WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tyson Foods, Inc. v. Jeff Bourns, Thewesellrestaurants
Case No. D2021-1418
1. The Parties
The Complainant is Tyson Foods, Inc., United States of America (“United States”), represented by Loeb & Loeb, LLP, United States.
The Respondent is Jeff Bourns, Thewesellrestaurants, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <tysonfoodsincs.com> (“Disputed Domain Name”) is registered with Hosting Concepts B.V. d/b/a Registrar.eu. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2021. On May 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 8, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 11, 2021, 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 May 13, 2021.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 8, 2021.
The Center appointed Nicholas Weston as the sole panelist in this matter on June 14, 2021. 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 operates a New York Stock Exchange-listed meat business with over 139,000 employees and sales exceeding USD 43 billion in 2020. The Complainant holds a portfolio of registrations for the trademark TYSON, and variations of it, in numerous geographies including the United States. United States Trademark Registration No. 1748683, for example, was registered on January 26, 1993.
The Complainant owns a number of domain names including <tyson.com> and <tysonfoods.com>.
The Disputed Domain Name was registered on April 17, 2021. The Disputed Domain Name resolves to an inactive parking page.
5. Parties’ Contentions
The Complainant cites its United States trademark registrations including No. 1205623 registered on August 17, 1982, and numerous other registrations in the United States, for the mark TYSON as prima facie evidence of ownership.
The Complainant submits that the mark TYSON is well known in class 29 for various species of frozen meat, and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name. It also claims common law rights in the name TYSON FOODS. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the TYSON trademark and that the similarity is not removed by the addition of the word “foods”, or the addition of the abbreviation “incs”, or the addition of the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it resolves to an inactive parking page, and contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules and submits that the “Respondents’ knowledge of the Complainant and its rights is inferred from the fact that the Complainant and its TYSON® Marks are famous and the fact that the Respondents used the Complainant’s name and TYSON® Marks in the Domain Name” and that “even if the Respondents were to argue that they were somehow unaware of the Complainant and its rights in the TYSON® Marks, had the Respondents conducted even a cursory search, they would have found the Complainant’s various trademark registrations in the TYSON® Marks, websites associated with the TYSON® Marks, and numerous additional references in commerce, on the Internet, and in publications, evidencing the Complainant’s existence and use of its marks in connection with the Complainant’s goods and services.”
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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 Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark TYSON in the United States. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the TYSON trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark TYSON; (b) followed by the word “foods”; (c) followed by the abbreviation “incs”; (d) followed by the gTLD “.com”.
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains, WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “tysonfoodsincs”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a word or, in this case, the word “foods” being the sector the Complainant operates in together with a plural version of the abbreviation “inc”, namely “incs”: (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033; McCain Foods Limited v. Telmex Management Services, WIPO Case No. D2001-1444 (“use of the combined words McCAIN and FOODS only serves to increase the confusing similarity of the Domain Name with Complainant’s McCAIN Marks”); Arkema France v. Whois Privacy Protection Service, Inc. / Amanda Bishop, WIPO Case No. D2012-2034 (“The effect of the addition of “incs”, short for incorporated, suggest that the Domain Name is a site connected the Complainant’s business”)).
This Panel accepts the Complainant’s contention that the Disputed Domain Name is confusingly similar to the Complainant’s TYSON trademarks.
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because (i) the Disputed Domain Name is parked and; (ii) Respondent has not acquired or owned any trademark or service mark rights in the names “Tyson” or “Tyson Foods”, and has not been commonly known by the names “Tyson” or “Tyson Foods”; and (iii) Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s Marks.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating the Complainant’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra. There is also no evidence the Respondent has the Complainant’s permission to use the trademark TYSON (see Guerlain S.A. v. PeiKang, WIPO Case No. D2000-0055 (“in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent”) and no evidence indicating that the Respondent is commonly known by the Disputed Domain Name (See: Veuve Clicquot Ponsardin Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (“so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”)).
Further, the composition of the Disputed Domain Name where, as here, it consists of the Complainant’s trademark and a word connoting the business sector in which the Complainant trades, in this Panel’s view carries “a high risk of implied affiliation” that other UDRP panels have not considered fair use as it “effectively impersonates or suggests sponsorship or endorsement by the trademark owner” (see WIPO Overview 3.0, section 2.5.1).
This Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and notes that the Disputed Domain Name resolves only to a dormant parking page. In the absence of a response, this Panel accepts the Complainant’s submission that “the mark is not one that the Respondent could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant”.
The Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy requires that the Complainant must also demonstrate that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The examples of bad faith registration and use in Policy, paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found. The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. (See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230).
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.
On the issue of registration, given the composition of the Disputed Domain Name consists of the Complainant’s name and trademark, this Panel infers that this is clear evidence of bad faith and that the Respondent was fully aware of the Complainant when registering the Disputed Domain Name (see Tyson Foods, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Tyson Food, Tyson Food USA, WIPO Case No. D2020-1192 (“the TYSON Marks were well known”); Tyson Foods, Inc. v. Domain Administrator, PrivacyGuardian / Telesphore TETA, WIPO Case No. D2020-1227 (“The Panel finds it hard to see any other explanation tha[n] Respondent knew Complainant’s well-known trademarks”).
In addition, a gap of more than ten years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Name (containing the trademark) can in certain circumstances be an indicator of bad faith. (See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007‑1415). In this case, the Complainant’s rights in its trademark predate any rights that could possibly flow from the Respondent’s registration by nearly 40 years.
On the issue of use, the Complainant’s evidence is that the Disputed Domain Name does not currently resolve to an active website. Previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the ‘passive holding’ doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put” (See WIPO Overview 3.0, section 3.3). This Panel notes that the evidence is that all four of these factors are present in this proceeding.
In the absence of any evidence to the contrary, this Panel accepts the Complainant’s evidence and finds that the Respondent has taken the Complainant’s trademark TYSON and incorporated it in the Disputed Domain Name along with the word “foods” which describes the Complainant’s goods, and the abbreviation for the word “incorporated” (i.e., “incs”), without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark to infringe upon the Complainant’s rights. Further, this Panel finds that the Complainant used a privacy service to hide a false address in an attempt to avoid being held to account for its conduct.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 <tysonfoodsincs.com> be transferred to the Complainant.
Date: June 24, 2021