WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tyson Foods, Inc. v. Whois Privacy Protection Service, Inc. / ICS Inc.

Case No. D2013-0477

1. The Parties

The Complainant is Tyson Foods, Inc. of Springdale, Arkansas, United States of America (“United States”), represented by Winston & Strawn LLP, United States.

The Respondent is Whois Privacy Protection Service, Inc. of Bellevue, Washington, United States / ICS Inc. of Grand Cayman, Oversea Territory of United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrar

The disputed domain names <tysonfoodcareers.com> and <wwwtysonfood.com> are registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2013. On March 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, the Registrar 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 the Complainant on March 8, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 13, 2013.

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 the Respondent of the Complaint, and the proceedings commenced on March 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 8, 2013.

The Center appointed Fleur Hinton as the sole panelist in this matter on April 23, 2013. 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 one of the largest food production companies in the United States and the world. It is the second largest food production company in the Fortune 500, is a member of the Standard and Poor 500 and has approximately 115,000 employees in the United States and throughout the world. It has used the TYSON trade mark since 1958 and has operated its business as a publicly traded company under the name “Tyson Foods” since 1963. It has trade mark registrations for TYSON and TYSON FOODS, the earliest of which dates from 1982. The Complainant also has substantial goodwill and reputation in the name and trade marks TYSON and TYSON FOODS. The Complainant also operates a website at “www.tysonfoods.com” dating from May 25, 2000.

The disputed domain names <tysonfoodcareers.com> and <wwwtysonfoods.com> were created on November 25, 2012 and December 30, 2012 respectively.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. The fact that the Complainant has registered trade marks is sufficient to establish the Complainant’s rights under 4(a)(i) of the Policy. In Janus International Holding Co v. Scott Rademacher, WIPO Case No. D2002-0201, the panel found that a trade mark registration is prima facie evidence that the trade mark is valid and there is a (rebuttable) presumption that the trade mark is inherently distinctive. It is further argued that disputed domain names <tysonfoodcareers.com> and <wwwtysonfood.com> each incorporates the Complainant’s trade marks TYSON and TYSON FOODS. This, the Complainant contends, is typosquatting.

The panels of many WIPO UDRP cases have found that the use by a third party of a trade mark in conjunction with descriptive or non-distinctive material such as “food”, “careers” and generic Top-Level Domain (gTLD) suffixes such as “.com” does not suffice to distinguish the domain names from the trade mark. The Complainant refers to another case filed by it, Tyson Foods, Inc v. Bargin Registrar, Inc – Client Services, WIPO Case No. D2011-1622. In that case the Complainant argued that the disputed domain names which incorporated the Complainant’s TYSON trade mark with the addition of the descriptive words “foods” and “employment” actually increased the confusing similarity because both of the descriptive words had relevance to the Complainant’s business so that people would assume that those domain names referred to the business activities of the Complainant. This was also the finding in Tyson Foods, Inc v. PrivacyProtect.org / Timmy Smith / Ross Reynolds / Marcus Roland, WIPO Case No. D2011-0412 where the respondent’s use of “food”, “foods”, “inc” and “usa” was found by the panel to be confusingly similar to the trade mark TYSON. The Complainant referred to other cases including Oki Data Ams, Inc v. ASD, Inc., WIPO Case No. D2001-0903 in which the panel found that the fact that a domain name incorporates a complainant’s registered trade mark is sufficient to establish that a domain name is confusingly similar despite the addition of other words. The Complainant says that these decisions all support the conclusion that the disputed domain names are confusingly similar to the Complainant’s trade mark TYSON and TYSON FOODS.

The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It has not been authorized or licensed by the Complainant to use the trade mark as part of a domain name and it does not itself make any bona fide offering of goods or services by reference to those names. It is not known by them. People who visit the websites at the disputed domain names are taken to other websites which have no connection with the Complainant. Furthermore, the fact that the WhoIs database states only that the Respondent is “Whois Privacy Protection Service Inc” is further evidence that the Respondent is not known by the disputed domain names and therefore lacks rights or legitimate interests in the disputed domain names. In SnagAJob.com, Inc. v. Private Registration – bmon, NAF Claim No. FA1354120 it was found that where the WhoIs database fails to show that the respondent is known by the domain name(s), and where there is no other information to suggest that, the respondent lacks rights and legitimate interests in the domain name(s). Also, the use of a domain name to take webrowsers to websites offering goods and services other than the complainant’s is not a bona fide commercial use of the domain name. Neither is it a legitimate noncommercial use or a fair use. Under all these circumstances the Complainant submits that the Respondent lacks rights or legitimate interests in the disputed domain names within the meaning of 4(a)(ii) of the Policy.

Further, the Respondent is using the disputed domain names to attract people who are either searching for the Complainant’s website for information or who, perhaps, are looking for career opportunities offered by the Complainant. The Respondent is luring web browsers to its website whence they will be taken to other websites not connected with the Complainant. The Respondent’s goal is to attract income from these other websites by “pay-per-click” advertising. This use demonstrates that the Respondent has registered and is using the disputed domain names in bad faith in breach of 4(b)(iv) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy requires that the Panel make its finding on the basis of the following:

(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant owns the trade mark TYSON and its earliest registration dates from 1982. The disputed domain names both use TYSON in conjunction with words which are generic, i.e., “foods” and “careers” and, therefore, not sufficient to distinguish between the TYSON trade mark and the disputed domain names. The Panel agrees with earlier decisions that, in a case where the generic terms used by a respondent are appropriate for use in relation to the complainant’s offering of goods or services, confusion is more likely to occur. In the present case the Panel finds that the disputed domain names are confusingly similar to the disputed domain names.

B. Rights or Legitimate Interests

The Respondent has not lodged a response in this matter. The Respondent has not been authorized or licensed by the Respondent to use the Complainant’s trade mark. Neither does it have any independent offering of goods or services under that name itself and there is no indication that there are any business activities of the Respondent known by the name “Tyson.” Therefore, the Complainant need only to establish a prima facie case that the Respondent has neither rights nor legitimate interests in the disputed domain names. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), paragraph 2.1.

The Complainant has referred to SnagAJob.com, Inc. v. Private Registration – bmon, NAF Claim No. FA1354120. Although not a WIPO UDRP decision, the criteria for determining the result are virtually identical. In that case the panel found that, where a WhoIs database failed to show that a respondent was commonly known by the domain name, and where there was no other information to contradict it, the respondent lacks rights and legitimate interests.

In the present circumstances, the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests to the disputed domain names, and the Respondent has not lodged a response providing details of inter alia, its rights or legitimate interests to rebut such case. The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain names.

C Registered and Used in Bad Faith

The Complainant has established that the disputed domain names are confusingly similar to the Complainant’s trade mark and that the Respondent has no rights or legitimate interests in the disputed domain names. In addition, the Respondent has declined to take part in these proceedings.

The Respondent has registered and uses the disputed domain names which incorporate the Complainant’s trade mark in order to attract potential visitors searching the Complainant’s website or career opportunities offered by the Complainant to its own websites that contains the pay-per-click links appear. In this Panel’s opinion, the most likely reason for this is commercial gain.

The Respondent has no authority to use the Complainant’s trade mark for the purpose of registering domain names. In the absence of any evidence to the contrary, the Panel finds that the Respondent must have had the Complainant or its trade marks in mind when registering the disputed domain names to attract Internet users to the websites by reference to the Complainant’s trade mark, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website. Under these circumstances the Panel finds that the disputed domain names were registered and are used in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <tysonfoodcareers.com> and <wwwtysonfood.com> be transferred to the Complainant.

Fleur Hinton
Sole Panelist
Date: May 14, 2013