Complainant is Tyson Foods, Inc., United States of America (“United States” or “U.S.”), represented by Reed Smith LLP, United States.
Respondent is Matt Johnson, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2021. On September 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 16, 2021, 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 Complainant on September 21, 2021, 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 September 24, 2021.
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 Respondent of the Complaint, and the proceedings commenced on September 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 27, 2021.
The Center appointed Scott R. Austin as the sole panelist in this matter on November 25, 2021. 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 BackgroundComplainant, whose business dates back to 1935, is one of the world’s largest food production companies and has operated its business as a publicly traded company since 1963 under a business name and service mark incorporating TYSON FOODS for its food production services (the “TYSON FOODS Mark”). Complainant is the second largest processor and marketer of chicken, beef, and pork in the world, using the trademark TYSON in connection with the sale of such food products since at least as early as 1958 (the “TYSON Mark”). In 2020 Complainant generated more than USD 43 billion in sales as a member of the S&P 500, and has more than 139,000 employees at facilities in the U.S. and around the world.
Complainant owns numerous registrations for the TYSON Mark in the U.S., where Respondent is located, and around the world, including:
- United States Registration No. 1748683, TYSON, registered January 26, 1993 for “fresh and frozen, cooked and uncooked meat and poultry sold separately and as part of prepackaged prepared meals” in international class 29 and claiming a first use date of January 1, 1958; and
- United States Registration No. 2810231, TYSON, registered February 3, 2004 for “beef and pork” in international class 29 and claiming a first use date of January 10, 2003.
Complainant maintains domain names incorporating both the TYSON FOODS Mark and the TYSON Mark, including
The disputed domain name
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsThere are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the present dispute based upon the Complaint (as amended), notwithstanding the failure of any person to lodge a substantive formal Response in compliance with the Rules. Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
Where no substantive Response is filed, however, Complainant must still make out its case in all respects under paragraph 4(a) of the Policy. To succeed, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
The Panel will address each of these requirements in turn.
The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.
A. Identical or Confusingly SimilarOwnership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Based upon the multiple valid and subsisting trademark registrations cited by Complainant, as well as supporting documents submitted as evidence, the Panel finds that Complainant has demonstrated its registered trademark rights for its TYSON Mark. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,
WIPO Case No. D2014-0657.
For purposes of confusing similarity considered below, the Panel further finds that given the evidence of decades of use of the TYSON FOODS Mark, the substantial marketing and advertising expenditures asserted by Complainant, and recognition typically associated with a publicly traded company generating billions of dollars worldwide through its food production services, as well as Respondent’s use of the disputed domain name to target Complainant’s marks discussed in 6C below, the Panel finds it reasonable to infer that Complainant has established common law trademark rights in the TYSON FOODS Mark for the purpose of evaluating confusing similarity. See WIPO Overview 3.0, section 1.3; see also Tyson Foods, Inc. v. Bargin Register, Inc.,
WIPO Case No. D2011-1622, Tyson Foods, Inc. v. Desheng Zhao,
WIPO Case No. D2014-1382.
With Complainant’s respective rights in its marks established, the remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s marks. For the disputed domain name to be found identical or confusingly similar to the TYSON Marks, the relevant comparison is with the second-level portion, “tysonfoodsus” of the disputed domain name, as it is well established that the generic Top-Level Domain (“gTLD”) “.com” may generally be disregarded for this purpose. See WIPO Overview 3.0, section 1.11 (the gTLD as a technical requirement for domain name registration is disregarded under the confusing similarity test); see also, Research in Motion Limited v. Thamer Ahmed Alfarshooti,
WIPO Case No. D2012-1146.
Prior UDRP panels have held “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”. Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903; see also Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,
WIPO Case No. D2000-0662 (the issue in the analysis of the first factor is not whether there is confusion in the trademark infringement sense (an issue more properly considered under the legitimate interest and bad faith factors), but rather whether there is sufficient similarity between the domain name and the trademark to advance to consideration of the second and third factors.).
The disputed domain name incorporates both Complainant’s registered TYSON Mark and its common law TYSON FOODS Mark in their entirety and appends the term “us”, creating a strikingly similar string to Complainant’s
Prior UDRP panels have found that addition of other terms to a trademark that is recognizable within a disputed domain name does not prevent a finding of confusing similarity between a trademark and domain name. See WIPO Overview 3.0, section 1.8; see also National City Corp. v. MH Networks, LLC,
WIPO Case No. D2004-0128.
Given that Complainant’s TYSON FOODS Mark and TYSON Mark are each readily recognizable as incorporated in their entirety into the disputed domain name here, this Panel finds the disputed domain name confusingly similar to the TYSON FOODS Mark and TYSON Mark in which Complainant has established trademark rights for the purposes of the Policy.
Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsUnder the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If the complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International,
WIPO Case No. D2008-1393.
Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, Complainant asserts that it has never authorized, licensed, endorsed, sponsored, or otherwise permitted Respondent to use the TYSON FOODS Mark or TYSON Mark in any manner, for the disputed domain name or otherwise, nor was there ever any affiliation, connection, or business relationship between Complainant and Respondent.
Complainant has also claimed with persuasive evidence submitted that Respondent is not commonly known by the disputed domain name, whose name in the WhoIs, as disclosed by the Registrar, is “Matt Johnson”. Prior UDRP panels have found that a respondent is not commonly known by the disputed domain name based on the WhoIs information and the evidence in the record. LK International AG v. Fundacion Private Whois,
WIPO Case No. D2013-0135. Respondent bears no resemblance to the disputed domain name whatsoever. Based on these facts, combined with the lack of evidence in the record to suggest otherwise, this Panel finds that Respondent is not commonly known by the disputed domain name or any variation thereof pursuant to Policy paragraph 4(c)(ii).
It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to the complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that the complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See Roust Trading Limited v. AMG LLC,
WIPO Case No. D2007-1857; see also Marriott International, Inc. v. Thomas, Burstein and Miller,
WIPO Case No. D2000-0610.
Respondent is using the disputed domain name solely to redirect Internet visitors to the Tyson Foods Official Website, “www.tysonfoods.com”. Prior UDRP panels have found such limited use is insufficient to establish rights or legitimate interests. See Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records,
WIPO Case No. D2017-2533 (invisible redirection to Complainant’s official website means there is “very likely no connection with a bona fide offering of goods and services.”); Bureau Veritas v. Xavier Garreu,
WIPO Case No. D2017-1570 (disputed domain name redirecting to Complainant’s official website without authorization likely to mislead Internet users into believing disputed domain name is connected to Complainant’s business found not a bona fide offering of goods and services).
These facts establish Complainant’s prima facie showing. Respondent has not provided any basis on which that showing may be overcome. In addition, the Panel notes that the composition of the disputed domain name carries a risk of implied affiliation with Complainant. WIPO Overview 3.0, section 2.5.1.
Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that point to bad faith conduct on the part of a respondent:
(i) circumstances indicating that the registrant has registered, or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.
Complainant first contends that given the worldwide recognition, fame, and decades of use of the TYSON FOODS Mark and TYSON Mark, that even a preliminary search of Complainant’s trademark and online presence would reveal, it is implausible that Respondent was unaware of Complainant when it registered the disputed domain name, and, therefore, Respondent’s actual knowledge of Complainant’s intellectual property rights, including trademarks, at the time of registration of the disputed domain name proves targeting by Respondent sufficient to find bad faith registration.
Prior UDRP panels have held that actual and constructive knowledge of a complainant’s rights at the time of registration of a domain name constitutes strong evidence of bad faith. See WIPO Overview 3.0, section 3.2.2. See also eBay Inc. v. Sunho Hong,
WIPO Case No. D2000-1633; The Gap, Inc. v. Deng Youqian,
WIPO Case No. D2009-0113 (“the panel concurs with previous WIPO UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements”).
The Panel finds that Respondent’s registration of the disputed domain name with awareness of Complainant and its TYSON FOODS Mark and TYSON Mark, and with the absence of its own rights or legitimate interests, amounts to registration in bad faith by Respondent. See Royds Withy King LLP v. Help Tobuy,
WIPO Case No. D2019-0624.
In addition, in light of the over 60 years of use of Complainant’s registered TYSON Mark before Respondent registered the disputed domain name, and even more years for the common law TYSON FOODS Mark, and given Complainant’s renown and brand recognition in the United States, where Respondent is located, the Panel finds it is likely that Respondent knew of Complainant’s Marks and targeted them by incorporating each in its entirety into the disputed domain name to register and use the disputed domain name in bad faith. Respondent, therefore, sought to use the disputed domain name in bad faith, to obtain a commercial benefit by attracting Internet users based on the confusion it created between the disputed domain name and the TYSON Marks. See Western Union Holdings, Inc. v. Manuel Rodriguez,
WIPO Case No. D2006-0850; see also Artemis Mtkg. Corp. v. ICS INC. / Online Resource, Online Resource Mgmt. Ltd. / VMI INC,
WIPO Case No. D2019-0141.
Finally, Complainant contends Respondent is also using the disputed domain name in bad faith by redirecting it to Complainant’s Tyson Foods Official Website at “www.tysonfoods.com”. Prior UDRP panels have held such redirecting use as evidence of bad faith registration and use of a disputed domain name because so long as a respondent owns the domain name, it can re-direct it to any website of its choosing, and that abusive threat is left hanging over the head of a complainant. See Securitas AB v. Advocaat Peter,
WIPO Case No. D2020-2126; CSC Holdings, Inc. v. cablevisionlightpath.com Inc.,
WIPO Case No. D2004-1057; and Conair Corp. v. Pan Pin, Hong Kong Shunda Int’l Co. Ltd.,
WIPO Case No. D2014-1564.
The Panel finds Complainant’s arguments and evidence persuasive and has received no arguments or evidence from Respondent to the contrary. Considering all the circumstances, the Panel concludes that Respondent has registered and used the disputed domain name in bad faith and Complainant has satisfied paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Scott R. Austin
Sole Panelist
Date: December 20, 2021