WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tetra Laval Holdings & Finance S.A. v. Mohammad Ali Mokhtari

Case No. DIR2010-0007

1. The Parties

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

The Respondent is Mohammad Ali Mokhtari of Tehran, Islamic Republic of Iran, represented by Mohammad Kazem Mokhtari, Islamic Republic of Iran.

2. The Domain Name and Registrar

The disputed domain name <tetrapak.ir> is registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2010. On November 25, 2010, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On November 30, 2010, IRNIC 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 .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir 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 November 30, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2010.

As the Respondent did not submit its Response by December 20, 2010, the Center on November 21, 2010 informed parties of the Respondent’s default.

Subsequently, on December 21, 2010, the Respondent subsequently filed a late Response, which had been admitted and considered by the Panel.

The Center appointed James Bridgeman as the sole panelist in this matter on January 7, 2011. 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. The Tetra Laval Group consists of three independent industry groups: Tetra Pak, DeLaval and Sidel Group.

The Tetra Pak business was founded in 1947 in Sweden and is now a world leader in development, production and sale of equipment and processing plants for making packaging, and distribution of foods and accessories. Tetra Pak employs more than 22,000 people and is operative in more than 150 countries worldwide.

The Complainant is the owner of all Tetra Pak’s trademarks throughout the world and licences these trademarks back to Tetra Pak for use in connection with its respective businesses.

The Complainant is the owner of a large portfolio of more than 2000 trademark registrations for, or incorporating the TETRA PAK trademark in more than 160 countries throughout the world including:

Swedish Trademark Registration No. 71196 TETRA PAK registered in 1951;

Community Trade Mark (CTM) Registration No. 1202522 TETRA PAK;

Community Trade Mark (CTM) Registration No. 3276565 TETRA PAK PROTECTS WHAT’S GOOD (Device Mark);

Community Trade Mark (CTM) Registration No. 3188323 TETRA PAK PROTECTS WHAT’S GOOD (Device Mark);

Community Trade Mark (CTM) Registration No. 7242969 PROTECTS WHAT’S GOOD TETRA PAK (Device Mark);

Community Trade Mark (CTM) Registration No. 7242985 TETRA PAK PROTECTS WHAT’S GOOD (Device Mark);

Iranian Trademark Registration No. 9239 TETRA PAK, registered in 1952;

Iranian Trademark Registration No. 137713 TETRA PAK PROTECTS WHAT’S GOOD (in Arabic), registered in 2006.

Furthermore the Complainant is the owner of more than 220 domain name registrations throughout the world incorporating the words “tetra pak”.

The Respondent is a director of Pars Pardazesh Farda Co. Ltd., an Iranian company that was founded in March 7, 2006 in the Islamic Republic of Iran and is engaged in computer software, Internet and web related businesses, ecommerce solutions and the provision of media services. He is the owner of a large portfolio of “.ir” ccTLD domain names, which include a number of registrations of domain names that are identical to distinctive internationally famous brands such as <agfa.ir>, <calvinklein.ir>, <chevron.ir>, <kelvinator.ir>, <kraft.ir> and <timberland.ir>.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name wholly incorporates the Complainant’s TETRA PAK trademark and that it is visually, phonetically and conceptually confusingly similar to the Complainant’s TETRA PAK trademark.

The Complainant submits that the Respondent has no rights or legitimate interest in the disputed domain name. The Complaint has long and continuous use of the TETRA PAK mark and none of the situations listed in paragraph 4(c) of the Policy can be established in this case.

The Complainant submits that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark. There is no relationship between the parties which would justify the registration of the disputed domain name by the Respondent and nothing in the record including the WhoIs information, to suggest that the Respondent is commonly known by the disputed domain name.

The Complainant further submits that the Respondent is not making any bona fide offering of goods or services or making a non-commercial fair use of the disputed domain name.

The Complainant submits that the Respondent has intentionally registered and is using the disputed domain name in bad faith.

The Complainant submits that the Complainant must have known of the Complainant’s TETRA PAK mark when the disputed domain name was registered.

The Complainant first registered the TETRA PAK trademark in Iran in 1952 and the Complainant’s rights in TETRA PAK in Iran have been recently recognised in Tetra Laval Holdings & Finance S.A. v. Vahid Moghaddami, AzarNet.Co,WIPO Case No. D2010-0268.

The Complainant has a local office in Iran and has been present in Iran, where the Respondent is based, since 1975. The Complainant has also been part of the “School Milk Programme” in Iran which covers 12 million school children and is one of the largest in the world. A simple browser search would have disclosed the Complainant’s presence on the Internet.

The Complainant cites the decision of the panel in PepsiCo, Inc. v. Paul J.Swider,WIPO Case No. D2002-0561 and submits that the registration of a trademark which in its entirety reproduces a well-known trademark by a person with no connection with the trademark owner amounts to “opportunistic bad faith”.

The Complainant submits that the disputed domain name registration was not active at the date of filing of the Complaint and further submits that the Respondent is blocking the Complainant as trademark owner from use of its trademark as a website address or as an email address in Iran. The Complainant submits that the passive holding of the disputed domain name by the Respondent is evidence of bad faith registration and use in the circumstances. In this regard the Complainant cites the decision of the panel in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 in support of its submission.

The Complainant states it sent a cease and desist letter to the Respondent on July 22, 2010 to which the Respondent replied on August 13, 2010 seeking compensation for the transfer of the disputed domain name. The Complainant considers the registration of the disputed domain name to be an infringement of its rights and decided that any compensation which exceeded the out-of-pocket expenses could not be considered. The Complainant submits that the request for compensation exceeding the out-of-pocket expenses associated with the transfer of the disputed domain name is also evidence of bad faith registration and use.

Finally the Complainant submits that the Respondent is a “classic cybersquatter” as he is the owner of several domain name registrations in the “.ir” ccTLD space that incorporate well known trademarks. The Complainant has furnished a list of such domain names as an annex to the Complaint.

B. Respondent

The Respondent did not file a timely Response to the Complainant’s contentions, however for reasons given below the Panel has decided to admit and consider the late-filed Response.

The Respondent submits that he is a director of an Iranian registered company that has provided more than 400 services, websites and consultations in the field of computer, Internet and media since its establishment in 2006.

One of the clients of the Respondent’s company is an Iranian corporation, Pars Tetra PAK Civil Co. PJS, that was registered on September 17, 2008 and operates as a contractor in field of civil engineering and environmental development, urban area architecture and related areas of activity. The Respondent has provided a copy of a contract between his said company and said Pars Tetra PAK Civil Co. PJS that was signed on October 16, 2008 whereby the Respondent’s company was engaged to design and develop a website for said Pars Tetra PAK Civil Co. PJS. The disputed domain name was available at that time and the Respondent submits that the disputed domain name was registered in order to give effect to said contract.

The Respondent denies that the Complainant is entitled to succeed in this Complaint and argues that the words “Tetra”, and “Pak” are part of the name of the Respondent’s client and said Pars Tetra PAK Civil Co. PJS therefore has rights or legitimate interests in respect of disputed domain name.

The Respondent argues that the first part of the disputed domain name consists of the generic dictionary word “tetra”, derived from Ancient Greek meaning the number “four” that has been widely used in many languages as a prefix. Furthermore the Respondent submits that “pak” or “pac” is a Farsi word translated as “clean, tidy, pure, spiffy” in English and is also therefore a commonplace generic word. The Respondent has furnished dictionary references to substantiate these submissions.

The Respondent relies on the reasoning of the panel in a similar recent UDRP case Avantagesv. PT. IndoInternet, WIPO Case No. D2010-1629, where the panel according to the Respondent found that the disputed domain name consisted of a generic term in the Indonesian language, being the native language of the registrant and found that the native registrant language was the dominant viewpoint in comparing a trademark and domain name under the UDRP.

The Respondent also relies on the reasoning of the panel in Orbis HoldingsLimited v. Lu A Feng (First Respondent) and Orbis Search (Second Respondent),WIPO Case No. D2007-0515, where the panel found that the ORBIS mark in issue was not an inventive or coined word but a dictionary term of Latin origin.

The Respondent refers to the fact that the Complainant has registered a large portfolio of domain names incorporating the words “tetra” and “pak” and complains that by registering a large number of domain names the Complainant intended to overwhelm completely any opportunity that others may have to use these words as a domain name and prevent others from competing even in fields of activity where the Complainant has no rights.

The Respondent furthermore argues that the situation in Iran is unique because in none of the other countries in which the Complainant has registered domain names is there any similar widely-used meaning taken from second part of disputed domain name viz. “pak” which is a common generic word in Farsi.

The Respondent submits that before he received any notice of the dispute, he had used or made demonstrable preparations to use the disputed domain name for the abovementioned client’s website. The Respondent’s company signed the abovementioned contract with its client two years before the Complainant’s cease and desist letter was received by the Respondent.

The Respondent further submits that a screenshot of the website to which the disputed domain name resolves shows that the Respondent’s client is engaged in a bona fide offering of goods or services in field of civil engineering and environmental development, urban area architecture and related fields.

Furthermore, the Respondent submits that his company’s client owns other domain names consisting of the words “tetra” and “pak” singly or in combination form viz. <tetra.ir>, <tetrapac.ir> and <tetrapark.ir>, that are completely related to its own name, its field of activity and its rights and legitimate interest and has used these similar domain names to exhibit information about past and future projects.

The Respondent refers to the decision in Tetra Laval Holdings & Finance S.A. v. Elaine Bell, WIPO Case No. D2000-1708, and submits that in that case the panel referred to integrated statements on the respondent’s homepage that “tetrapakamericas.com is not affiliated with Tetra Pak Inc or tetrapak.com”. The Respondent states that similar sentences would be present on the homepage of the Respondent’s client indicating that the website to which the disputed domain name resolves has no affiliation with similar names or websites and especially the Complainant’s website at <tetrapak.com>.

The Respondent submits that his company’s client’s website is intended to provide information about its projects and related matters and obviously is not intended for commercial gain.

The Respondent asserts that the Complainant may not have any rights or legitimate interest at issue in Iran.

The Respondent denies that he had knowledge of the Complainant’s rights when the disputed domain name was registered. In this regard he relies on the decision of the panel in Drew Bernstein and Kill Cityd/b/a Lip Service v. Action Advertising, Inc., WIPO Case No. D2000-0706, where the panel, according to the Respondent, noted that the respondent “had no knowledge of the [c]omplainants’ trademark until receipt of their ‘cease and desist letter" two years after [r]espondent’s registration and commencement of use of the [d]omain [n]ame and that a domain name holder is not required to undertake prior trademark searches in every country of the world”. The Respondent also relies on the more recently decided ADOS GmbH v. ThereforeCorporation GmbH, WIPO Case No. D2010-1535, where, according to the Respondent, the panel was satisfied that the Respondent was not aware of the existence of the Complainant, since the parties are not competitors.

The Respondent submits that lack of research of a trademark before registering a domain name does not indicate bad faith and he again refers to the said decision in ADOS GmbH, supra, where he submits it was decided that “there was no reason for the [r]espondent to conduct a trademark research at the time of the registration of the disputed domain name <ados.com> [and a] trademark search is not even mandatory before registering a trademark according to Austrian or European trademark law”.

The Respondent argues that since his company’s client has rights and legitimate interest in the disputed domain name this present case cannot be compared to PepsiCo, Inc., supra, relied upon by the Complainant.

Referring to the Complainant’s allegation that the disputed domain name was “at the moment not active”: the Respondent states that the registration had expired only 3 days before the Complaint was filed. The Respondent submits that the IRNIC terms and conditions provide that in such circumstances the domain name will be kept for 60 days for present holder. There was only 5 days delay (allowing for a Great Iranian Holiday) between expiry and renewing of the disputed domain name registration, which the Respondent submits is not uncommon for domain name renewal procedures. The Respondent submits that this demonstrates that “the Respondent has been activating this domain”.

Referring to the Complainant’s allegation that the Respondent is also the owner of several other domain names incorporating well known trademarks, the Respondent submits that several of these registrations are generic domain names, some of them consist of three characters, some of them have different meaning in the language of the registrant which eo ipso do not constitute bad faith according to Panel Decision in case Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016 where the panel, according to the Respondent, stated that “[t]he registration of common word domain names - nomatter how many- does not constitute bad faith under the Policy”.

Furthermore, in this regard the Respondent refers to the decision in Amana Company, L.P. v. Vanilla Limited,WIPO Case No. D2001-0749, where the panel, according to the Respondent, found no objection to the registration of thousands of domain names consisting of common words or city names in connection with one or more sites of the respondent’s associated company. The Respondent argues therefore that there is no prohibition against him registering these type and/or number of domain names in connection with his company.

The Respondent also argues that it is legitimate for him to engage in the business and registration of domain names and/or using them to display advertising links. In this regard he cites the decision of the panel in Gigglesworld Corporation v. Mrs Jello, WIPO Case No. D2007-1189 which he argues supports the proposition that such activity is “most likely to be deemed legitimate under the Policy”.

The Respondent submits that the participation of the Complainant in the School Milk Programme in Iran is not relevant to this Complaint as it is a public program and certain government ministries of Iran have the benefit of all rights relating to this program. Furthermore, the Respondent argues that since said Milk Program was established in the year 2000 by the National IranianSchool Milk Committee, which was ten years prior to his receipt of the Complainant’s cease and desist letter, this is evidence that the Complainant has not taken its relationship with Iran seriously.

The Respondent denies that there was any evidence that he has intentionally attempted to use the disputed domain name to attract Internet users for commercial gain by creating a likelihood of confusion or affiliation with the Complainant as alleged. The Respondent further denies that there is any evidence that the Complainant is using the disputed domain name to offer goods or services that compete with the Complainant’s business as alleged.

The Respondent submits that the Complainant has wrongly claimed that the disputed domain name is being used to offer competing services.

The Respondent distinguishes the facts in the present case from those in Deutsche Telekom AG v. KawehKalirad, WIPO Case No. DIR2008-0002 as the Complainant and the Respondent are not domiciled in the same jurisdiction or of the same nationality.

Finally, the Respondent objects to the fact that the Complainant filed over 100 pages of material as annexes attached to the Complaint, some of which he states were completely irrelevant and filed in order to confuse these proceedings.

6. Discussion and Findings

Preliminary Procedural Issue Regarding Late Response

Paragraph 10 of the Rules inter alia obliges the Panel to ensure that the administrative proceeding takes place with due expedition and states that, at the request of a Party or on its own motion, the Panel may in exceptional cases, extend a period of time fixed by the Rules or by the Panel.

Paragraph 14 of the Rules deals with the default of a party and provides inter alia that if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.

The deadline for filing a Response in these proceedings was December 20, 2010. The Center sent a Notification of Respondent Default on December 21, 2010. The Respondent sent an email on December 21, 2010 requesting a one-day extension of time as there had been difficulties preparing the response including delay caused by public holidays in Iran. The Respondent sent a Response together with annexes by email on December 22, 2010.

The delay of one day was de minimis in the circumstances. In the Panel’s opinion, the Respondent has given a reasonable explanation for the delay. When the deadline of December 20, 2010, passed the Center proceeded to administer this Complaint on a default basis. The appointment of the Panel was not delayed and there was no prejudice to the Complainant. Furthermore, the Respondent, following the Complainant’s request, requested a single member panel.

In the circumstances, exercising the power conferred by paragraph 10 of the Rules, this Panel has decided to admit and consider the Response.

Substantive Issues

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in respect of the disputed domain name to obtain an order that a domain name should be cancelled or transferred:

(1) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(3) that the disputed domain name has been registered or is being used in bad faith.

The Policy (irDRP) governs disputes on the “.ir” ccTLD. Its terms are a variant of the UDRP. A relevant difference between the irDRP and the Uniform Domain Name Dispute Resolution Policy (UDRP) is that it is sufficient to prove that either registration or subsequent use of the domain name by the registrant occurred in bad faith, whereas the UDRP requires the Complainant to prove both elements. Most of the panels appointed under the Policy including the three member panel in Facebook, Inc. v. Majid Karimian Ghannad,WIPO Case No. DIR2009-0001, have relied on earlier UDRP decisions. Furthermore in Alstom v. Nasrin Nastran,WIPO Case No. DIR2008-0001, Hewlett-Packard Company v. Tehran Falnic Company, WIPO Case No. DIR2009-0002 and EPSON Europe BV for and on behalf of Seiko EPSON Corporation v. Hasan Fefelian, WIPO Case No. DIR2010-0002 the panels referred to the WIPO Overview of Panel Decisions. Where appropriate, this Panel has accordingly applied the principles that have been applied by panels under the UDRP.

A. Identical or Confusingly Similar

This Panel finds that the disputed domain name is identical to the TETRAPAK trademark in which the Complainant has rights.

The Complainant has furnished evidence of the fact that it has extensive rights and reputation in the TETRAPAK trademark in many jurisdictions throughout the world including Iran, where it is the owner of a registered trademark and has engaged in a significant school milk program for a number of years.

As the Policy may be interpreted in the light of the large body of decisions under the UDRP, in making the comparison between the disputed domain name and the Complainant’s TETRAPAK trademark, this Panel ignores the “.ir” extension for the purposes of the test of identity or confusing similarity, as would be the case in UDRP proceedings.

The Complainant has therefore satisfied the first element of the test in paragraph 4 of the Policy.

B. Rights or Legitimate Interests

This Panel finds that on the balance of probabilities that the Respondent has no rights or legitimate interest in the disputed domain name.

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name on the basis of the Complainant’s rights and reputation in the TETRA PAK trademark in Iran and elsewhere in the world and the fact that there is no connection between the Respondent and the Complainant. In the circumstances the onus of proof shifts to the Respondent to establish that he has such rights.

The basis of the Respondent’s claim is that he has registered the disputed domain name in order to provide Internet and website design services to a client company Pars Tetra PAK Civil Co. PJS. His claimed rights are therefore based on the rights of a third party. He has failed to provide any proof that the third party exists or has any such rights. The Respondent has provided a copy of a document which he claims is a contract in Farsi with said third party to provide Internet and website design services but has not provided any English translation. Even if this Panel were to accept that the Respondent’s client has a contract to provide Internet and website design to an entity called Pars Tetra PAK Civil Co. PJS, depending on the circumstances this would not in itself be sufficient to discharge the onus of proof.

In the present circumstances, even if this Panel accepts that the third party exists, it is unlikely that the third party was not aware of the Complainant when the third party chose and registered its company name. While this Panel accepts that the Complainant’s rights in the TETRA PAK trademark in Iran may not be exclusive in all fields of activity, the Respondent has not provided any explanation as to why the third party might have decided to adopt the distinctive combination of the words “tetra” and “pak” as its name, given the Complainant’s established rights and reputation, even if one accepts that the words mean “four” and either “clean”, “tidy”, “pure”, or “spiffy” in Farsi.

Furthermore this Panel does not accept that the Respondent was unaware of the Complainant’s rights in the TETRA PAK trademark when he registered the disputed domain name. He claims to have an expertise in providing Internet and website design. When registering the disputed domain name it is unlikely that he did not become aware of the Complainant’s domain names and Internet presence. His claims to have innocently registered the disputed domain name are all the less credible when one considers that he holds a large portfolio of “.ir” domain names, which include a number of registrations of domain names that are identical to distinctive internationally famous brands such as <agfa.ir>, <calvinklein.ir>, <chevron.ir>, <kelvinator.ir>, <kraft.ir> and <timberland.ir>.

Finally and most convincingly for this Panel, the Respondent’s claim to have registered the disputed domain name to provide a service to a third party cannot be consistent with the fact that the Respondent entered into negotiations to sell the disputed domain name to the Complainant. If he or his company had obligations to a third party as he claims, he obviously would not be entitled to sell the disputed domain name.

In the circumstances therefore, on the balance of probabilities this Panel is satisfied that the Respondent has no rights or legitimate interest in the disputed domain name and the Complainant has succeeded in establishing the second element of the test in paragraph 4 of the Policy also.

C. Registered or is Being Used in Bad Faith

This Panel finds that the disputed domain name was registered and is being used in bad faith.

This Panel finds that, on the balance of probabilities, the disputed domain name was registered in bad faith. It is improbable that the Respondent was unaware of the Complainant’s rights when the disputed domain name was registered. He is engaged in an Internet based consultancy. Even if he was unaware of the Complainant’s business or its participation in the School Milk Program, when he registered the disputed domain name he must have become alerted to the Complainant’s prior domain name registrations and Internet presence as there was limited availability of domain names consisting of the letters “tetrapak” at that time.

His claim to have innocently registered the disputed domain name in order to provide services to a client of his company is inconsistent with the fact that he has also registered a number of domain names that are identical to well-known distinctive trademarks.

Furthermore and finally his willingness to sell the disputed domain name to the Complainant, following receipt of a cease and desist letter shows that it does not appear very feasible that he is holding the disputed domain name on behalf of any third party as he claims.

Under the Policy it is not necessary to determine whether the disputed domain name is being used in bad faith. As to whether the disputed domain name was active or inactive, the Respondent appears to have misunderstood the Complainant’s allegations. It appears that the Respondent understood that the Complainant was alleging that the registration had expired and he explained that he had a 60 day grace period in which to renew the registration.

The Complainant’s allegation related not to whether the disputed registration had expired but to the alleged non-use of the disputed domain name by the Respondent which the Complainant alleged was passive holding from which the Panel could take an inference of bad faith registration and use. In this regard the Complainant cites the decision of the panel in Telstra Corporation Limited, supra, in which it was held that the passive holding of the disputed domain name by the respondent was evidence of bad faith evidence and use.

The Respondent has provided a print out of the website to which the disputed domain name resolves dated December 16, 2010 at 11.02 a.m. The Complainant has furnished a search made on “www.google.se” on November 23, 2010, which appears to show that there was no active website at that address. This Panel is not satisfied that the search engine search is adequate to show that the disputed domain name was not active on that date. It would have been more appropriate for the Complainant to provide a print out of the page that was displayed at “www.tetrapak.ir” on the day in question rather than the results of a Google search against “tetrapak.ir”.

This Panel makes no finding therefore as to whether the disputed domain name was active or inactive prior to December 16, 2010.

As the disputed domain name was registered in bad faith, the Complainant has satisfied the third and final element of the test in paragraph 4 of the Policy and is entitled to succeed in the Complaint.

7. Decision

For all 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 <tetrapak.ir> be transferred to the Complainant.

James Bridgeman
Sole Panelist
Dated: January 17, 2010