national arbitration forum

 

DECISION

 

Tyson Foods, Inc. v. YUMing c/o YU Ming

Claim Number: FA1006001331890

 

PARTIES

Complainant is Tyson Foods, Inc. (“Complainant”), represented by Andrew B. Peterson, of McAfee & Taft, A Professional Corporation, Oklahoma, USA.  Respondent is YUMing c/o YU Ming (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tysonxinchang.com>, registered with XIAMEN ENAME NETWORK TECHNOLOGY CORPORATION LIMITED d/b/a ENAME CORP.

 

PANEL

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.

 

Louis E. Condon as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 25, 2010.  The Complainant was submitted in both Chinese and English language.

 

On August 26, 2010, XIAMEN ENAME NETWORK TECHNOLOGY CORPORATION LIMITED d/b/a ENAME CORP confirmed by e-mail to the National Arbitration Forum that the <tysonxinchang.com> domain name is registered with XIAMEN ENAME NETWORK TECHNOLOGY CORPORATION LIMITED d/b/a ENAME CORP and that Respondent is the current registrant of the name.  XIAMEN ENAME NETWORK TECHNOLOGY CORPORATION LIMITED d/b/a ENAME CORP has verified that Respondent is bound by the XIAMEN ENAME NETWORK TECHNOLOGY CORPORATION LIMITED d/b/a ENAME CORP 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 August 31, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of September 20, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@tysonxinchang.com by e-mail.  Also on August 31, 2010, the Chinese language Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On September 30, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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" through submission of a Written Notice, as defined in Rule 1.  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.

 

Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complainant and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <tysonxinchang.com> domain name is confusingly similar to Complainant’s TYSON mark.

 

2.      Respondent does not have any rights or legitimate interests in the <tysonxinchang.com> domain name.

 

3.      Respondent registered and used the <tysonxinchang.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Tyson Foods, Inc., processes and markets chicken, beef, and pork.  Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TYSON mark (e.g., Reg. No. 1,205,623 registered August 17, 1982).  Complainant uses the <tyson-xinchang.com> and <tyson-xinchang.cn> domain names in connection with its business.

 

Respondent registered the <tysonxinchang.com> domain name on December 30, 2009.  The disputed domain name fails to resolve to an active website.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant claims rights in the TYSON mark through its numerous registrations of the mark with the USPTO (e.g., Reg. No. 1,205,623 registered August 17, 1982).  The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the TYSON mark pursuant to Policy ¶ 4(a)(i).  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).  The Panel also finds it is irrelevant whether Complainant holds trademark registrations with the trademark authority in the country in which Respondent resides.  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

Complainant avers Respondent’s <tysonxinchang.com> domain name is confusingly similar to its TYSON mark.  Respondent fully incorporates Complainant’s mark in the disputed domain name.  Respondent also adds the term “xinchang,” which is part of the name of a chicken products producer based in China.  In addition, Complainant recently entered a joint venture with Shandong Xinchang.  Thus, “xinchang” describes a portion of Complainant’s business.  Finally, Respondent affixes the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain name.  The Panel finds these additions do not sufficiently distinguish Respondent’s domain name from Complainant’s mark.  See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also 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).  Accordingly, the Panel finds Respondent’s <tysonxinchang.com> domain name is confusingly similar to its TYSON mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case showing Respondent lacks rights and legitimate interests in the <tysonxinchang.com> domain name under Policy ¶ 4(a)(ii).  The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name.  The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights and legitimate interests.  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 Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).  Despite Respondent’s failure to respond, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).

 

Complainant asserts it has not given Respondent permission to use its TYSON mark in a domain name.  Moreover, the WHOIS information lists “YUMing c/o YU Ming” as the registrant of the disputed domain name, which the Panel finds is not similar to the <tysonxinchang.com> domain name.  Without evidence to the contrary, the Panel finds Respondent is not commonly known by the <tysonxinchang.com> domain name under Policy ¶ 4(c)(ii).  See 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Complainant contends that Respondent is passively holding the disputed domain name.  The Panel agrees and finds Respondent has failed to make active use of the disputed domain name.  Therefore, the Panel finds Respondent does not use the <tysonxinchang.com> domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial use under Policy ¶ 4(c)(iii).  See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

The Panel finds that the enumerated Policy ¶ 4(b) factors are not exhaustive and the totality of the circumstances may be considered when analyzing bad faith registration and use under Policy ¶ 4(a)(iii).  See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).

 

Prior panels have found that failure to make active use of a domain name can qualify as bad faith when the domain name registration occurred after the complainant acquired rights in a mark.  See Accor v. Value-Domain Com, Value Domain, D2009-1797 (WIPO Feb. 8, 2010) (finding bad faith use where respondent passively held the domain name and the domain name registration occurred approximately 19 years after the complainant had filed trademark registrations in the mark); see also OneWest Bank, FSB v. Jacob Zakaria d/b/a EQ Funding, FA 1328894 (Nat. Arb. Forum July 20, 2010) (the panel found bad faith use where respondent failed to make active use of the disputed domain name and the respondent registered the domain name approximately 7 years after the complainant registered its trademark with the USPTO).  Respondent registered the <tysonxinchang.com> domain name on December 30, 2009, approximately 17 years after Complainant first registered the TYSON mark with the USPTO (e.g., Reg. No. 1,205,623 registered August 17, 1982).  Consequently, the Panel finds Respondent registered its confusingly similar domain name after Complainant acquired rights in the mark.  Therefore, the Panel finds Respondent’s failure to make active use of the <tysonxinchang.com> domain name in this case constitutes bad faith under Policy ¶ 4(a)(iii).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

 

Accordingly, it is Ordered that the <tysonxinchang.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Louis E. Condon, Panelist

Dated:  October 7, 2010

 

 

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