Tyson Foods, Inc. v. LaPorte Holdings,
Inc.
Claim
Number: FA0501000402793
Complainant is Tyson Foods, Inc. (“Complainant”),
represented by Clifford C. Dougherty, of McAfee and Taft A Professional Corporation, Tenth Floor, Two Leadership Square, 211 North Robinson, Oklahoma
City, OK 73102-7103. Respondent is LaPorte Holdings, Inc. (“Respondent”),
ATTN: tysonfoodinc.com c/o Nameking, Inc., 2202 S. Figueroa St., Suite 721, Los
Angeles, CA 90023.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <tysonfoodinc.com>, registered with Nameking.com,
Inc.
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
13, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 18, 2005.
On
January 13, 2005, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <tysonfoodinc.com> is
registered with Nameking.com, Inc. and that Respondent is the current
registrant of the name. Nameking.com, Inc. has verified that Respondent is
bound by the Nameking.com, Inc. 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
January 21, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 10, 2005 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@tysonfoodinc.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
February 18, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed Hon.
Ralph Yachnin 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 <tysonfoodinc.com>
domain name is confusingly similar to Complainant’s TYSON mark.
2. Respondent does not have any rights or
legitimate interests in the <tysonfoodinc.com> domain name.
3. Respondent registered and used the <tysonfoodinc.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Tyson Foods, Inc., is the world’s largest processor and marketer of chicken,
beef and pork and the second-largest food company in the Fortune
500. Founded in 1935, Complainant is
currently the recognized market leader in the retail and foodservice markets it
serves, providing products and services to customers throughout the United
States and in over 80 countries worldwide.
Complainant has approximately 300 facilities and offices in 27 states
and 20 countries. Complainant’s worldwide
sales in 2004 were over $26 billion. In
2003, Complainant spent over $500 million in worldwide advertising.
Complainant
operates a website at the <tysonfoodsinc.com> domain name, which provides
corporate information such as press releases, financial information and
employment opportunities. Additionally,
Complainant operates a website at the <tyson.com> domain name that
provides information to consumers regarding its numerous products.
Complainant has
registered its TYSON mark with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 1,748,683 issued January 26, 1993).
Respondent
registered the <tysonfoodinc.com> domain name on December 10,
2002. Respondent’s domain name resolves
to a search engine website site featuring links to a variety of goods and
services, including gambling websites.
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.
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.
Complainant has
established rights in the TYSON mark through registration with the USPTO. See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the United States Patent
and Trademark Office creates a presumption of rights in a mark); see also Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”).
Respondent’s <tysonfoodinc.com>
domain name is confusingly similar to Complainant’s TYSON mark. Respondent’s domain name incorporates
Complainant’s mark in its entirety and adds the terms “food” and “inc,” which
describe Complainant’s food production business. Additionally, Respondent’s domain name adds the generic top-level
domain name “.com.” Such minor
additions are not enough to overcome a finding of confusing similarity between
Respondent’s domain name and Complainant’s mark pursuant to Policy ¶
4(a)(i). See Space Imaging LLC v. Brownell,
AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s
domain name combines Complainant’s mark with a generic term that has an obvious
relationship to Complainant’s business); see also Arthur Guinness Son & Co. (Dublin) Ltd.
v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity
where the domain name in dispute contains the identical mark of Complainant
combined with a generic word or term); 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).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to file a Response. Thus, the
Panel may accept all reasonable allegations and assertions set forth by
Complainant as true and accurate. See
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.”); see also
Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb.
Forum June 17, 2002) (finding that in the absence of a Response the Panel is
free to make inferences from the very failure to respond and assign greater
weight to certain circumstances than it might otherwise do).
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
interpret Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <tysonfoodinc.com> domain
name pursuant to Policy ¶ 4(a)(ii). See
Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Furthermore,
Respondent is using the <tysonfoodinc.com> domain name, which
contains a confusingly similar version of Complainant’s mark, to operate a
search engine website featuring links to various goods and services, including
gambling. Such use in not a use in
connection with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Geoffrey, Inc. v.
Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 5, 2003) (holding that
Respondent’s use of the disputed domain name, a simple misspelling of
Complainant’s mark, to divert Internet users to a website that featured pop-up
advertisements and an Internet directory, was neither a bona fide offering of
goods or services nor a legitimate noncommercial or fair use of the domain
name); see also Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb.
Forum May 12, 2003) (finding that Respondent did not have rights or legitimate
interests in a domain name that used Complainant’s mark and redirected Internet
users to website that pays domain name registrants for referring those users to
its search engine and pop-up advertisements); see also Société des Bains de Mer v. Int’l Lotteries,
D2000-1326 (WIPO Jan. 8, 2001) (finding no rights or legitimate interests where
Respondent used the <casinomontecarlo.com> and
<montecarlocasinos.com> domain names in connection with an online
gambling website).
Moreover,
nothing in the record indicates that Respondent is either commonly known by the
<tysonfoodinc.com> domain name or is authorized to register domain
names featuring Complainant’s TYSON mark.
Thus, the Panel finds that Respondent lacks rights and legitimate
interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interests where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name); see also RMO, Inc. v. Burbridge,
FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii)
"to require a showing that one has been commonly known by the domain name
prior to registration of the domain name to prevail").
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <tysonfoodinc.com> domain name to operate a search
engine website featuring links to various goods and services. The Panel infers that Respondent receives
click-through fees for diverting Internet users to these unrelated
websites. Since Respondent’s domain
name contains a confusingly similar version of Complainant’s TYSON mark,
consumers accessing Respondent’s domain name may become confused as to
Complainant’s affiliation with the resulting website. Thus, the Panel finds that Respondent’s commercial use of the <tysonfoodinc.com>
domain name constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See G.D. Searle & Co.
v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding
that Respondent registered and used the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain
name to attract Internet users to its commercial website); see also Kmart v.
Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent
profits from its diversionary use of Complainant's mark when the domain name
resolves to commercial websites and Respondent fails to contest the Complaint,
it may be concluded that Respondent is using the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv)).
Furthermore,
Respondent registered the <tysonfoodinc.com> domain name with
actual or constructive knowledge of Complainant’s rights in the TYSON mark due
to Complainant’s registration of the mark with the USPTO as well as to the
immense international fame that Complainant’s TYSON mark has acquired. Thus, the Panel finds that Respondent
registered and used the domain name in bad faith pursuant to Policy ¶
4(a)(iii). See Orange Glo Int’l v.
Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN
mark is listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000)
(finding that Respondent had actual and constructive knowledge of Complainant’s
EXXON mark given the worldwide prominence of the mark and thus Respondent
registered the domain name in bad faith).
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 <tysonfoodinc.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice Supreme Court, NY (Ret.)
Dated: March 4, 2005