Tyson Foods, Inc. v. Dezider Banga
Claim Number: FA0911001295794
Complainant is Tyson Foods, Inc. (“Complainant”), represented by John
J. Dabney, of McDermott Will & Emery LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <tysonfoodbenefits.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 23, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 24, 2009.
On November 24, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <tysonfoodbenefits.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 25, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 15, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@tysonfoodbenefits.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 22, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <tysonfoodbenefits.com> domain name is confusingly similar to Complainant’s TYSON mark.
2. Respondent does not have any rights or legitimate interests in the <tysonfoodbenefits.com> domain name.
3. Respondent registered and used the <tysonfoodbenefits.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Tyson Foods, Inc., is one of the largest food production companies in the world. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TYSON mark (e.g., Reg. No. 1,205,623 issued August 17, 1982).
Respondent registered the <tysonfoodbenefits.com> domain name on September 27, 2009. Respondent’s disputed domain name resolves to a website displaying third-party links to websites offering food products in competition with Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant has established rights in
the TYSON mark for purposes of Policy ¶ 4(a)(i) through its trademark
registration with the USPTO (e.g., Reg. No. 1,205,623 issued August 17, 1982). See
AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding
that where the complainant had submitted evidence of its registration with the
USPTO, “such evidence establishes complainant’s rights in the mark pursuant to
Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc.,
D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that
the mark be registered in the country in which the respondent operates;
therefore it is sufficient that the complainant can demonstrate a mark in some
jurisdiction).
Complainant argues that
Respondent’s <tysonfoodbenefits.com> domain name is confusingly
similar to Complainant’s TYSON mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains
Complainant’s mark in its entirety, adds the generic terms “food” and
“benefits,” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the terms “food” and
“benefits,” when added to Complainant’s TYSON mark in the disputed domain name,
create a confusing similarity between Complainant’s mark and the disputed
domain name because the terms have an obvious relationship to Complainant’s
offering of food products. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007)
(finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the
complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which
is an obvious allusion to complainant’s business.”); see also Vance Int’l, Inc. v. Abend, FA
970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term
“security” to the complainant’s VANCE mark, which described the complainant’s
business, the respondent “very significantly increased” the likelihood of
confusion with the complainant’s mark).
In addition, the Panel finds that the addition of a gTLD is irrelevant
in distinguishing a disputed domain name from a registered mark. See
Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the
mere addition of the generic top-level domain “.com” is insufficient to
differentiate a disputed domain name from a mark); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat.
Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant
when establishing whether or not a mark is identical or confusingly similar,
because top-level domains are a required element of every domain name.”). Therefore, the Panel finds that Respondent’s <tysonfoodbenefits.com> domain name is confusingly
similar to Complainant’s TYSON mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks all rights and legitimate interests in the disputed domain name. If Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that its rights and legitimate interests exist pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has established a prima facie case and Respondent has failed to submit a Response in this proceeding. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant asserts Respondent is not commonly known by the disputed domain name. As proof, Complainant offers the WHOIS information, which lists the registrant as “Dezider Banga.” The Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
The disputed domain name resolves to a website that features links to websites offering the products and services of Complainant’s competitors in the food production industry. The Panel finds that the use of the disputed domain name to promote Complainant’s competitors is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name resolves to a website that
promotes Complainant’s competitors in the food production industry through
click-through links. Such an activity
clearly disrupts Complainant’s business, as Internet users seeking
Complainant’s products will be redirected to Complainant’s competitors. This qualifies as bad faith registration and
use under Policy ¶ 4(b)(iii). See
Complainant contends that Respondent is gaining commercially
through this diversion, through click-through fees that Respondent is
presumably receiving from its use of the disputed domain name. The Panel finds
that Respondent is intentionally using the disputed domain name for commercial gain
through a likelihood of confusion with Complainant’s mark, and so, pursuant to
Policy ¶ 4(b)(iv), the Panel finds that this use for
commercial gain also constitutes evidence of registration and use in bad
faith. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum
June 7, 2006) (holding that the registration and use of a domain name
confusingly similar to a complainant’s mark to direct Internet traffic to a
commercial “links page” in order to profit from click-through fees or other
revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tysonfoodbenefits.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 23, 2009
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