Complainant is Tyson Foods, Inc., United States of America (“United States” or “U.S.”), represented by Loeb & Loeb, LLP, United States.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Tyson Food, Tyson Food USA, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2020. On May 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 13, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 21, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 22, 2020. 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 Respondents of the Complaint, and the proceedings commenced on May 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2020. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on June 17, 2020. The Center appointed John C. McElwaine as the sole panelist in this matter on June 23, 2020. 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 Complainant is one of the largest food production companies in the world. Complainant’s trade name is “Tyson Foods” and Complainant is the owner of multiple trademark registrations in the United States containing the word TYSON, including: - TYSON and design (U.S. Reg. No. 1,205,623) registered on August 17, 1982, in Class 29; - TYSON and design (U.S. Reg. No. 5,776,218) registered in Class 29; - T TYSON and design (U.S. Reg. No. 5,978,684) registered on February 4, 2020, in Class 29; - TYSON (U.S. Reg. No. 1,748,683) registered on January 26, 1993, in Class 29; - TYSON (U.S. Reg. No. 2,810,231) registered on February 3, 2004, in Class 29; - TYSON (U.S. Reg. No. 2,833,874) registered on April 20, 2004, in Class 29; - TYSON (U.S. Reg. No. 2,868,632) registered on August 3, 2004, in Class 29; - TYSON (U.S. Reg. No. 3,204,061) registered on January 30, 2007, in Class 29 and Class 30; - TYSON (U.S. Reg. No. 3,998,293) registered on July 19, 2011, in Class 30; - TYSON NATURALS (U.S. Reg. No. 5,205,724) registered on May 16, 2017, in Class 29; - TYSON TRUE (U.S. Reg. No. 3,832,457) registered on August 10, 2010, in Class 29; and, - TYSON TASTEMAKERS (U.S. Reg. No. 5,277,919) registered on August 29, 2017, in Class 29. On April 19, 2020, the Domain Name was registered with the Registrar. The Domain Name resolves to a website operating as “Tyson Foods USA”, which claims to be business involved in the “development and distribution of meat products”. 5. Parties’ Contentions A. Complainant Complainant asserts that it is one of the largest food production companies in the world and the second largest processor and marketer of chicken, beef, and pork in the world. According to Complainant, in 2019 it had more than USD 42 billion in sales. Complainant also asserts that it has more than 141,000 employees at facilities and offices in the United States and around the world. Since at least as early as 1963, Complainant’s contends it has been operating its business under the trade name “Tyson Foods”. In addition, Complainant claims that it has used the registered TYSON trademark in connection with its food products since at least as early as 1958. Complainant has expanded its use of TYSON and other marks incorporating TYSON to other foods products and related products and services. Complainant alleges to have spent significant sums advertising and promoting the trade name “Tyson Foods” and TYSON trademarks. Collectively, Complainant’s common law use of TYSON FOODS and its common law and registered trademark rights in marks containing the term TYSON are referred to herein as the TYSON Marks. With respect to the first element of the Policy, in addition to its registered and unregistered trademark rights, Complainant points out that its websites serve as a primary marketing and informational tool for Complainant and as a primary point of communication between Complainant and its customers. For example, Complainant asserts that With respect to the second element of the Policy, Complainant asserts that Respondent is not related to, affiliated or connected with Complainant in any way, and that Complainant also has never licensed or authorized Respondent to use the TYSON Marks, or to register any domain name incorporating its name or marks. Complainant further asserts that there is no evidence that Respondent has been known by the names “Tyson”, “Tyson Food”, “Tyson Foods”, “Tyson Food USA”, or “Tyson Foods USA” incorporated in the Domain Name. Complainant alleges that there is no evidence that Respondent is using or preparing 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 making a legitimate noncommercial or fair use of the Domain Name within the meaning of paragraph 4(c)(i) or (iii) of the Policy. In fact, Complainant contends that Respondent’s use of the Domain Name constitutes an intent, for commercial gain, to divert Internet users and potential customers of Complainant to Respondent’s website that is offering competing products and services thereby creating a misleading impression of an affiliation between Complainant and Respondent. With respect to the third element of the Policy, Complainant asserts that the Domain Name has been registered and is being used by Respondent in bad faith for several reasons: (1) mere registration of a domain name that is confusingly similar to a famous trademark by an unaffiliated entity can by itself create a presumption of bad faith; (2) by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the TYSON Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website; (3) Respondent knew of Complainant’s rights in the TYSON Marks prior to registration of the Domain Name; (4) Respondent’s use of a domain privacy company to hide its true identity; and (5) Respondent’s use of a false address and contact information in the WhoIs record when registering the Domain Name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Even though Respondent has defaulted, paragraph 4(a) of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc.,WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules, and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“ WIPO Overview 3.0”), section 1.2 . Here, Complainant provided evidence that it is the owner of multiple trademark registrations in the United States and in other jurisdictions. The evidence submitted by Complainant is sufficient to establish valid trademarks rights and, accordingly, standing to bring this proceeding. It is well established, and the Panel agrees, that the addition of a descriptive or geographic word to a trademark in a domain name does not avoid a finding of confusing similarity. See WIPO Overview 3.0, Section 1.8; Mastercard International Incorporated v. Dolancer Outsourcing Inc.,WIPO Case No. D2012-0619; Air France v. Kitchkulture,WIPO Case No. D2002-0158; DHL Operations B.V. and DHL International GmbH v. Diversified Home Loans,WIPO Case No. D2010-0097. The Domain Name contains Complainant’s TYSON trademark in its entirety, as a dominant element. The addition of the word “food” does not serve to distinguish the Domain Name from the TYSON Marks and is identical to Complainant’s common law trademark rights established in TYSON FOODS. Likewise, the addition of the geographic word “usa” does not serve to distinguish the Domain Name from the TYSON Marks. Further, the generic Top-Level Domain, in this case “.com”, is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11. Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s TYSON Marks in which Complainant has valid trademark rights. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant asserts that Respondent is not authorized to use the TYSON Marks in the Domain Name and on the website to which the Domain Name resolves. Although properly notified by the Center, Respondent failed to submit any response justifying its use of the Domain Name and explaining its decision to operate a competing business under a mark confusingly similar to the TYSON Marks. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of a domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond,WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S.,WIPO Case No. D2000-0011. Complainant has made a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Name. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252. The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name: “(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.” Complainant asserts that the Domain Name resolves to a website that impersonates Complainant’s business in an effort to divert Internet traffic or mislead consumers searching for Complainant. The Panel finds that Respondent’s use of the Domain Name to divert Internet traffic is not a bona fide offering of goods or services. See Chicago Mercantile Exchange Inc., CME Group Inc. v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Nikolay Korobeynikov,WIPO Case No. D2016-0654 (finding no legitimate interest in a website resolving from the disputed domain name, which mirrored, and purported to be, the website of “CME Group” and which provided information relating to the trading of futures and options). Moreover, the Panel finds that the purpose of registering the Domain Name appears to have been to impersonate Complainant, trading on its goodwill, and to conduct a fraudulent scheme. WIPO Overview 3.0, section 2.13.1 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”). The undisputed evidence of impersonation, deception and fraud nullifies any possible basis for the acquisition of rights or legitimate interests by Respondent. See Afton Chemical Corporation v. Meche Kings,WIPO Case No. D2019-1082. With respect to Complainant’s contention that Respondent is not commonly known by the Domain Name, the Panel notes that the WhoIs information lists Respondent as Tyson Food, Tyson Food USA. The Panel agrees with Complainant’s claim that it would be highly unusual for another Tyson Food to be legitimately coexisting in the same line of business given the long-standing use and fame of the TYSON Marks. See e.g., Delray Beach Historical Society, Inc. v. Cirila Strawmyer,WIPO Case No. D2004-0387 (finding that “[i]t is highly unlikely that respondent can allege that it was commonly known by the domain name or a name corresponding to the domain name because it was complainant that was known by that name for almost forty years”). Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests and Respondent has failed to come forward with facts to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. For all these reasons, the Panel finds that the second element of the Policy is established by Complainant, and Respondent has no rights or legitimate interests in respect of the Domain Name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy. Bad faith registration can be found where respondents “knew or should have known” of complainant’s trademark rights and nevertheless registered a domain name in which he had no right or legitimate interest. See Accor S.A. v. Kristen Hoerl,WIPO Case No. D2007-1722. Here, the TYSON Marks were well known and had been used for decades prior to Respondent’s registration of the Domain Name. Based on Complainant’s submission, which was not rebutted by Respondent, Respondent must have known of Complainant’s TYSON Marks when it registered the Domain Name. Further supporting the finding that Respondent knew of Complainant’s trademark rights when registering the Domain Name, Complainant’s evidence showed that Respondent selected a domain name identical to Complainant’s trade name “Tyson Foods” plus the geographic term “usa” and then developed a website that impersonated Complainant’s business. Paragraph 4(b)(iv) of the Policy provides that bad faith may be shown if “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online 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.” As discussed herein, Respondent registered and then used the Domain Name to create a competing website by impersonating Complainant. This amounts to bad faith use of the Domain Name. See Identigene, Inc. v. Genetest Laboratorie,WIPO Case No. D2000-1100 (finding bad faith where the respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); MathForum.com, LLC v. Weiguang Huang,WIPO Case No. D2000-0743 (finding bad faith under paragraph 4(b)(iv) of the Policy where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). Lastly, Respondent could have picked any number of names distinct from Complainant or used its true identity, but instead, registered and used the Domain Name confusingly similar to the TYSON Marks and designed a website to trade off Complainant’s name and reputation. Respondent then used a privacy service to shield its identity from the WhoIs database. Previous UDRP panels have recognized that, although privacy shields provide some benefits, they are often used for “more nefarious ends, such as obstructing proceedings under the UDRP, [and] hiding evidence of bad faith cybersquatting patterns”. See Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service,WIPO Case No. D2011-1753; see also The Saul Zaentz Company d/b/a Tolkein Enterprises v. Eurobox Ltd. / “The Saul Zaentz Company”,WIPO Case No. D2008-0156 (“The attempt by the respondent to hide its identity […] support[s] a finding of bad faith”.) The use of such service, in these circumstances, is another factor weighing in favor of bad faith. For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy. 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 Domain Name, John C. McElwaine
(iii) the Domain Name has been registered and is being used in bad faith.
Registering a domain name with false contact details is commonly held to be bad faith under the Policy. See Hermes International v. Jack Yong, WIPO Case No. D2017-1959 (“the fact of a non-existent postal address is difficult to explain”); TBWA Worldwide, Inc. v. Karim Bendali,WIPO Case No. D2019-1932 (the postal address revealed by the Registrar was not accurate). Here, Complainant’s investigation of Respondent’s address provided by the Registrar showed that this address belongs to a different company. Further, Complainant’s investigation showed that Respondent’s phone number corresponds to a different location from Respondent’s alleged physical address. Further, Respondent’s phone number is listed on the Internet as a contact number for various other businesses. Complainant’s investigation also showed that Respondent’s email address belongs to a products packaging manufacturer and supplier in Thailand. Without a response from Respondent, these inaccuracies cannot be reconciled as accurate and made in good faith.
Sole Panelist
Date: July 7, 2020
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