Tyson Foods, Inc. v. Johnny Depp
Claim
Number: FA0501000404669
Complainant is Tyson Foods, Inc. (“Complainant”), represented
by Clifford C. Dougherty, of McAfee & Taft A Professional Corporation, Tenth Floor, Two Leadership Square, 211 North Robinson, Oklahoma
City, OK 73102-7103. Respondent is Johnny Depp (“Respondent”), 11
Bowerdean Street, Fulham, London, UK.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <tysonfoods.com>, registered with Hangang
Systems, Inc. d/b/a Doregi.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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
17, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 19, 2005.
On
February 3, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 23, 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@tysonfoods.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
March 3, 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 <tysonfoods.com>
domain name is confusingly similar to Complainant’s TYSON mark.
2. Respondent does not have any rights or
legitimate interests in the <tysonfoods.com> domain name.
3. Respondent registered and used the <tysonfoods.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). Additionally, Complainant has registered the
TYSON mark in the United Kingdom (Reg. No. 2,106, 280 issued July 29, 1996),
Respondent’s purported country of residence.
Respondent
registered the <tysonfoods.com> domain name on May 25, 2000. Respondent’s domain name resolves to an
“under construction” website featuring no active content.
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 <tysonfoods.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 term “food,” which describes
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 <tysonfoods.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.”).
Respondent has
not used the <tysonfoods.com> domain name; as such, it cannot be
said to be making a bona fide offering of goods or services, nor can it be said
to be making a legitimate noncommercial or fair use of the domain name. In these circumstances, Policy ¶¶ 4(c)(i)
and (iii) are inapplicable to Respondent. See Vestel Elektronik Sanayi ve
Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“[M]erely
registering the domain name is not sufficient to establish rights or legitimate
interests for purposes of paragraph 4(a)(ii) of the Policy.”); see also
Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000)
(finding no rights or legitimate interests where Respondent failed to submit a
Response to the Complaint and had made no use of the domain name in question); see
also Broadcom Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that
Respondent’s use of the disputed domain name to display an “under construction”
page did not constitute a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii)).
Moreover,
nothing in the record indicates that Respondent is either commonly known by the
<tysonfoods.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 has
not used the <tysonfoods.com> domain name since it was registered
nearly five years ago. The Panel finds
that such nonuse of the domain name constitutes passive holding and is evidence
of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000)
(finding that Respondent made no use of the domain name or website that
connects with the domain name, and that passive holding of a domain name
permits an inference of registration and use in bad faith); see also DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of
the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Furthermore,
Respondent registered the <tysonfoods.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 <tysonfoods.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret..)
Dated: March 17, 2005