WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sysco Corporation v. Jose Castaneda
Case No. D2007-0197
1. The Parties
Complainant is Sysco Corporation, Houston, Texas, United States of America, represented by Belzer PC, United States of America.
Respondent is Jose Castaneda, Chicago, United States of America.
2. The Domain Name and Registrar
The disputed domain name <syscohouston.com> is registered with Melbourne IT trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2007. On February 13, 2007, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On February 14, 2007, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 20, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 13, 2007.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on March 22, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant owns some 17 United States of America registrations for the trademark SYSCO. The earliest of these is No. 969,024 with a registration date of September 25, 1973. The most recent of these, No. 2,878,977, was registered August 31, 2004. Complainant owns another 28 trade or service mark registrations which use the name “Sysco” as part of a word, e.g. “Syscoware”, or in conjunction with one or more other words, e.g. “Sysco International”. It is unnecessary to the decision to list all of the registrations here.
In addition, Complainant owns registrations of the mark SYSCO in the European Community and 34 countries other than the United States of America.
Respondent registered the Domain Name, <syscohouston.com>, on August 22, 2005.
5. Parties’ Contentions
The Domain Name is identical or confusingly similar to a trademark in which Sysco has rights.
Complainant contends that Sysco is the largest marketer and distributor of foodservice products in North America. Since its initial public offering in 1970, when its sales were $115 million, Sysco’s sales have grown to over $31.4 billion in fiscal year 2006. Sysco is among the Fortune 100, and its shares are traded on the New York Stock Exchange. Sysco 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 contends that it has been using the mark SYSCO in conjunction with its goods and services since at least 1969. Due to (i) Sysco’s substantial and continuous promotion of Sysco marks, (ii) the extent and duration of Sysco’s use of Sysco marks, and (iii) the reputation for quality of Sysco’s products and services, Sysco marks have become famous as an indicator of the source, origin, or sponsorship of Sysco’s distribution services and food and related non-food products.
Complainant contends that the SYSCO mark is an arbitrary term coined by Sysco; it has no meaning in common English. Thus, any use of the term “Sysco” may be assumed by consumers to refer to Sysco and its products and services.
Sysco owns and operates the domain name <sysco.com>, which contains individual pages describing Sysco’s business. Many of Sysco’s wholly-owned subsidiary operating companies own and operate domain names that incorporate the “Sysco” name and the location of the subsidiary. The following Sysco subsidiaries own and operate the following domain names using the format <sysco[LOCATION].com>:
SYSCO Food Services of Atlanta, LLC.
SYSCO Food Services of Cleveland, Inc.
SYSCO Food Services of Dallas, LP
SYSCO Food Services of Grand Rapids, LLC
SYSCO Food Services of Los Angeles, Inc.
SYSCO Food Services of New Orleans, LLC
SYSCO Food Services of Portland, Inc.
SYSCO Food Services of San Francisco
SYSCO Food Services of Seattle, Inc.
SYSCO Food Services of Vancouver, Inc.
The dominant portion of the Domain Name is identical to the SYSCO mark. The other portion of the mark, “Houston”, is identical to the location of Sysco’s corporate office and Sysco’s wholly owned subsidiary operating company located in Houston, Sysco Food Services of Houston, LP. To all of its customers, Sysco Food Services of Houston, LP is known simply as “Sysco Houston” and through use of this name in commerce by its wholly owned subsidiary, Sysco has obtained common law trademark rights in the mark SYSCO HOUSTON. Thus, the Domain Name is substantially identical and confusing similar to Sysco’s mark.
Since the Domain Name uses the standard format identical to that of domain names owned and operated by Sysco’s other wholly-owned subsidiaries, registration of the Domain Name by Respondent is blocking Sysco from the obvious web location for its Sysco Houston operating company.
Because of the confusing similarity between the Domain Name and the SYSCO mark, confusion between Respondent’s Domain Name and SYSCO marks is unavoidable.
As between Respondent’s Domain Name registration and SYSCO marks, it is unquestionable that Sysco has priority of use: Sysco has used its SYSCO mark continuously for over thirty-five years while Respondent registered the Domain Name less than two years ago.
Respondent should be considered as having no rights or legitimate interests in respect of the Domain Name.
Complainant further contends that Respondent should be considered as having no rights in or to the Domain Name. Respondent registered the Domain Name on August 22, 2005, and to the date of the Complaint, has not engaged in any use of the Domain Name in connection with a bona fide offering of goods and services, other than offering the Domain Name for sale at an extortionate price well in excess of costs directly related to the Domain Name registration.
The Domain Name should be considered as having been registered and used in bad faith.
Complainant contends that shortly after the Domain Name came to Sysco’s attention, on December 5, 2006, Sysco’s attorney, Nathan C. Belzer, sent Respondent a letter demanding that Respondent cease use of the Domain Name. On or about December 8, 2006, Respondent phoned Mr. Belzer and left a message stating that Respondent did not have access to a phone and requesting Mr. Belzer to contact Respondent via his email address, [ ]@syscohouston.com. Mr. Belzer replied by email to that address.
On or around December 12, 2006, Respondent left another message for Mr. Belzer. Mr. Belzer replied by email. Respondent did not communicate with Sysco after that time.
Complainant contends that prior to December 2006, the website at the Domain Name contained only: (i) the title “SYSCO HOUSTON”, (ii) the term “sysco” displayed 165 times, (iii) contact information listing the email address “[ ]@syscohouston.com”, (iv) a picture of a boat in a body of water, and (v) the statement “Domain for SALE $20,000”.
Some time after Respondent’s receipt of Sysco’s December 5, 2006 letter, the offer to sell the Domain Name was removed from the Website. The Website now contains only: (i) the title “S.Y.S.C.O.HOUSTON”, (ii) the phrase “S.Y.S.C.O.HOUSTON” displayed 55 times; (iii) contact information listing the email address “[ ]@syscohouston.com”, (iv) a picture of a boat in a body of water. Complainant contends that Respondent’s removal of the phrase “Domain for SALE $20,000” in the face of Sysco’s demand letter is an obvious attempt to avoid appearing as if he registered the Domain Name in bad faith and that these actions serve instead to highlight Respondent’s nefarious intent.
Complainant contends that Respondent is a former employee of Sysco whose term of employment was terminated by Sysco.
The Complainant contends that Respondent registered and used the Domain Name primarily for the purpose of either (i) selling, renting, or otherwise transferring the Domain Name registration to Sysco or to a Sysco competitor for valuable consideration well in excess of costs directly related to the Domain Name registration, or (ii) preventing Sysco from reflecting the mark in a correspondent domain name in retaliation for grievances related to Respondent’s employment with Sysco.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Because Respondent did not respond to the Complaint, the Panel first addresses the question of whether Respondent has been given adequate notice of the proceeding. The evidence of record indicates that the Center sent the Complaint by courier service to the addresses shown in the registration data, as required, and that the Complaint was in fact delivered. The evidence also shows that the Center sent the Complaint in electronic form to the e-mail addresses required under paragraph 2(a)(ii) of the Rules. The Panel concludes that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and the administrative proceeding.
Where the respondent does not respond to the complaint, the panel must decide the dispute based upon the complaint. Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable. Rules, paragraph 15(a). Under paragraph 14(b) of the Rules, Respondent’s failure to answer entitles the panel to “draw such inferences therefrom as it considers appropriate”.
Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case in order to obtain the requested relief:
(i) Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent’s Domain Name has been registered and is being used in bad faith.
The Panel considers each element in order.
A. Identical or Confusingly Similar
Complainant must first establish that the Domain Name is identical or confusingly similar to Complainant’s trademark or service mark.
The Panel finds that Complainant possesses well-established rights in the trademark/service mark SYSCO, owning multiple registrations in the United States of America dating from as early as 1971 and registrations in numerous jurisdictions around the world. The Panel finds that the Domain Name, <syscohouston.com>, is confusingly similar to the SYSCO marks in which the Complainant has rights.
“The intentional registration of a domain name knowing that the second level domain is another company’s valuable trademark weighs in favor of likelihood of confusion”. Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1059 (9th Cir. 1999). The Domain Name incorporates Complainant’s SYSCO mark in it entirety and with identical spelling. The Panel notes also that Respondent is likely to have had at least constructive knowledge of Complainant’s registered trademarks, Microsoft Corporation v. Cupcake City, WIPO Case No. D2000-0818, and there is a strong inference that Respondent’s use of Complainant’s mark in the domain name was in fact intentional. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Domain Name adds the geographic descriptor “Houston” to Complainant’s SYSCO trademark. “Generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 2005). See General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087. The principle that likelihood of confusing similarity cannot be avoided by the addition of descriptive content has been found to include the addition of entire words to a famous trademark. See The Coca-Cola Company v. Gamlebyen Invest AS, WIPO Case No. D2000-1677 (“Coca Cola” and “cocacoladrinks” held confusingly similar); America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004, citing Sporty’s Farm LLC. v. Sportsman’s Market. Inc., 202 F. 3d 489, 497-98 (2d. Cir. 2000); Yahoo! Inc. v. CPIC NET and Syed Hussain, WIPO Case No. D2001-0195; America Online, Inc., v. Yeteck Communication, Inc., WIPO Case No. D2001-0055. Applying the same principles, the addition of geographic names to another’s trademark has been held not to avoid the confusing similarity between the Domain Name and Complainant’s trademark. TPI Holdings, Inc. v. Autobuyline, WIPO Case No. D2000-1546 (“It is well settled in ICANN proceedings that the addition of a geographic name . . . without more, can not serve to save an identical or confusingly similar trademark from remaining same.”); eBay Inc., v. GL Liadis Computing, Ltd.and John L. Liadis d/b/a G L Liadis Computing Ltd., WIPO Case No. D2000-1463 (mere inclusion of a geographic descriptor is insufficient in general to dispel user confusion from occurring).
The principle applies more strongly here where the geographic descriptor used in the Domain Name is the name of the city where Complainant maintains its corporate headquarters and one of its subsidiary operating companies, commonly referred to as “Sysco Houston”, and where the Complainant employs a pattern of domain names for its wholly-owned subsidiaries consisting of the word “Sysco” combined with the name of the city where the subsidiary company is located, e.g. <syscodallas.com>. See eBay Inc., v. GL Liadis Computing, Ltd. and John L. Liadis d/b/a G L Liadis Computing Ltd, WIPO Case No. D2000-1463; AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713. These factors also tend to reinforce an impression that the Domain Name, <syscohouston.com>, is in fact associated with Complainant rather than alleviate that falsity.
In addition, an Internet user searching for Complainant’s company, products or services would likely be confused by Respondent’s domain name to think that he/she was being directed to Complainant’s website where he/she could obtain information about or possibly purchase Complainant’s products, which is completely untrue. Indeed, the Domain Name suggests a sponsorship of or affiliation with Complainant’s company which does not in fact exist.
The Panel concludes that the Domain Name is confusingly similar to trademarks and service marks in which Complainant has established rights.
B. Rights or Legitimate Interests
Complainant must establish that Respondent has no rights or legitimate interests in the Domain Name. See paragraph 4(a)(ii) of the Policy. Once a complainant has made out a prima facie case that a respondent lacks rights or legitimate interests, this shifts the burden to Respondent to come forward with evidence demonstrating its rights and legitimate interests, if any. Respondent, in default here, does nothing to assume his burden.
There is no evidence that Respondent is commonly known by the Domain Name, that he was authorized or licensed by Complainant to use its trademarks in the Domain Name or that he is making a legitimate noncommercial or fair use of the Domain Name. See paragraphs 4(c)(ii) and (iii) of the Policy.
The evidence of record is sufficient for the Panel to infer that Respondent is not using the Domain Name in connection with any offering, let alone a bona fide offering, of goods or services. See paragraph 4(c)(i) of the Policy. The Panel considers that Respondent in all likelihood knew of the SYSCO trademarks before registering the Domain Name and consciously chose to use that mark in launching his website. See Pfizer Inc. v. NA, WIPO Case No. D2005-0072. The unlawful use of another’s trademark cannot be considered bona fide, i.e. in good faith, with respect to an offering of goods or services. AltaVista Company v. Mr. James A. Maggs, NAF Case No. FA0095545.
Based on the evidence, the Panel concludes that Respondent does not have rights to or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Finally, Complainant must show that Respondent both registered and is using the Domain Name in bad faith. See paragraph 4(a)(iii) of the Policy.
There is substantial authority that registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use. Sporty’s Farm LLC v. Sportsman’s Market, Inc., 202 F.3d 489, 498 (2d Cir. 2000); Pfizer Inc. v. NA, WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith). Respondent here either knew or ought to have known of Complainant’s trademarks when it used them in registering the Domain Name.
Under paragraph 4(b)(i) of the Policy, the following constitutes evidence of bad faith registration and use of a domain name:
Circumstances indicating that [Respondent has] registered or . . . acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.
The Panel finds that such circumstances existed here. Respondent’s website, on its face, offered to sell the domain name for $20,000. Inasmuch as the Domain Name would be of little bona fide use to anyone other than Complainant, it is a reasonable inference that Respondent intended to sell the Domain Name to Complainant and, further, that, at $20,000, the price would have been well in excess of Respondent’s out-of-pocket costs related to the Domain Name.
The fact that Respondent, a former employee of Complainant, removed the overt offer to sell from his website after being contacted by Complainant’s attorney with a demand to cease using and transfer the Domain Name to Complainant, does not negate bad faith registration and use. The focus of the Policy is on the purpose for which Respondent registered the Domain Name, and it appears on the record that Respondent registered the Domain Name in order to sell it to Complainant at an excessive price.
The Panel need not go further on the issue of bad faith registration and use of the Domain Name. Complainant contends that Respondent is also attempting to prevent Complainant from reflecting the mark in a corresponding domain name, but, under paragraph 4(b)(ii) of the Policy, this is not sufficient evidence of bad faith unless the respondent has engaged in a pattern of such conduct, which Complainant has not shown here.
The Panel thus concludes that Respondent both registered and is using the Domain Name <syscohouston.com> in bad faith and that Complainant has established the third and final element of its case.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <syscohouston.com>, be transferred to Complainant.
John R. Keys, Jr.
Dated: April 5, 2007