WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tyson Foods, Inc. v. Bargin Register, Inc. - Client Services
Case No. D2011-1622
1. The Parties
The Complainant is Tyson Foods, Inc. of Springdale, Arkansas, United States of America, represented by Winston & Strawn LLP, United States of America.
The Respondent is Bargin Register, Inc. - Client Services of Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <tysonfoodsemployment.com> is registered with Bargin Register Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2011. On September 23, 27 and 29, 2011 and October 3 and 5, 2011, the Center transmitted by email to the Registrar requests for registrar verification in connection with the disputed domain name. The Registrar did not respond to any of these Center requests for registrar verification. Thus, the Center proceeded on the basis of the publicly-available WhoIs data, on the assumption in light of the multiple requests that the appropriate steps had been taken by the Registrar to prevent registrant breach of paragraph 8(a) of the Policy, and that for the adjudication of disputes concerning or arising from use of the domain name, the domain name registrant had submitted (as appeared to be the case from the publicly available website of the Registrar) in its Registration Agreement (“RA”) to the jurisdiction of the courts where the Registrar was located.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 the Respondent of the Complaint, and the proceedings commenced on October 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2011.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on November 24, 2011. 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
The Complainant is a large food production company which operates in the United States of America (“U.S.”) and internationally under the business name Tyson Foods, Inc. The Complainant employs approximately 115,000 employees in more than 400 facilities and offices in the U.S. and internationally. The Complainant owns several trademark registrations for the trademark TYSON namely U.S. Registration No. 1,748,683 registered on January 26, 1993; U.S. Registration No. 2,810,231 registered on February 3, 2004; U.S. Registration No. 2,833,874 registered on April 20, 2004; U.S. Registration No. 2,868,632 registered on August 3, 2004; U.S. Registration No. 3,204,061 registered on January 30, 2007; U.S. Registration No. 3,322,967 registered on October 30, 2007; U.S. Registration No. 3,483,381 registered on August 12, 2008 and U.S. Registration No. 3,998,293 registered on July 19, 2011. The Complainant also owns the domain name <tysonfoods.com> and operates a website in association with that domain name.
The disputed domain name <tysonfoodsemployment.com> was registered on August 25, 2011, and at the time the Complaint was filed, the disputed domain name reverted to a website that provided links to websites of third parties which were unrelated to the Complainant and the Complainant's business.
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainant owns many trademark registrations for the trademark TYSON in the U.S. (namely: US Registration Nos. 1,748,683; 2,810,231; 2,833,874; 2,868,632; 3,204,061; 3,322,967; 3,483,381; 3,998,293), which dates back to as early as January 26, 1993. The Respondent has registered the disputed domain name <tysonfoodsemployment.com> which is identical to the Complainant’s registered trademark, except for the addition of the common words "foods" and "empolyment" and the “.com” designation. The Complainant contends that the addition of common descriptive words does not serve to distinguish the disputed domain name from the registered trademark. In fact, the addition of the descriptive words "foods" and "employment" increases the confusion amongst Internet users seeking the Complainant's website because the words have an obvious relationship to the Complainant's business of offering food products. Furthermore the addition of a URL designation does not distinguish the disputed domain name from the Complainant’s trademark.
Rights or Legitimate Interests
The Respondent is not publicly known by the Tyson name, and the Complainant submits that the Respondent cannot have any rights or legitimate interests in the disputed domain name, because the Complainant has exclusive rights to the TYSON trademark and the business name “Tyson Foods” in the U.S. The Respondent has no past or current business relationship with the Complainant, and the Respondent was never licensed or otherwise authorized to use the Complainant’s trademark. Further, the Respondent is not making a bona fide use of the disputed domain name, and has used the disputed domain name in connection with a website which diverts unsuspecting Internet users seeking employment with the Complainant to other third party websites unrelated to the Complainant.
Registered and Used in Bad Faith
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith for the following reasons: (i) the Respondent must have known about the Complainant’s rights in the trademark TYSON when it registered a confusingly similar domain name; and (ii) the Respondent registered and is using a confusingly similar domain name for a website which diverts unsuspecting Internet users seeking information and employment with the Complainant to other third party websites which are unrelated to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Preliminary Issue – Registrar’s Lack of Response
The Panel notes with concern that the Registrar, Bargin Register Inc., failed to respond to the Center’s five requests for registrar verification. The Panel further notes that in at least three recent UDRP cases, this Registrar also failed to respond to the Center’s requests for registrar verification. See Onduline v. Private Registration Do, WIPO Case No. D2011-1129; Petroleo Brasileiro S.A - PETROBRAS v. Private Registration, WIPO Case No. D2011-1250; and Petroleo Brasileiro S.A - Petrobras v. PrivacyProtect.org, WIPO Case No. D2011-1265.
The Panel agrees with the panel in Petroleo Brasileiro S.A - PETROBRAS v. Private Registration, supra that the absence of a reply from a registrar in a UDRP proceeding triggers serious difficulties in the administration of a case:
“A registrar’s failure to reply to a UDRP provider’s verification request can also complicate a Policy proceeding in a number of serious ways, including:
As noted by the Center in its three reminder communications to the Registrar, without affirmative confirmation from a registrar that the disputed domain name has been locked to prevent breach of paragraph 8(a) of the Policy there is the danger that an unscrupulous respondent might engage in cyber flight.
As noted by the Center and Complainant, the provider, parties, and panel cannot be sure of the language of the registration agreement and thus the presumed language of these proceedings.
The Center and Complainant cannot be certain that the registrant is bound by its registration agreement to submit to a legal proceeding in the courts in the jurisdiction in which the registrar is located. (Any ICANN-approved registrar is required to include such a provision; see section 220.127.116.11 of the ICANN Registrar Accreditation Agreement. A registrar’s contractual obligations to ICANN by themselves, however, do not bind a registrant to anything.)”
The Panel therefore suggests that the Center may wish to bring to the attention of the Internet Corporation for Assigned Names and Numbers (ICANN)) the Registrar Bargin Register Inc.’s conduct in this case, including any further unhelpful conduct that may arise regarding the implementation of this Decision, for any appropriate action and resolution that may be required.
Turning now to the disputed domain name and the Complaint at hand, the Panel is required to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems appropriate.
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant does have trademark rights in the mark TYSON by virtue of U.S. Trademark Registration Nos. 1,748,683; 2,810,231; 2,833,874; 2,868,632; 3,204,061; 3,322,967; 3,483,967; 3,998,293 dating back to January 26, 1993, and common law rights in the trademark TYSON FOODS.
The Panel further finds that the disputed domain name <tysonfoodsemployment.com> is identical to the Complainant’s registered trademark TYSON, except for the addition of the descriptive words "foods" and "employment”. The addition of such descriptive words does not serve to distinguish the disputed domain name from the Complainant’s trademark. The Panel notes that the first and dominant element of the disputed domain name is the Complainant’s trademark TYSON, and the Panel agrees with the Complainant’s contention that the addition of the descriptive words "foods" and "employment" actually increases the confusing similarity because the words are descriptive of the Complainant's products and business activities. Furthermore, the Complainant is operating and has operated its business under the name Tyson Foods since at least as early as 1993, and accordingly, the Complainant has developed common law rights in the name and mark TYSON FOODS. Accordingly, the addition of the word “foods” to the disputed domain name by the Respondent further increases the likelihood of a finding of confusing similarity.
Therefore in all these circumstances, the Panel is prepared to find that the disputed domain name is confusingly similar with the Complainant's registered trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel notes that the Respondent did not file any response to the Complaint and accordingly did not contest any of the facts stated in the Complaint. The Panel is therefore prepared to accept the Complainant’s contention that its TYSON trademark, the common law name and mark TYSON FOODS, and its food products and services have developed a reputation in the U.S. and internationally.
The Panel finds no evidence that the Respondent is commonly known by the name “Tyson” or “Tyson Foods”, or that the Respondent was licensed or authorized by the Complainant to use the trademark TYSON or TYSON FOODS, or has any other form of legitimate interest in the TYSON mark.
The Complainant has therefore satisfied the requirements under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel, upon review of the evidence filed in the Complaint, and taking into consideration that the Respondent did not file any response contesting the facts contained therein, finds that the Respondent registered and has used the disputed domain name in bad faith.
The Panel finds that the Respondent must have been aware of the Complainant’s trademark rights when the Respondent registered a confusingly similar domain name, and when it began operating a website in connection with that confusingly similar domain name which diverts Internet users seeking employment with the Complainant to other third party websites that are unrelated to the Complainant.
Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(iii) under the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <tysonfoodsemployment.com> be transferred to the Complainant.
Christopher J. Pibus
Dated: December 7, 2011