WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tyson Foods, Inc. v. PrivacyProtect.org / Timmy Smith / Ross Reynolds / Marcus Roland
Case No. D2011-0412
1. The Parties
Complainant is Tyson Foods, Inc. of Springdale, Arkansas, United States of America, represented by Winston & Strawn LLP, United States of America.
Respondent is PrivacyProtect.org of Munsbach, Luxembourg; Timmy Smith of Orlando, Florida, United States of America; Ross Reynolds of Chicago, Illinois, United States of America; and Marcus Roland of New York, New York, United States of America (collectively “Respondents”).
2. The Domain Names and Registrar
The disputed domain names <tyson-food.com>; <tysonfoods-inc.com>; and <tysonfoods-usa.com> (collectively the “Disputed Domain Names”) are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2011. On March 3, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain names. On March 4, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 7, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint March 12, 2011.
The Center verified that the Complaint together with the amended 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 Respondents of the Complaint, and the proceedings commenced on March 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 4, 2011. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on April 6, 2011.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on April 19, 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
Complainant Tysons Food, Inc. is one of the world’s largest processors and marketers of chicken, beef and pork, the second-largest food production company in the Fortune 500 and a member of the S&P 500. Complainant has over 117,000 employees at over 400 facilities and offices around the world.
Complainant is the owner of current United States Trademark Registrations for the mark TYSON for various food products, including Registration No. 1,748,683 (issued January 26, 1993); Registration No. 2,810,231 (issued February 3, 2004); Registration No. 2,833,874 (issued April 20, 2004); Registration No. 2,868,632 (issued August 3, 2004); Registration No. 3,20,4061 (issued January 30, 2007); Registration No. 3,322,967 (issued October 30, 2007); and Registration No. 3,483,381 (issued August 12, 2008). Complainant is also the registrant of domain name <tysonfoods.com>, which Complainant uses to host a website directed to consumer information and interactions.
Disputed Domain Names <tysonfoods-inc.com> and <tysonfoods-usa.com> were registered on December 17, 2010 and the Disputed Domain Name <tyson-food.com> was registered on February 18, 2011. Respondents have used the Disputed Domain Names to link to active web sites offering links to other websites unrelated to Complainant’s, and have even linked to Complainant’s website, in an apparent attempt to confuse consumers.
Respondents have used email addresses associated with the Disputed Domain Names as part of a scheme to gather credit report information from applicants seeking employment with “Tyson Foods,” posing as representatives of Complainant and diverting these recruits to Respondents’ email addresses and websites. In this way, Respondents have used the Disputed Domain Names for their own apparent financial gain.
Respondents have no license from, or other affiliation with, Complainant.
5. Parties’ Contentions
Complainant contends that (i) the Disputed Domain Names are identical or confusingly similar to Complainant’s trademarks; (ii) Respondents have no rights or legitimate interests in the Disputed Domain Names; and (iii) Respondents registered and are using the Disputed Domain Names in bad faith.
Respondents did not reply to Complainant’s contentions in this proceeding.
6. Discussion and Findings
As a preliminary matter, the Panel notes that there are three named Respondents in this case, as well as the name of the privacy shield under which the Disputed Domain Names were originally registered. Paragraph 3(c) of the Rules specifically provides that a complaint may relate to more than one domain name, provided that they are registered by the same domain name holder. Situations may occasionally arise in which multiple respondents may be considered as one domain name holder for the purpose of this provision. In the Panel’s view, such a situation arises here.
In this case, the circumstances indicate that Respondents are likely to be related in their actions. Two of the Disputed Domain Names were registered on the same date, and all three are registered with the same registrar. The three Disputed Domain Names resolve to virtually identical web pages. Furthermore, they have all been used in the same manner, to solicit credit reports from applicants seeking employment with Complainant. The Panel therefore finds the Respondents to be more likely than not under common control for purposes of treatment together under paragraph 3(c) of the Rules.
A. Identical or Confusingly Similar
This Panel must first determine whether the Disputed Domain Names are “identical or confusingly similar to a trademark or service mark in which the Complainant has rights” in accordance with paragraph (4)(a)(i) of the Policy. The Panel finds that each of the Disputed Domain Names meets that standard. Each of the domain names incorporates in full some iteration of Complainant’s registered trademark TYSON.
The Panel finds that the added word “food” or “foods” in the Disputed Domain Names would be perceived by Internet users as descriptive of a website where they could find information about the main product sold by Complainant, i.e., food. One of the Disputed Domain Names includes an additional term “-inc.” which the Panel finds to be descriptive of the type of business run by Complainant. The third domain name contains the term “-usa” which the Panel finds to be descriptive of the main location of most of the customers and of Complainant itself. None of these additions to Complainant’s TYSON mark make it less confusingly similar.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph (4)(a)(i) of the Policy. See, for example, Microsoft Corporation v. Step-Web, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620 (transferring <walmartbenfits.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>). Indeed, as stated previously, Complainant itself offers consumers food products and services via the website associated with its own domain name <tysonfoods.com>.
This Panel therefore finds that the Disputed Domain Names are confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain names at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
Respondents did not formally reply to the Complaint, however, and no evidence has been presented to this Panel that might support a claim of Respondents’ rights or legitimate interests in the Disputed Domain Names. Rather, as mentioned in Section 4 of this Panel’s decision, Respondents have apparently used email addresses associated with the Disputed Domain Names to divert Internet users for fraudulent purposes, for Respondents’ financial gain.
Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondents’ lack of rights or legitimate interests in the Disputed Domain Names in accordance with paragraph 4(a)(ii) of the Policy, which Respondents have not rebutted.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that domain names were registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where
“by using the domain name [Respondents] have intentionally attempted to attract, for commercial gain, Internet users to [Respondents’] web site or other on-line location, by creating a likelihood of confusion with [Complainant’s] mark as to the source, sponsorship, affiliation, or endorsement of [Respondents’] web site or location or of a product or service on [the] web site or location.”
As noted in Section 4 of this decision, Respondents have used email addresses associated with the Disputed Domain Names to lure those Internet users who have been identified as “Applicants” of Complainant. Specifically, Respondents have perpetuated a scheme to divert potential employees and consumers of Complainant’s by posing as representatives of Complainant, and gathering credit report information from Internet users seeking Complainant’s goods or services. In this way, Respondents have used the Disputed Domain Names for their own apparent financial gain.
Complainant is a large company, and has been using its TYSON marks for many years, including in the United States where the individual Respondents’ addresses are all listed. It would be difficult, this Panel finds, for Respondents to demonstrate that they were not aware of Complainant’s marks at the time they registered the Disputed Domain Names, nor did Respondents offer any evidence to that effect. Instead, it is apparent from their activities that Respondents intended to trade on the good will of Complainant’s marks.
Therefore, this Panel finds that Respondents registered and used the Disputed Domain Names in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
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 names <tyson-food.com>; <tysonfoods-inc.com>; and <tysonfoods-usa.com> be transferred to Complainant.
Dated: April 29, 2011