WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tyson Foods, Inc. v. Name Redacted
Case No. D2021-4201
1. The Parties
The Complainant is Tyson Foods, Inc., United States of America (“United States”), represented by Reed Smith LLP, United States.
The Respondent is Name Redacted.1
2. The Domain Name and Registrar
The disputed domain name <tysonfoodslncorps.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2021. On December 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 2021, 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 December 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 19, 2022. On January 5, 7, and 17, 2022, the Center received email communications from third parties claiming unauthorized use of their identities and/or contact details in relation to the disputed domain name. The Center proceeded to Panel appointment on February 8, 2022.
The Center appointed William R. Towns as the sole panelist in this matter on March 1, 2022. 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 multinational corporation founded in the year 1935 and based in Springdale, Arkansas, United States. The Complainant packs, processes, and markets chicken, beef, and pork, exports a major portion of its products outside the United States, and has traded under the TYSON name and mark since as early as January 1980. The Complainant has obtained numerous trademark registrations for its TYSON mark issued by the United State Patent & Trademark Office (“USPTO”), including among the following:
-TYSON (word plus design), U.S. Reg. No. 1,205,623, registered August 17, 1982;
-TYSON (word plus design), U.S. Reg. No. 5,776,218, registered June 11, 2019;
-T TYSON (word plus design), U.S. Reg. No. 5,978,684, registered February 4, 2020;
-TYSON, U.S. Reg. No. 1,748,683, registered January 26, 1993;
-TYSON, U.S. Reg. No. 2,810,231, registered February 3, 2004;
-TYSON, U.S. Reg. No. 2,833,874, registered April 20, 2004;
-TYSON, U.S. Reg. No. 2,868,632, registered August 3, 2004;
-TYSON, U.S. Reg. No. 3,204,061, registered January 30, 2007;
-TYSON, U.S. Reg. No. 3,998,293, registered July 19, 2011;
-TYSON NATURALS, U.S. Reg. No. 5,205,724, registered May 16, 2017;
-TYSON TRUE, U.S. Reg. No. 3,832,457, registered August 10, 2010; and
-TYSON TASTEMAKERS, U.S. Reg. No. 5,277,919, registered August 29, 2017.
The disputed domain name was registered by the Respondent on October 18, 2021, according to the Registrar’s WhoIs records. The disputed domain presently does not resolve to any active website. The Complainant registered and uses the domain name <tysonfoods.com> to provide information about the Complainant, its brands, products, and services on its website at “www.tysonsfoods.com”.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s TYSON marks (hereinafter referred to collectively as the “TYSON mark”), which the Complainant observes have been in use since as early as 1958, and well before the Respondent registered the disputed domain name. The Complainant describes itself as one of the largest food production companies worldwide, generating over USD 43 billion in sales in the year 2020, and employing more than 139,000 employees. The Complainant explains that its extensive marketing has developed significant good will in the TYSON mark, and consequently has acquired significant goodwill both in the United States and internationally.
The Complainant remarks it has established a strong Internet presence and is the holder of numerous domain names reflecting the TYSON mark. The Complainant emphasizes it has brought numerous UDRP proceedings against wrongful registrants of domain names misappropriating the Complainant’s TYSON mark.2
The Complainant submits that the disputed domain name is identical and confusingly similar to the Complainant’s TYSON mark. The Complainant observes that the disputed domain name incorporates the TYSON mark and is of sufficient magnitude to establish confusing similarity. According to the Complainant, the Respondent’s addition of “lncorps” in the disputed domain name is a purposeful misspelling of “inc”, which when combined with the abbreviation “corps” increases the likelihood of confusion. The Complainant adds that the generic Top-Level Domain (“gTLD”) “.com” is a standard registration requirement and typically disregarded when applying the confusing similarity test.
The Complainant asserts that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent is not related to, affiliated with, or otherwise connected in any way with the Complainant, and has neither been licensed or authorized by the Respondent to use the Complainant’s TYSON mark or register domain names incorporating the Complainant’s mark. The Complainant insists that no actual or contemplated bona fide use of the disputed domain name can be claimed by the Respondent, submitting that the Respondent has not made any legitimate noncommercial or other fair use of the disputed domain name within the contemplation of paragraphs 4(c)(i) or 4(c)(iii) of the Policy.
The Complainant concludes that the Respondent registered and is using the disputed domain name in bad faith. The Complainant emphasizes that the Respondent’s registration of a domain name confusingly similar to a famous trademark in and of itself may give rise to a presumption of bad faith. The Complainant reiterates that UDRP panels have recognized the fame of the Complainant’s TYSON mark, citing among other decisions Tyson Foods, Inc. v. Bargin Register, Inc. - Client Services, WIPO Case No. D2011-1622.
The Complainant submits that the Respondent registered the disputed domain name with full knowledge of the Complainant’s well-known and famous TYSON mark. According to the Complainant, the Respondent’s passive holding of the disputed domain name does not prevent a finding of bad faith when taking into account the distinctiveness or reputation of the Complainant’s mark and the implausibility of any good faith use to which the disputed domain name might be put by the Respondent.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s TYSON mark, in which the Complainant has established rights through registration and long and extensive use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.3 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
In this instance, the Complainant’s TYSON mark is clearly recognizable in the disputed domain name.4 The inclusion in the disputed domain name of recognizable words such as “foods”, “In”, and “corps” does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark. See, e.g. Instagram, LLC v. Temp name Temp Last Name, Temp Organization, WIPO Case No. D2019-0109. See also Instagram, LLC v. A S, WIPO Case No. D2020-1327. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy. 5
Furthermore, gTLDs, in this instance “.com”, generally will be disregarded when evaluating the identity or confusing similarity of the Complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.6
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to register or use the Complainant’s TYSON mark. The Respondent nevertheless has registered the disputed domain name appropriating the Complainant’s well-known TYSON mark in its entirety. As previously noted, the disputed domain name does not resolve to any active website and by all appearances has been passively held by the Respondent.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a 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.
The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
The Panel further concludes from the record that the Respondent was aware of and in all likelihood had the Complainant’s TYSON mark firmly in mind when registering the disputed domain name. The Respondent as previously noted has passively held the disputed domain name and has brought forth no credible evidence of use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. See WIPO Overview 3.0, section 2.2 and cases cited therein.
Nor has the Respondent brought forth any claim to be making a legitimate noncommercial or fair use of the disputed domain name. A respondent’s use of a domain name cannot be considered “fair” if it falsely suggests affiliation with the trademark owner, and UDRP panels generally have found that a domain name appropriating a complainant’s trademark plus an additional term carries a risk of implied affiliation if it effectively suggests sponsorship or endorsement by the trademark owner. See WIPO Overview 3.0, sections 2.5 and 2.5.1. The use of a domain name cannot be “fair” if it suggests a non-existent affiliation with the trademark owner; nor can such use ever be “fair” if it is pretextual. See 201 Folsom Option JV, L.P. and 201 Folsom Acquisition, L.P. v. John Kirkpatrick, WIPO Case No. D2014-1359; Project Management Institute v. CMN.com, WIPO Case No. D2013-2035.
In view of the foregoing, the Panel concludes that the Respondent has neither used nor demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and is not making a legitimate noncommercial or fair use of the disputed domain name. There is no indication in the record that the Respondent at any time has been commonly known by the disputed domain within the meaning of paragraph 4(c)(ii) of the Policy.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel concludes that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent was aware of the Complainant and had the Complainant’s well-known TYSON mark in mind when registering the disputed domain name. The Panel further considers that the Respondent more likely than not registered the disputed domain name with the intention to exploit or profit from the Complainant’s trademark rights.
The Respondent’s presumptive passive holding of the disputed domain name does not preclude a finding of bad faith in the attendant circumstances of this case. As set forth in Telstra Corporation Limited v. Nuclear Marshmallows, supra, “the relevant issue is not whether the Respondent is taking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. […] [I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”. See also Red Bull GmbH v. Kevin Franke, WIPO Case No. D2012-1531. The Panel finds such circumstances to be present in this case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 name <tysonfoodslncorps.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: March 15, 2022
1 The Respondent appears to have used the names and/or contact details of third parties when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST 12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.
2 See, e.g., Tyson Foods, Inc. v. Mukasa Richad Lubanga, WIPO Case No. D2020-2614; Tyson Foods, Inc. v. Super Privacy Service LTD c/o Dynadot / Zhichao, WIPO Case No. D2020-0883; Tyson Foods, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Tyson Food, Tyson Food USA, WIPO Case No. D2020-1192; Tyson Foods, Inc. v. Privacydotlink Customer 3479421 / Nathan Cole, WIPO Case No. D2018-0073; Tyson Foods, Inc. v. Bargin Register, Inc. - Client Services, WIPO Case No. D2011-1622; Tyson Foods, Inc. v. Whois Privacy Protection Service, Inc. / ICS Inc., WIPO Case No. D2013-0477; Tyson Foods, Inc. v. Desheng Zhao, WIPO Case No. D2014-1382; Tyson Foods, Inc. v. Domain Administrator, Dvlpmnt Marketing, Inc. WIPO Case No. D2017-0319; Tyson Foods, Inc. v. Domain Administrator, See PrivacyGuardian.org / Site Matrix LLC, Domain Administrator, WIPO Case No. D2018-2050.
3 See WIPO Overview 3.0, section 1.7.
4 See WIPO Overview 3.0, section 1.8 and cases cited therein.
5 See WIPO Overview 3.0, section 1.8 and cases cited therein.
6 >See WIPO Overview 3.0, section 1.11.