The Complainant is Tyson Foods, Inc. of Springdale, Arkansas, United States of America (“US”), represented by Winston & Strawn LLP, US.
The Respondent is R3D HACKCID of Brussels, Belgium. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2017. On January 31, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 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.
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 of the Complaint, and the proceedings commenced on February 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 24, 2017.
The Center appointed Luca Barbero as the sole panelist in this matter on March 6, 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. 4. Factual Background
The Complainant is a food production company located in the US. It owns multiple trademark registrations for the trademark TYSON, including the US trademark registration Nos. 1,748,683 for TYSON (word mark), registered on January 26, 1993, in International classes 29 and 30; 2,810,231 for TYSON (word mark), registered on February 3, 2004, in International class 29; 2,833,874 for TYSON (word mark), registered on April 20, 2004, in International class 29; 2,868,632 for TYSON (word mark), registered on August 3, 2004, in International class 29; 3,204,061 for TYSON (word mark), registered on January 30, 2007, in International classes 29 and 30; 3,998,293 for TYSON (word mark), registered on July 19, 2011, in International class 30; and the United Kingdom No. 00002106280 for TYSON (figurative mark), registered on July 29, 1996, in class 29.
The Complainant operates its main website at the domain name , registered on May 26, 2000.
The disputed domain name was registered on July 28, 2016, and is pointed to a static web page displaying graphic imagery – that appears to be a frame of the lead character from the 2002 Dreamworks Pictures’ film The Ring – and text including the phrases “[!] Ghost cyber was here [!]”, “Hey you want a die? Please patch your website. [!] No system is safe [!]. Hacked by [!]v!nBb[!]”. 5. Parties’ Contentions A. Complainant
The Complainant states that it is one of the largest food production companies in the US and throughout the world. It informs the Panel that it had more than USD 40 billion in sales in 2015, that it is a member of the S&P 500, and has more than 113,000 employees at facilities and offices in the US and around the world.
The Complainant also asserts that it has been operating its business under the name “Tyson Foods” for decades, having used the trademark TYSON since at least as early as 1958 and operated its business under the name “Tyson Foods” as a publicly traded company since 1963.
The Complainant concludes that it has achieved significant goodwill and international fame in its trademarks TYSON and TYSON FOODS.
The Complainant contends that the disputed domain name is confusingly similar to its trademarks TYSON and TYSON FOODS as it encompasses them in their entirety with the addition of descriptive and generic terms. It also underlines that the term “foods” increases the confusing similarity to the Complainant’s trademark because the word “foods” has a direct relevance to the Complainant’s business.
The Complainant claims that the Respondent is not commonly known by the disputed domain name, has not used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services, has not been authorized, licensed, or otherwise permitted by the Complainant to register and/or use the disputed domain name. In view of the above-described use of the disputed domain name made by the Respondent, the Complainant asserts that the Respondent’s website appears to have no further purpose other than to occupy the domain name space. Therefore, the Complainant concludes that the Respondent lacks rights to and legitimate interests in the disputed domain name.
The Complainant states that the Respondent’s diversionary use of the disputed domain name, which redirect Internet users, including those who might be seeking information about the Complainant, to a website containing graphic imagery of a deceased child tarnishes the Complainant’s trademark in the same way that an association with pornographic images, as they are both visuals that most companies would not want associated with their brands.
The Complainant submits that the Respondent acquired and has commercially used the disputed domain name, confusingly similar to the Complainant’s trademarks TYSON and TYSON FOODS, to capitalize on Internet users’ efforts to find the Complainant’s website and seek information about the Complainant.
The Complainant also contends that the Respondent’s use of the disputed domain name is indicative of an intent to harm the Complainant’s business, and that this type of behavior is directly competitive to the Complainant’s business, as the association between the gruesome image and the mark tarnishes the Complainant’s reputation and goodwill.
The Complainant further asserts that, had the Respondent conducted even a preliminary trademark search, it would have found the Complainant’s various trademark registrations for TYSON and TYSON FOODS and the websites associated with the trademarks, and numerous additional references in commerce, on the Internet, and in publications, evidencing the Complainant’s use of its marks in connection with the Complainant’s goods and services.
The Complainant also indicates that the Respondent’s efforts to misappropriate the Complainant’s famous trademark, capitalize on consumer confusion, and divert unsuspecting Internet users to a gruesome image unrelated to the Complainant undoubtedly constitute bad-faith registration and use of the disputed domain name under paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) 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;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
As stated in paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), ownership of a trademark generally satisfies the threshold requirement of having trademark rights, the location of the trademark, its date of registration, and the goods and/or services for which it is registered being irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.
In the case at hand, the Complainant has provided evidence of ownership of valid trademark registrations for the word mark TYSON in the US.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark as it reproduces the trademark in its entirety with the addition of the descriptive term “foods” and the generic word “incorp” (abbreviation of “incorporated”), which are not sufficient to avoid confusing similarity.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a registered trademark in which it has established rights as prescribed by paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to demonstrate 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. See Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393; Accor v. Eren Atesmen,WIPO Case No. D2009-0701, and WIPO Overview 2.0, paragraph 2.1.
The Panel finds that the Complainant has made a prima facie case and that the Respondent, by not submitting a response, has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy.
In the case at hand, there is no relation between the Respondent and the Complainant and the Respondent has not obtained any authorization to use the Complainant’s trademark or the disputed domain name. In addition, there is also no indication before the Panel that the Respondent might be commonly known by the disputed domain name.
There is also no evidence that the Respondent might have used, or made preparation to use, the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use prior to receiving notice of the dispute. The Panel also finds that the current use of the disputed domain name as described above does not amount to a legitimate or fair use.
Therefore, the Panel finds that also the requirement prescribed by paragraph 4(a)(ii) of the Policy has been met. C. Registered and Used in Bad Faith
In light of the prior registration and use of the Complainant’s trademark TYSON in connection with the food products of the Complainant, the Panel finds that the Respondent’s registration of the disputed domain name, incorporating the trademark TYSON in its entirety with the addition of the term “foods”, which is descriptive of the Complainant’s business, cannot amount to a mere coincidence. Moreover, the circumstance that the disputed domain name substantially corresponds to the Complainant’s company name suggest that the Respondent was very likely aware of the Complainant’s trademark at the time of the registration and registered the disputed domain name having the Complainant in mind.
The Complainant claims that the Respondent’s use of the disputed domain name in connection with the contents displayed on the correspondent website are apt to tarnish the Complainant’s trademark. As indicated in paragraph 3.11 of the WIPO Overview 2.0, “Intentional tarnishment of a complainant’s trademark may in certain specific circumstances constitute evidence of registration and/or use of a domain name in bad faith (…) Tarnishment in this context normally refers to such conduct as linking pornographic images or wholly inappropriate information to an unrelated trademark”. In the present case, the Panel finds that the Respondent is using the disputed domain name in connection with inappropriate content which is apt to tarnish the Complainant’s trademark.
Moreover, the Panel also finds that the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website according to paragraph 4(b)(iv) of the Policy and/or to disrupt the Complainant’s business.
In view of the above, and in the absence of a Response, the Panel finds that the Complainant has established that the disputed domain name was registered and is being used in bad faith. 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 be transferred to the Complainant.
Luca Barbero
Sole Panelist
Date: March 21, 2017
Full & Egal Universal Law Academy