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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Birgit Rausing, AB Tetra Pak v. Darren Morgan

Case No. D2008-0212

 

1. The Parties

The Complainants are Birgit Rausing and AB Tetra Pak, Lund, Sweden, together represented by Groth & Co KB, Sweden.

The Respondent is Darren Morgan, Ottawa, Canada.

 

2. The Domain Name and Registrar

The disputed domain name <birgitrausing.com> is registered with Schlund + Partner.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2008. On February 12, 2008, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the domain name at issue. On February 13, Schlund + Partner transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 15, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 February 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 10, 2008.

The Center appointed James A. Barker as the sole panelist in this matter on March 14, 2008. 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

In the absence of a Response, the following facts are not contested.

Dr. Ruben Rausing founded the world famous Tetra Pak in 1952. In the early 1950s Tetra Pak was one of the first packaging companies for liquid milk. Since then, the company has become one of the world’s largest suppliers of packaging systems for milk, fruit juices and drinks, and many other products. Tetra Pak provides preferred processing and packaging solutions for food on a global scale. Tetra Pak supplies hundreds of different types of carton packaging formats and develops state-of-the-art processing solutions and design and service complete plants.

Tetra Pak operates in more than 165 countries with over 20,000 employees and is one of three industry groups that belong to the Tetra Laval Group. The other two groups are DeLaval and Sidel. Tetra Laval is a private industrial group of Swedish origin headquartered in Switzerland.

At the date of this decision, the disputed domain name reverts to a ‘portal’ or ‘landing’ website. The website includes a list of seemingly random links, including to “Bisexuals”, “Find a Date”, “Online Training”, and “Career Tests”, among others.

 

5. Parties’ Contentions

A. Complainant

Identical or confusingly similar

The name of the first Complainant is Birgit Rausing, which the Complainant claims is also a trademark. The disputed domain name is identical to that mark, save for the addition of the TLD “.com”.

It is the opinion of the Complainants that AB Tetra Pak and the Rausing family have acquired common law trademark rights in the name “Rausing” and that the first Complainant has acquired common law trademark rights in her personal name.

Furthermore, the Complainant claims that the name “Rausing” has, as a result of commercial use and long term exposure, become an indication of the source of goods and services supplied in trade by AB Tetra Pak and its subsidiaries. The second Complainant is the legal owner of the registered Benelux trademark RAUSING. The priority of the trademark predates the registration of the disputed domain name which was registered January 31, 2006. The disputed domain name contains the registered trademark RAUSING in its entirety with the addition of the name “Birgit”.

The first Complainant does not rely upon a registered trademark but on her claimed common law rights in her personal name. The first Complainant claims that she has, under this mark, achieved international recognition by the general public. The first Complainant was married to the son of the founder of Tetra Pak, Gad Rausing, who passed away in 2000. Due to the first Complainant’s involvement in the Tetra Pak company, the first Complainant’s distinctive name is often widely exposed in numerous international yearly lists of the wealthiest people in the world, adding to the international reputation and fame of the first Complainant’s name.

The first Complainant further contends that she is not only involved in Tetra Pak but is also a prominent author who has written and published several books. As such, the first Complainant claims to be trading on her name, as a corresponding mark, to sell products such as books. Among the first Complainant’s most famous literary works are said to be: “Tora Vega Holmstrцm” (1981), “Rainer Maria Rilke och Tora Vega Holmstrцm” (1989), and “Ester Almqvist: Och hennes krets” (1998).

In addition to being an author, the first Complainant is famous for donating funds and administrating a privately owned foundation since 1995.

Searches on Google for the first Complainant’s mark produce numerous websites referring to the first Complainant.

Rights or legitimate interests

The Complainants contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name. To the best of the Complainants’ knowledge, the Respondent is not an owner of any trademark, service mark or equivocal with a name similar or identical to that of the domain name in question. Neither is the Respondent using the disputed domain name in connection with a bona fide offering of goods or services.

Shortly after the disputed domain name <birgitrausing.com> was registered by the Respondent on January 31, 2006, it was up for sale on a website belonging to the Respondent called “www.buydomainportfolio.com”. On this website, the Respondent is encouraging the general public to place offers for the disputed domain name. It has been noted that the Respondent is also selling other domain names consisting of names that may belong to other right holders, such as <ingvar-kamprad.com>. Ingvar Kamprad is the founder of the world famous furniture store, IKEA.

The website to which the disputed domain name resolves contains numerous commercial advertising links. The Respondent is intentionally misleading internet users to believe that third party websites are associated with or recommended by the Complainants. As a result, the Respondent may generate unjustified revenues for each click-through of the sponsored links on the website to which the disputed domain name resolves. The Respondent is said to be illegitimately capitalizing on the fame of the Complainants’ asserted “Birgit Rausing” and registered RAUSING marks.

The Complainants sent a letter of demand to the Respondent on September 12, 2006 which was delivered on September 18, 2006. Despite the fact that the Respondent received the letter, he did not respond in any way.

Bad faith

For years, the Complainants contend, the first Complainant’s asserted “Birgit Rausing” mark has been vigorously referred to in the international mass media, not only in connection with the first Complainant’s literary work but also in connection with the first Complainant’s relationship to Tetra Pak. In addition to this, it is contended, the first Complainant’s mark is constantly referred to in various yearly international top lists of the wealthiest people in the world. The first Complainant has not granted any license or given any kind of permission or authorization to the Respondent to use the mark in a domain name. The first Complainant is of the opinion that the disputed domain name was registered by the Respondent in bad faith. At the time of registration, the Respondent must have had knowledge of the first Complainant’s mark BIRGIT RAUSING and the second Complainant’s use of the trademark RAUSING. This is indicated by the Respondent’s choice of meta keywords for the disputed domain name, which clearly refers to both Complainants: “Birgit + Rausing richest + people Tetra + Pack Largest + Suppliers + of + Tetra + Pack billionaire millionaire carton + packaging liquid + food + packaging”. After the Complainant contacted the Respondent, the metatags above were removed.

Furthermore, it is the opinion of the Complainants that the disputed domain name is being used in bad faith. The Respondent is intentionally attempting for commercial purpose to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainants marks, as to the source, sponsorship, affiliation or endorsement of Respondent’s website or of the products or services posted on or linked to at the Respondent’s website. The website to which the disputed domain name resolves contains not only pop-up advertisements but also advertising links to websites promoting and/or offering products and services of third parties. Such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of Internet users is an indication of use in bad faith according to previous decisions. See for example LґOrйal, Biotherm, Lancфme Parfums et Beautй & Cie v. Unasi, Inc, WIPO Case No. D2005-0623.

B. Respondent

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

 

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) the disputed domain name was registered and is being used in bad faith.

These issues are discussed as follows.

A. Identical or Confusingly Similar

The first Complainant seeks to establish common law rights in a mark corresponding to her name (Birgit Rausing). Establishing such rights would be sufficient for the first Complainant to establish that she “has rights” in a trademark or service mark for the purpose of paragraph 4(a)(i) of the Policy.

Establishing rights in an unregistered mark

The fact that the Complainant seeks to identify trademark or service marks in her own name is no barrier to having them. What is necessary, for the Complainant to succeed, is for her to establish that she has used her name as a (common law) mark. That is, the Complainant must provide evidence that her name has acquired sufficient ‘secondary meaning’ (i.e. secondary to its meaning as a personal identifier) as a mark.

A test of whether a personal name has acquired secondary was set out in Ahmanson Land Company v. Save Open Space and Electronic Imaging Systems, WIPO Case No. D2000-0858 and Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859. (A case also cited in subsequent cases: e.g. Joacim Bruus-Jensen v. John Adamsen, WIPO Case No. D2004-0458). In the second Ahmanson case, the Panel stated that:

“A mark comprising a personal name has acquired secondary meaning if a substantial segment of the public understand the designation, when used in connection with services or a business, not as a personal name, but as referring to a particular source or organization.”

Essentially, this appears to be the test that the Complainant relies on, to establish that that the first Complainant has rights in her name Birgit Rausing, and that the second Complainant has in RAUSING. It is evident that this test involves two elements.

One is that a complainant must show that he or she has used the name in trade or commerce. In this connection, “The name in question should be actually used in trade or commerce to establish unregistered trademark rights. Merely having a famous name (such as a businessman, or religious leader) is not necessarily sufficient to show unregistered trademark rights.” (See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, question 1.6., and the cases cited therein)

The second is that a complainant must show that he or she has used that name to such an extent that the relevant public understands it as a mark of origin. In this connection, the Panel in the second Ahmanson cases cited above, indicated that a mark may acquire secondary meaning by long or extensive use. Evidence that a personal name has been used to the extent of acquiring secondary meaning has been found where the complainant:

“either used the personal name in question as a marketable commodity, allowing his or her name or image to be used for a fee, to promote someone else’s goods or services, or for direct commercial purposes in the marketing of his or her own goods and services.” (See Leonard Asper v. Communication X Inc., WIPO Case No. D2001-0539, and also the cases cited in that one.)

Rights in a mark – first Complainant

The first Complainant argues for having trademark rights based on evidence of:

- her international recognition by the general public;

- her inclusion on international lists of the wealthiest people in the world;

- her philanthropy, including her involvement in the Birgit and Gad Rausing foundation for Humanistic Research;

- her authorship of several books.

The first three types of evidence, even accepting that they are true, would not however demonstrate, for the purpose of the Policy, that the first Complainant’s name has been “used in trade or commerce”.

In relation to the fourth type of evidence (authorship), the principal difficulty for the first Complainant, on the record in the present case, is that it is insufficient to show that the Complainant’s personal name has acquired secondary meaning as a mark.

As noted, the provided evidence of the first Complainant’s authorship of books could arguably be said to demonstrate that her name has been “used in trade or commerce”. In this connection, it could be said that the first Complainant’s name has been used to promote sales of her books (as a marketable commodity), and thus has been used in trade or commerce.

Even if that were accepted, the issue then is whether the extent and nature of that use is such that the relevant public would understand that the name “Birgit Rausing” had acquired distinctiveness or secondary meaning in a trade mark sense.

Prior decisions under the Policy have recognized that an author may establish unregistered trademark rights in their name. Such a finding was made, for example, in Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235; Dr. Michael Crichton v. In Stealth Mode, WIPO Case No. D2002-0874. In both these cases however, authorship was the then complainants’ primary business or profession. It was through that profession, and their creative work, that they became well-known. As such, the authors’ names were sufficiently well-known as to call to mind the product (i.e. their books and other creative works) with which they were associated. Put another way, the authors’ names were used as a mark since, by extensive use (e.g. publication and sales), their names came to be associated with their products. This appeared to be the basis for findings that the then-complainants’ names had acquired secondary meaning, and thereby become a ‘marketable commodity’.

The facts in this case, however, are different. It appears to the Panel to be relevant that the first Complainant does not appear to have become well-known because she has written books. She was well-known before that, due in part to her membership of the well-known Rausing family. Any already well-known person who writes a book trades on their name, to the extent that their pre-existing fame is likely to generate sales of their book. It does not necessarily follow that every well-known person who writes a book (or any other kind of publication) obtains trademark rights in their name. On balance, the Panel has found that the facts do not establish that the first Complainant used her name as a mark per se.

In making this finding, the Panel has taken into account the totality of the evidence provided by the Complainant.

Relevantly, the Complaint states that the first Complainant “is a prominent author”, who has “published several books”, and that the use of her name as an author “has come to be recognized by the general public” in association with works written and produced solely by the first Complainant. For the purpose of this decision, the Panel accepts that these statements are true. But, even so, they do not establish that the first Complainant’s name has been used so extensively that it has come to be associated with her as an author, rather than simply as her own name as a well-known person. This is particularly so, as the Complainant’s evidence establishes that the first Complainant’s name already enjoys a measure of fame unrelated to any claims of authorship.

The Complaint lists three books – “Tora Vega Holmstrцm” (1981), “Rainer Maria Rilke och Tora Vega Holmstrцm” (1989)”, “Ester Almqvist: Och hennes krets” (1998) – said to be “among the first Complainant’s most famous literary works” – and invites the Panel to consider the material provided in Annex F to the Complaint for “further information” about these books. The Panel has done so. The information provided in Annex F (which is in the Swedish language) comprises two single-page print-outs, one of a website located at “www.kultur.halmstead.se”, and the other at “www.bokrecension.se”. The former appears to list the above-referred three book titles, along with the name “Birgit Rausing”, and what would appear to be publication dates, and the latter similarly lists one of these aforementioned books. Even accepting this as evidence of the first Complainant’s authorship of such books, and use of the name “Birgit Rausing” in trade or commerce, it does not show for example that the first Complainant has sold a significant number of books, or that a substantial investment of time and resources has been made in the marketing of such books, or that the Complainant’s books themselves are famous. In sum, it does not, on balance, establish that the name “Birgit Rausing” has acquired a significant measure of distinctiveness or secondary meaning in connection with her work as an author. All of these things may be so, but the burden of proof in a proceeding under the Policy falls squarely on the Complainant, particularly so in cases of claimed unregistered trademark rights in a name.

For these reasons, the Panel finds that the first Complainant has not established rights in a mark, for the purpose of paragraph 4(a)(i) of the Policy.

Rights in a mark – second Complainant

In the alternative, the second Complainant provides evidence of having rights in the Benelux-registered trademark RAUSING, registered on March 24, 2006. The Complainant argues that priority of the trademark predates the registration of the disputed domain name which was registered January 31, 2006.

Such a registered right is sufficient to establish that the second Complainant “has rights” in a mark for the purpose of paragraph 4(a)(i) of the Policy. (See e.g. Teleshopping v. Bendeler, WIPO Case No. D2004-0776.)

(The second and first Complainants also argue that they have common law rights in the name “Rausing”. However, since the second Complainant’s registered rights are sufficient to demonstrate rights for the purpose of paragraph 4(a)(i) of the Policy, it is not necessary for the Panel to consider whether the Complainants additionally have common law rights in that mark.)

Identical or confusingly similar

The next issue is whether the disputed domain name is identical or confusingly similar to the second Complainant’s registered mark (as the first Complainant has otherwise not succeeded on the present record in establishing rights in a mark). It is self-evidently not identical. Is it confusingly similar?

It is well-established that the “.com” extension is to be disregarded for the purpose of determining confusing similarity. The comparison is therefore a matter of determining whether “birgit rausing”, as incorporated in the disputed domain name, is on balance confusingly similar to the RAUSING mark.

In this case, it is relevant that the second Complainant’s registered mark is also a surname. Other cases have discussed whether a surname, registered as a mark, is confusingly similar to a domain name which comprises both that surname with a first name. For example, in The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616, the then Panel found that the disputed domain name <alberteinstein.com> was not identical or confusingly similar to the then complainant’s EINSTEIN mark.

Although that finding was not determinative in that case, this Panel takes a similar approach to whether the RAUSING mark is confusingly similar to the disputed domain name <birgitrausing.com>. The Panel further notes that the present case is not one in which a trademark has simply been combined in a domain name with a highly generic or descriptive term (such as “online” or “company”), such that the trademark component could be said to be an immediately discernible and obvious point of focus. It is rather a case in which the relevant trademark is preceded in the domain name by the personal name “birgit”. As the Complainant points out, the name ‘Birgit Rausing’ is well-known as the name of the first Complainant. As such, it is likely that many Internet users would view the domain name, as a whole, as reflecting the personal name of the first Complainant.

Similarly, since “Rausing” is a famous surname, it does not appear to this Panel to be such a distinctive mark that its inclusion in the disputed domain name would create a likelihood of confusion with the RAUSING mark per se. Nor does the first Complainant – whatever the extent of her own personal fame – appear to be so closely associated with the operation of the business of the second Complaint and its use of the RAUSING mark that confusion in the mind of the average Internet user would inevitably result. Neither does the RAUSING mark appear to the Panel to be confusingly similar to the disputed domain name either phonetically, visually, or in overall impression.

For these reasons, the Panel finds that the second Complainant has not established that the RAUSING mark in which it has rights is identical or confusingly similar to the disputed domain name.

It follows that the first and second Complainant have not established their case under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests, Bad Faith

Because of the Panel’s findings above, it is not necessary for the Panel to consider whether the Complainants have established their case in relation to paragraphs 4(a)(ii) and (iii) of the Policy.

The Panel notes that the evidence provided by the Complainant would appear to indicate that the Respondent may have deliberately targeted the first Complaint’s well-known name. Even if the second Complainant had succeeded in persuading the Panel that the disputed domain name was confusingly similar to the RAUSING mark, it would have difficulty persuading the Panel that the Respondent had registered the disputed domain name primarily due to the second Complainant’s RAUSING mark, as distinct from the first Complainant’s famous name.

The Panel however does not wish to give the impression that it endorses the Respondent’s actions in this regard, and indeed the Complainants may well have a legitimate dispute with the Respondent for that reason which it may of course elect to pursue in another forum. However, for the reasons set out above, this is not a dispute which this Panel feels, on the present record at least, is clearly within the scope of the Policy to resolve.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

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James A. Barker
Sole Panelist

Dated: April 5, 2008