Sysco Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1909001864665
Complainant is Sysco Corporation (“Complainant”), represented by Nathan C Belzer of Belzer PC, Georgia, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <portalsysco.com>, <syscoportal.com>, <syscostock.com>, and <syscoaccountscenter.com>, registered with GoDaddy.com, LLC.
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 Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 30, 2019; the Forum received payment on September 30, 2019.
On October 1, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <portalsysco.com>, <syscoportal.com>, <syscostock.com>, and <syscoaccountscenter.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 3, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 23, 2019 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@portalsysco.com, postmaster@syscoportal.com, postmaster@syscostock.com, postmaster@syscoaccountscenter.com. Also on October 3, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 Forum transmitted to the parties a Notification of Respondent Default.
On October28, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 disputed domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant claims that it has rights in the SYSCO trademark acquired through its ownership of its portfolio of US trademark registrations described below and the goodwill that it has acquired through its use of the mark in its foodservice business in North America for almost 50 years.
Complainant claims to be the largest marketer and distributor of foodservice products in North America, asserting that since its initial public offering in 1970, when its sales were $115 million, Complainant’s sales have grown to over $58 billion in fiscal year 2018. Complainant submits that it has sales and service relationships with more than 420,000 customers throughout North America. Its reputation in the foodservice industry, as well as in financial and other circles, is international.
Complainant submits that the disputed domain names are identical and/or confusingly similar to Complainant’s SYSCO mark arguing that the dominant portion of each of the disputed domain names is Complainant’s SYSCO mark.
With respect to the disputed domain names <portalSYSCO.com> and <SYSCOportal.com>, Complainant argues that the addition of the generic word “portal” does not negate the confusing similarity between the disputed domain names and Complainant’s mark; and with respect to the disputed domain names <SYSCOstock.com>, the addition of the generic word “stock” does not negate the confusing similarity between the domain name and the SYSCO mark; and with respect to the disputed domain name <SYSCOaccountscenter.com>, the addition of the generic and/or descriptive words “accounts” and “center” does not negate the confusing similarity between the disputed domain name and mark either.
Additionally, Complainant submits that it is well settled that the affixation of a gTLD to a domain name is insufficient to differentiate the domain name from a complainant’s mark, citing the decision in Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Complainant asserts that the SYSCO mark is an arbitrary term coined by Complainant; it has no meaning in common English and argues that because the disputed domain names cannot be distinguished from the SYSCO mark, consumer confusion is unavoidable.
association or affiliation with Complainant.
On information and belief, Respondent has not made use of the disputed domain names in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain names, the SYSCO mark, or any trade name containing the component “SYSCO.” On the Registrar’s WhoIs or otherwise. To the extent references to Complainant appear on the websites to which the disputed domain names resolve, they are deceptive. The SYSCO mark is an arbitrary term coined by SYSCO which has become famous due to Complainant’s exclusive use and continuous promotion of the mark over the last fifty years. The SYSCO mark is an arbitrary term, coined by Complainant; it has no meaning in common English and therefore, it can be assumed that Respondent is not making legitimate generic or descriptive use of the disputed domain names, but instead is using the disputed domain names to refer to Complainant, to trade on Complainant’s name and the reputation
of the SYSCO mark, and to misleadingly divert consumers to the disputed domain names.
Complainant further argues that Respondent is further using the disputed domain names to offer advertising and redirect to websites that are, on information and belief, unrelated to Respondent or Respondent’s products or services. Complainant states that the disputed domain names automatically redirect through a series of other websites using a fast flux DNS technique (FFDNS). Each disputed domain name finally resolves to a rotating series of different websites, some of which install malicious software such as adware and spyware on a user’s computer.
Finally, Complainant submits that Respondent uses the disputed domain name <SYSCOstock.com> to provide pay-per-click links that are clearly intended to cause Internet users to believe they are associated with Complainant, its products, or finding employment with Complainant, but in fact redirect to third party websites not affiliated with Complainant. Such using of the confusingly similar domain name to host such links is not a bona fide offering of goods or services or a legitimate non-commercial or fair use under the Policy.
Complainant alleges that the disputed domain names have been registered and are being used in bad faith. Complainant has used its distinctive SYSCO mark exclusively and continuously for approximately fifty years. Complainant argues that its SYSCO mark has become famous and is highly recognized among consumers and the general public and refers to SYSCO’S ranking as the world’s 12th most valuable commercial services brand in a reputable publication. Complainant submits that it can be assumed Respondent had actual knowledge of the SYSCO mark and Complainant’s rights prior to registering the disputed domain names in bad faith.
Complainant argues that Respondent’s registration and use of the four domain names containing the SYSCO mark establishes Respondent’s actual notice of the SYSCO mark and is evidence that Respondent registered and used the disputed domain names in bad faith.
Each of the disputed domain names is registered to Respondent, all registered with the same Registrar, all registered using the same domain privacy service provider, the websites to which they resolve share the same name server, registered within six weeks of each other in February and March of 2019, and each incorporates the SYSCO mark in its entirety in conjunction with a non-distinctive generic or descriptive term.
Furthermore, Complainant alleges that each of the disputed domain names resolve to websites with a similar rotating cache of pay-per-click advertising, third party advertising, and links that attempt to download malicious software such as adware and malware.
Complainant submits that on information and belief, Respondent registered and has used the disputed domain names in an attempt to block Complainant, the owner of the SYSCO mark, from using them. Further, Respondent’s registration of four domain names containing the SYSCO mark establishes a pattern of bad faith registration under the Policy.
Complainant submits that Respondent is using the disputed domain names for Respondent’s commercial gain to attract Internet users by creating a likelihood of confusion with the famous, distinctive SYSCO mark.
Complainant submits that Respondent has engaged in a policy of cybersquatting and has a history of adverse UDRP findings in disputes arising from other instances where Respondent has registered domain names infringing on famous marks which is evidence of bad faith under Policy ¶ 4(b)(ii). See, e.g., Capital One Financial Corp. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1842311 (Forum June 11, 2019); Lockheed Martin Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, 1837567 (Forum May 1, 2019); Thomson Reuters Global Resources Unlimited Company v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1836055 (Apr. 25, 2019); Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1826400 (Forum Feb. 28, 1019); Morgan Stanley and Morgan Stanley Domestic Holdings, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1819634 (Forum Dec. 31, 2018); Amazon Technologies, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1819070 (Forum Dec. 27, 2019); Oracle International Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1819052 (Forum Jan. 4, 2019); Bloomberg Finance L.P. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1814496 (Forum Nov. 26, 2018); T-Mobile USA, Inc. dba MetroPCS v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1801535 (Forum Sep. 17, 2018); 7-Eleven, Inc. v. Carolina Rodrigues / Privacy Services Limited, FA 1782025 (Forum May 14, 2018); Staples, Inc. and Staples the Office Superstores, LLC v FCS Holdings Corp / Carolina Rodrigues FA 1428752, (Forum Apr. 4, 2012).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant and its wholly-owned affiliates provide food and food-related goods as well as related distribution services to the foodservice industry in North America under the SYSCO mark since at least as early as 1969. Complainant is the owner of a large portfolio of registered trademarks for the SYSCO and similar marks including United States trademark registration number 969,024 SYSCO, registered on September 25, 1973 for goods in international classes 5, 29, 30 and 32.
Complainant also maintains an Internet presence for its business at its website at the <www.sysco.com> address.
The disputed domain names are <portalsysco.com>, <syscoportal.com>, <syscostock.com>, and <syscoaccountscenter.com>, each of which were registered within six weeks of each other in February and March of 2019 and resolve to websites with links to third party websites or locations.
There is no information available about Respondent except that which is provided in the Complaint, the Registrar’s WhoIs and the Registrar’s response to the Forum’s request for verification of the registration within this proceeding.
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."
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has provided convincing evidence of its rights in the SYSCO mark through its ownership of the abovementioned portfolio of trademark registrations and it use of the mark in its foodservice business for approximately 50 years.
Each of the disputed domain names <portalsysco.com>, <syscoportal.com>, <syscostock.com>, and <syscoaccountscenter.com>, contains Complainant’s distinctive trademark in its entirety as its only distinctive element. Complainant’s trademark appears, and is recognizable as the dominant element in combination with non-distinctive elements “portal”, “stock”, “accounts” and “center”. The gTLD <.com> extension may be ignored in the context of this Complaint.
This Panel therefore finds that the disputed domain names are each confusingly similar to the SYSCO trademark in which Complainant has rights.
Complainant has therefore succeeded in the first element of the test in Policy paragraph 4(a)(i).
This Panel finds that it is well established by the decisions of Panels under the Policy that in such circumstances, the burden of production shifts to Respondent. Respondent has failed to discharge this burden. This Panel finds therefore on the evidence that Respondent has no rights or legitimate interest in the disputed domain name and Complainant has therefore succeeded in the second element of the test in Policy Paragraph 4(a)(ii).
Complainant has a long and substantial reputation in the use of the SYSCO mark in its business which had a turnover of over $58 billion in fiscal year 2018. Complainant has an established Internet presence with its website to which its domain name <sysco.com> resolves. Complainant’s trademark SYSCO is the only distinctive element in the disputed domain names. Complainant’s SYSCO mark is a distinctive coined term with no ordinary meaning in the English language. In such circumstances, it is most improbable that the disputed domain names were registered without actual knowledge of Complainant, its business and reputation and on the balance of probabilities the disputed domain name was registered to take predatory advantage of Complainant’s reputation.
Respondent is using each of the disputed domain names to resolve to Internet locations that redirect Internet users to third party sites. Some of these appear to be bona fide third-party sites, however Complainant has submitted that some of the links resolve to malware, adware and spyware and this has not been challenged by Respondent.
In any event it is clear that Respondent is intentionally using the disputed domain names to attract Internet users for commercial gain to Respondent’s web sites and other on-line locations, by creating a likelihood of confusion with Complainant's SYSCO mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of products and services to which the links on Respondent’s website resolve.
This Panel finds that each of the disputed domain names has been registered and is being used in bad faith. Complainant therefore has satisfied the third and final element of the test in Policy paragraph 4(a)(iii) in respect of each of the disputed domain names and is entitled to succeed in this Complaint.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <portalsysco.com>, <syscoportal.com>, <syscostock.com>, and <syscoaccountscenter.com> domain names be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: October 28, 2019
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