WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tyson Foods, Inc. v. Domain Admin, Whois Privacy Corp.
Case No. D2017-1760
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 Domain Admin, Whois Privacy Corp. of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name, <tysonfoodsinvitational.com>, is registered with Internet Domain Service BS Corp (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 13, 2017. On September 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 18, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2017. The Center received an email communication from a third party on October 4, 2017. The Respondent did not submit a Response.
The Center appointed David Stone as the sole panelist in this matter on November 13, 2017. 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 throughout the world. It owns multiple registered trade marks in the United States, including
- TYSON, registration number 1748683, registered on January 26, 1993, in classes 29 and 30;
- TYSON, registration number 2810231, registered on February 3, 2004, in class 29;
- TYSON, registration number 2833874, registered on April 20, 2004, in class 29;
- TYSON, registration number 2868632, registered on August 3, 2004, in class 29;
- TYSON, registration number 3204061, registered on January 30, 2007, in classes 29 and 30; and
- TYSON, registration number 3998293, registered on July 19, 2011, in class 30.
The Complainant has used the TYSON trade mark since as early as 1958 and has operated as a publically traded company under the name Tyson Foods since 1963. It operates the website "www.tysonfoods.com", where it offers general information on its various food products and which prominently features the TYSON trade mark. Furthermore, the Complainant has been involved with the Tyson Foods Invitational, a track-and-field event organised by the National Collegiate Athletic Association.
The disputed domain name was registered on June 14, 2017.
5. Parties' Contentions
The Complainant contends that the disputed domain name is confusingly similar to its TYSON trade mark. The disputed domain name incorporates the TYSON trademark in its entirety and differs from TYSON only in the addition of the descriptive terms "food" and "invitational" and the generic Top-Level Domain ".com", which does not serve to distinguish the disputed domain name from the trade mark.
The Complainant contends that the Respondent lacks rights or legitimate interests in the disputed domain name and that the Respondent registered and is using the disputed domain name in bad faith. The Respondent has not been permitted in any way by the Complainant to register or use the disputed domain name and, as it is identified only as Domain Admin, Whois Privacy Corp., is not commonly known by the disputed domain name. The website to which the disputed domain name resolves contains content, such as links to unaffiliated third-party websites and product advertising, that is unrelated to the Complainant's business. The disputed domain name must therefore have been registered so as to divert to this third-party content Internet users seeking information about the Complainant for commercial gain. If the Respondent had conducted even a preliminary trade mark search before registering the disputed domain name it would have found the Complainant's TYSON trade mark, the associated website and a range of other evidence of the use of TYSON in connection with the Complainant's goods and services.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets out the three requirements that the Complainant must prove in order to succeed:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
To be confusingly similar to a trade mark it is enough that a domain name include the trade mark in its entirety, notwithstanding the inclusion of other words. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. This has been reiterated, a fortiori, by the panel in a similar case involving the Complainant's TYSON trade mark where one of the domain names in dispute included the additional word "foods". See Tyson Foods, Inc. v. PrivacyProtect.org / Timmy Smith / Ross Reynolds / Marcus Roland, WIPO Case No. D2011-0412. The Panel therefore finds that the Complainant has satisfied the condition in paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the criteria that determine whether a domain name registrant has rights or legitimate interests in a domain name:
(i) before any notice to the Respondent of the dispute, the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) as an individual, business or other organisation, the Respondent has been commonly known by the disputed domain name even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent has been making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent is using the Complainant's TYSON trade mark and Tyson Foods trade name without permission to advertise websites, products and services unrelated to the Complainant's business. Furthermore, the Respondent is not commonly known by the disputed domain name.
This constitutes a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, on the ground that unauthorised use of the Complainant's trade mark and reputation to advertise for the benefit of third parties is not a bona fide, noncommercial or fair use of the disputed domain name. See F. Hoffmann-La Roche AG v. Samir Kumar, WIPO Case No. D2008-0808. The burden of demonstrating its rights therefore shifts to the Respondent, but it has made no attempt to rebut the Complainant's contentions. The Panel therefore finds that the Complainant has satisfied the condition in paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the non-exhaustive criteria for bad faith. Generally, for the purposes of the Policy, bad faith constitutes the intention to register and use a domain name in order to:
(i) sell, rent or transfer the domain name to the trade mark owner (or a competitor thereof) for a profit;
(ii) prevent the trade mark owner from registering its trade mark in a domain name;
(iii) disrupt the business of a competitor; or
(iv) divert Internet traffic for commercial gain.
For the reasons set out in Section 6.B, the Panel is satisfied that the Respondent's registration and use of the disputed domain name is designed to divert Internet users seeking information on the Complainant to a website featuring entirely unrelated advertising content, so as to generate revenue for the Respondent. The Panel therefore concludes that disputed domain name was registered and is being used in bad faith and that the Complainant has satisfied the condition in paragraph 4(a)(iii) of 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 disputed domain name, <tysonfoodsinvitational.com>, be transferred to the Complainant.
Date: November 23, 2017