conduct as it has been foreseen in Paragraph 4 (b) (ii). The Complainant seems to think that every act of preventing the Complainant from reflecting the Complainantґs trademark in a corresponding domain name is a violation of the Paragraph 4 (b) (iii). But, it has neglected the requirement of a "pattern of such conduct", which cannot be established in this case.
b) Other elements of "bad faith"
The examples of bad faith listed in paragraph 4(b) of the Policy are non-exclusive. Notwithstanding the foregoing, therefore, this Panel finds it relevant in the circumstances to evaluate whether the Respondent can be said to have acted in bad faith in light of the case precedents cited by Complainant.
The Complainant refers to the fact that the Respondent was a former employee. It states that the registration of a domain name which incorporated the company name of the former employer must have been done in bad faith. The Complainant refers to two panel decisions to support its connection; in fact, there seems to be no additional panel case dealing with the situation of former employees. However, the references mentioned by the Complainant are not convincing in the view of the panel. In fact, the behavior of the Respondent does not amount to "bad faith".
The first decision, Tourism and Corporate Automation Ltd. v. TSI Ltd. (Case No. DeC AF-0096), is not a parallel one. In that case, the Respondent was discharged or dismissed and upon leaving his employee established a new company in the market. The panel held that it is of high legal relevance that the respondent domain name holder had already declared that its use of the name < tourplan.com> is for commercial purposes. Its intention was to offer commercial services from its site, and to build brand awareness around the domain name. In that case, there was evidence that the parties were working in a similar business, far closer to the "identical" end than to the "totally unrelated" end. In that particular case, it was thus easy to state that the respondent had intentionally attempted to draw visitors to its site through confusion with the complainant's mark "TourPlan," and hence had exhibited bad faith.
Similarly, the case ESAT Digifone Ltd. v. Michael Fitzgerald Trading as TELCO Resources /WIPO Case No. D2000-0602) is not dispositive. In that case, the contested domain name <digifone.net> domain name defaulted to a "www" site, which announced "information about digital telephony coming soon". There was no evidence at that time that the Respondent was actively engaged in supplying such services. At the time of initiation of the dispute procedure, said domain name <digifone.net> resolves to a "www" site at which the public could post articles, information and questions relating to issues of Internet telecommunications and national security, encryption, international espionage etc. A section of this "www" site currently contains articles relating to GSM technology. According to the Complainant, there was no apparent monitoring authority as regards the contents of this site.
Under those specific circumstances, the panel affirmed "bad faith" as the Respondent had arranged for the said domain name to default first to a site with a holding message which by its content suggested that the owner of the "www" site was soon to offer services identical or similar to those of the Complainant and, subsequently to a site dealing with issues relating among other things, to the security of GSM technology, which is used by the Complainant in the provision of its services.
These two cases cannot be compared to the present one. First, the present case has to be distinguished from the <Tourplan> case. According to the explanation of the Complainant itself, the Respondent is acting as a private person, without any commercial background. She has participated in programming courses, partly due to the support of her former employer. But she was not working within the same market area. In addition, there are no indications that she wants to sell the domain in question to the Complainant or other persons. She might be a "mere" housewife who is using her technical skills to build up her own private homepage.
Moreover, the present case must also be distinguished from the <digifone.net>. There are no relationships between the homepage of the Respondent and the activities of the Complainant. In the moment where this opinion has been written, the homepage in question only contains frogs, swimming fishes and the word Tetra. As the Complainant himself stated, the homepage contained hidden links to other sites, which deal with the Greek word "Tetra", such as the "tetralogy of fallot" or Platoґs Tetralogies. Therefore, there is no commercial context of the activities of the Respondent; in addition, the homepage is in itself non-commercial. Of course, it is not necessary that she uses the term "tetrapakamericas.com" for building up an information service on "tetra". But the Policy does not deal with the question whether private persons should use company names as part of a privately used domain name. The Respondent herself stated before the proceedings that her website was neither similar nor related to liquid food packaging. In addition, the Respondent integrated statements on her homepage that "tetrapakamericas.com is not affiliated with Tetra Pak Inc or tetrapak.com". This reference is eo ipso not sufficient to exclude a violation of trademark rights. But in the specific context of this case, the reference can be used to demonstrate among others that the Respondent did not intend to use and has not used the contested domain name in bad faith.
With specific reference to Paragraphs 4(i) of the Policy and 15 of the Rules, this Administrative Panel decides that the Respondent has not used the domain name "tetrapakamericas.com" in bad faith. Accordingly, this Administrative Panel decides that the said domain name "tetrapakamericas.com" should not be transferred to the Complainant and that the Complaint has to be rejected.
Prof. Dr. Thomas Hoeren
Dated: January 16, 2001