The Complainant is Tyson Foods, Inc., United States of America (“United States’), represented by Loeb & Loeb LLP, United States.
The Respondent is WhoisGuard, Inc., Panama / Sarah Naohton, 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 September 29, 2020. On September 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 29, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 30, 2020 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 5, 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 the Respondent of the Complaint, and the proceedings commenced on October 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2020. The Center appointed Lynda M. Braun as the sole panelist in this matter on November 17, 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 The Complainant is a food production company and processor and marketer of chicken, beef, and pork throughout the world. The Complainant has more than 141,000 employees at facilities and offices in the United States and worldwide. The Complainant has spent significant sums advertising and promoting its name and trademarks, which have gained international fame and are recognizable as identifying the Complainant and its food products. The Complainant has been operating its business since 1935 and has been using the TYSON trademark (the “TYSON Mark”) in connection with its food products since at least as early as 1958. The Complainant owns numerous trademark registrations for the TYSON Mark in the United States, including, for example: TYSON & Design, United States Registration No. 1,205,623, registered on August 17, 1982 in International class 29; The Complainant also owns many domain names incorporating the TYSON Mark, including, but not limited to, The Disputed Domain Name was registered on August 4, 2020. At that time, the Disputed Domain Name redirected to the Complainant’s website at “www.tysonfoods.com”. In addition, the Respondent used an email address associated with the Disputed Domain Name to send spam messages to numerous websites. On September 9, 2020, the Complainant’s counsel sent the Registrar a cease and desist letter, demanding that the registrant of the Disputed Domain Name transfer it to the Complainant. The Respondent never replied, although soon thereafter, the Disputed Domain Name no longer redirected to the Complainant’s website. Instead the Disputed Domain Name resolved to a parking page that displayed the following message: “Your website is ready to go!”.1 5. Parties’ Contentions A. Complainant The following are the Complainant’s contentions: - the Disputed Domain Name is confusingly similar to the Complainant’s trademark; The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)): (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 has been registered and is being used in bad faith. A. Identical or Confusingly Similar This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the TYSON Mark as set forth below. It is uncontroverted that the Complainant has established rights in the TYSON Mark based on its common law rights plus its numerous registered trademarks for the TYSON Mark. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the TYSON Mark. > The Disputed Domain Name consists of the entirety of the TYSON Mark followed by the dictionary term “food” and the abbreviation “usa”, then followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of other terms. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. Furthermore, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182. Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its TYSON Mark nor does the Complainant have any type of business relationship with the Respondent. Finally, the name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. Based on the use made of the Disputed Domain Name to redirect it to the Complainant’s own website and use it as part of fraudulent emails, the Panel finds that the Respondent did not make a bona fide offering of goods or services nor did it make a legitimate noncommercial or fair use of the Disputed Domain Name. As mentioned above, the Respondent used the Disputed Domain Name to send spam email messages to numerous individuals. Previous UDRP panels have held that the use of a domain name for illegal activity can never confer rights or legitimate interests on a respondent. See WIPO Overview 3.0, section 2.13.1. This Panel agrees with those UDRP panels that have concluded that conducting commerce through the practice of spamming does not constitute a bona fide offering of goods and services for purposes of paragraph 4(c)(i) of the Policy. See, e.g., Capstone Mortgage Co. v. Joshua Shook or J. Shook, Inc.,WIPO Case No. D2004-0395. Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith The Panel finds that based on the record, the Complainant has demonstrated the Respondent’s bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(a)(iii) of the Policy. First, by registering and using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s spam emails created by the Respondent by creating a likelihood of confusion with the Complainant’s name and TYSON Mark as to the source, sponsorship, affiliation, or endorsement of those emails. See Samsung Electronics Co., Ltd. v. Albert Daniel Carter,WIPO Case No. D2010-1367 (finding paragraph 4(b)(iv) of the Policy applicable where the disputed domain name was not used in a typical website, but rather used in an email address to send scam emails). Second, the Disputed Domain Name was registered long after the Complainant first began using the TYSON Mark and it initially redirected to the Complainant’s official website. The Panel finds it likely that the Respondent had the Complainant’s TYSON Mark in mind when registering the Disputed Domain Name, demonstrating bad faith. Finally, the Respondent’s lack of response to the cease-and-desist letter sent by the Complainant’s counsel supports a finding of bad faith. Past UDRP panels have held that failure to respond to a cease-and-desist letter may be considered a factor in finding bad faith registration and use of a domain name. See, e.g., QVC, Inc. ER Marks, Inv. v. Domain Buyer,WIPO Case No. D2006-1020 (finding that no response to cease and desist letter demonstrates bad faith). Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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 Lynda M. Braun 1 As of the writing of this decision, the Disputed Domain Name’s resolving website is inactive and states: “This site can’t be reached - www.tysonfoodusa.com’s server IP address could not be found.”
TYSON, United States Registration No. 1,748,683, registered on January 26, 1993 in International class 29;
TYSON, United States Registration No. 2,810,231, registered on February 3, 2004 in International class 29;
TYSON, United States Registration No. 3,204,061, registered on January 30, 2007 in International classes 29 and 30; and
TYSON & Design, United States Registration No. 5,776,218, registered on June 11, 2019 in International class 29.
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,
- the Disputed Domain Name was registered and is being used in bad faith.
Sole Panelist
Date: December 1, 2020
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