Tyson Foods, Inc. v. [Registrant]
Claim
Number: FA0502000414504
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 [Registrant] (“Respondent”), 41
Salisbury Road, Kowloon, HK.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <tysonbenifits.com>, registered with Fabulous.com
Pty Ltd.
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.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
2, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 3, 2005.
On
February 7, 2005, Fabulous.com Pty Ltd. confirmed by e-mail to the National
Arbitration Forum that the domain name <tysonbenifits.com> is
registered with Fabulous.com Pty Ltd. and that Respondent is the current
registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is
bound by the Fabulous.com Pty Ltd. 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
February 8, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 28, 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@tysonbenifits.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 4, 2005, 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." 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 <tysonbenifits.com>
domain name is confusingly similar to Complainant’s TYSON mark.
2. Respondent does not have any rights or
legitimate interests in the <tysonbenifits.com> domain name.
3. Respondent registered and used the <tysonbenifits.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. Complainant is a recognized market leader in
the retail and food service markets it serves, providing products and services
to consumers throughout the United States and more than eighty countries. In addition, Complainant has approximately
300 facilities and offices in twenty-seven states and twenty countries. Complainant’s worldwide sales in 2004 were
over $26 billion (USD).
Complainant
holds numerous federal registrations with the United States Patent and
Trademark Office for the TYSON mark (Reg. No. 1,748,683 issued January 26,
1993) and international registrations in several countries including
Respondent’s purported country of residence, Hong Kong, (Reg. No. B01081 issued
March 4, 1994). Complainant has been
using the TYSON mark in commerce since at least as early as 1958.
Complainant
operates a website at <tysonbenefits.com>, which allows its employees to
manage their employee benefits online. Additionally, Complainant manages a website at the
<tysonfoodsinc.com> domain name that provides corporate information such
as press releases, financial information, and employment opportunities.
Respondent
registered the <tysonbenifits.com> domain name on August 10,
2004. Respondent is using the disputed
domain name to redirect Internet users to a website that contains a search
engine and a number of advertising links to various goods and services
including employee benefits and investment services. Respondent presumably profits from this website through
click-through revenues.
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 that it has rights in the TYSON mark through registration with the
United States Patent and Trademark Office, registration of the mark in various
countries including Respondent’s purported home country of Hong Kong, and
through continued use of the mark in commerce for the last forty-seven
years. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption.); 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.”); see also Wal-Mart Stores,
Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure
of complainant to register all possible domain names that surround its
substantive mark does not hinder complainant’s rights in the mark. “Trademark
owners are not required to create ‘libraries’ of domain names in order to
protect themselves”).
Respondent’s <tysonbenifits.com>
domain name is confusingly similar to Complainant’s TYSON mark because the
domain name incorporates Complainant’s mark in its entirety and simply adds the
generic top-level domain (“gTLD”) “.com” and the misspelled generic or
descriptive term, “benifits.” The
addition of “.com” and a misspelled generic term to Complainant’s mark does not
distinguish the domain name pursuant to Policy ¶ 4(a)(i). See
Sony Kabushiki Kaisha v. Inja, D2000-1409 (WIPO Dec. 9, 2000) (“Neither 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 Brambles
Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000)
(finding that the domain name <bramblesequipment.com> is confusingly
similar because the combination of the two words "brambles" and
"equipment" in the domain name implies that there is an association
with complainant’s business).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent failed to contest Complainant’s
assertion that Respondent lacks rights and legitimate interests in the disputed
domain name. Because Complainant’s
evidence and arguments are unopposed, the Panel is permitted to accept all
reasonable inferences made in the Complaint as true. 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 Desotec
N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that
failing to respond allows a presumption that complainant’s allegations are true
unless clearly contradicted by the evidence); see also Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on respondent’s
failure to respond: (1) respondent does not deny the facts asserted by
complainant, and (2) respondent does not deny conclusions which complainant
asserts can be drawn from the facts).
Additionally,
Complainant has submitted a prima facie case to the Panel, thereby
shifting the burden to Respondent.
Respondent’s failure to fulfill its burden means that Respondent has
failed to invoke any circumstances that could demonstrate rights or legitimate
interests in the domain name. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(finding that once complainant asserts that respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to
respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); see also 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 Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that respondent has no rights or legitimate
interests in the domain name because respondent never submitted a response or
provided the Panel with evidence to suggest otherwise).
Respondent is
not authorized or licensed by Complainant to use the TYSON mark in the domain
name. No evidence before the Panel
suggests Respondent is commonly known by the domain name, and therefore the
Panel concludes that Respondent lacks rights and legitimate interests in the
domain name pursuant to Policy ¶ 4(c)(ii).
See 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"); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interest 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 Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) respondent is not a licensee of complainant; (2) complainant’s rights
in the mark precede respondent’s registration; (3) respondent is not commonly
known by the domain name in question).
Respondent’s
disputed domain name is confusingly similar to Complainant’s mark and is used
to redirect Internet users searching for Complainant to a website that features
a search engine and links to third party businesses. Such use has consistently been found not to be 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 eBay Inc. v. Hong, D2000-1633
(WIPO Jan. 18, 2001) ("[U]se of complainant’s entire mark in infringing
domain names makes it difficult to infer a legitimate use"); see also Computer Doctor Franchise Sys., Inc. v.
Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that
respondent’s website, which is blank but for links to other websites, is not a
legitimate use of the domain names); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because respondent's sole purpose in selecting
the domain names was to cause confusion with complainant's website and marks,
its use of the names was not in connection with the offering of goods or
services or any other fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered and used the <tysonbenifits.com> domain name in bad
faith pursuant to Policy ¶ 4(b)(iv).
Specifically, uncontested evidence indicates that the subject domain
name earns referral fee revenue for Respondent through click-through
advertising. Thus, the Panel infers
that Respondent commercially benefits from its use of Complainant’s TYSON mark
in the domain name. See 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)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where respondent directed Internet users
seeking complainant’s site to its own website for commercial gain); see also
H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8,
2003) (finding that the disputed domain name was registered and used in bad
faith pursuant to Policy ¶ 4(b)(iv) through respondent’s registration and use
of the infringing domain name to intentionally attempt to attract Internet
users to its fraudulent website by using complainant’s famous marks and
likeness).
Complainant has
established that its TYSON mark is well-known worldwide and registered in
several countries. Respondent’s
registration of the <tysonbenifits.com> domain name, a domain name
that wholly incorporates Complainant’s mark, suggests that Respondent knew of
Complainant’s rights in the mark at the time of registration. Moreover, Respondent registered the domain
name with actual or constructive knowledge of Complainant’s mark because
Complainant’s mark is registered with the USPTO and in Respondent’s country of
residence. Thus, the Panel finds that
Respondent registered and used the domain name in bad faith because Respondent
chose the disputed domain name based on the distinctive qualities of
Complainant’s mark. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also
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 Albrecht v. Natale, FA 95465 (Nat. Arb.
Forum Sept. 16, 2000) (finding registration in bad faith based where there is
no reasonable possibility, and no evidence from which to infer that the domain
name was selected at random since it entirely incorporated complainant’s name).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
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 <tysonbenifits.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
March 18, 2005