Sysco Corporation v. Domain Administrator Fundacion Privacy Services LTD
Claim Number: FA1909001864669
Complainant is Sysco Corporation (“Complainant”), represented by Nathan C Belzer of Belzer PC, Georgia, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue are <myworksysco.com>, <syscofoods.com>, and <syscojobs.com>, registered with Media Elite Holdings Limited.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 30, 2019; the Forum received payment on September 30, 2019.
On October 4, 2019, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <myworksysco.com>, <syscofoods.com>, and <syscojobs.com> domain names are registered with Media Elite Holdings Limited and that Respondent is the current registrant of the names. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 8, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@myworksysco.com, postmaster@syscofoods.com, postmaster@syscojobs.com. Also on October 8, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 31, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant provides food and food-related goods as well as related distribution services to the foodservice industry. Complainant has rights in the SYSCO mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 961,889 registered July 26, 1973). See Compl. Annex 3. Respondent’s <myworksysco.com>, <syscofoods.com>, and <syscojobs.com> domain names are confusingly similar to Complainant’s SYSCO mark. Respondent’s uses Complainant’s mark in its entirety and adds the generic terms “my,” “work,” “foods,” or “jobs” in addition to the “.com” generic top-level domain (“gTLD”).
ii) Respondent has no rights or legitimate interest in the disputed domain names as Respondent is not commonly known by the disputed domain names. Respondent also failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain names resolve to at least one website that displays sponsored or pay-per-click links. The <myworksysco.com> and <syscojobs.com> domain names redirect through a series of other websites using a fast flux DNS technique that attempt to distribute malware. Furthermore, Respondent offers the <syscofoods.com> domain name for sale for $500.00.
iii) Respondent registered and used the disputed domain names in bad faith as Respondent attempts to sell the <syscofoods.com> domain name. Respondent’s registration of three domain names that all incorporate the SYSCO mark demonstrates a pattern of bad faith. Respondent is also using the disputed domain names to create a likelihood of confusion, for commercial gain, with Complainant’s SYSCO mark. Respondent also uses the disputed domain names to distribute adware and other malicious software. Lastly, Respondent had actual knowledge of Complainant’s SYSCO mark prior to registration of the disputed domain names due to the mark being highly recognized among consumers and the general public.
B. Respondent
Respondent did not submit a response to this proceeding.
1. The <myworksysco.com> domain name was registered on August 5, 2013, the <syscofoods.com> domain name on November 13, 2001, and the <syscojobs.com> domain name on January 24, 2005.
2. Complainant has rights in the SYSCO mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 961,889 registered July 26, 1973).
3. The disputed domain names' resolving web pages show pay-per-links to services related and unrelated to Complainant’s business.
4. Respondent uses the <myworksysco.com> and <syscojobs.com> domain names to redirect through a series of other websites using a fast flux DNS technique.
5. A screenshot shows Respondent attempting to sell the <syscofoods.com> domain name for $500.00.
6. Respondent is also using the disputed domain names to feature unrelated hyperlinks.
7. The disputed domain names’ resolving web pages show the webpage asking Internet users to download software.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims to have rights in the SYSCO mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with information pertaining to its USPTO registration for the SYSCO mark (e.g. Reg. No. 961,889 registered July 26, 1973). See Compl. Annex 3. Therefore, the Panel finds that Complainant has adequately shown rights in the SYSCO mark per Policy ¶ 4(a)(i).
Complainant argues that the disputed domain names are confusingly similar to Complainant’s SYSCO mark. Registration of a domain name that includes a mark in its entirety with the addition of generic terms and a gTLD does not distinguish a domain name from the mark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Here, Complainant argues that Respondent uses Complainant’s mark in its entirety and adds the generic terms “my,” “work,” “foods,” or “jobs” in addition to the “.com” gTLD. The Panel therefore finds that Respondent’s disputed domain names are confusingly similar to Complainant’s SYSCO mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues Respondent lacks rights or legitimate interest in the disputed domain names as Respondent is not commonly known by the disputed domain names nor has Respondent been given license or consent to use the SYSCO mark or register domain names using Complainant’s mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Domain Administrator / Fundacion Privacy Services LTD” and there is no other evidence to suggest that Respondent was authorized to use the SYSCO mark or was commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain names resolve to at least one website that displays sponsored or pay-per-click links. Use of a disputed domain name to resolve to a webpage that offers pay-per-clicks links is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant has provided screenshots of Respondent’s domain name’s resolving web pages that show pay-per-links to services related and unrelated to Complainant’s business. See Compl. Annexes 4-6. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant additionally argues that Respondent uses the <myworksysco.com> and <syscojobs.com> domain names to redirect through a series of other websites using a fast flux DNS technique. Use of a disputed domain name rotate through a series of web pages does not demonstrate rights or legitimate interests in a domain name per Policy ¶¶ 4(c)(i) or (iii). See MoneyGram International, Inc. v. Domain Admin / Whois Privacy Corp., FA1698585 (Forum Nov. 28, 2016) (“Where a domain name redirects Internet users to a rotating series of web pages, such use does not demonstrate rights or legitimate interests within the meaning of the Policy.”). Complainant argues that the disputed domain names redirect through a series of websites using a fast flux DNS technique and provides screenshots of the different web pages that purportedly attempt to install malware. See Compl. Annexes 4 and 5. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain names per Policy ¶¶ 4(c)(i) or (iii).
Lastly, Complainant argues that Respondent’s offer to sell the <syscofoods.com> domain name is evidence of Respondent’s lack of rights or legitimate interests in the domain name. Evidence of a respondent attempting to sell a disputed domain name may be evidence that of lack of rights or legitimate interests in a disputed domain name. See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). Complainant has provided a screenshot that shows Respondent attempting to sell the <syscofoods.com> domain name for $500.00. See Compl. Annex 8. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the <syscofoods.com> domain name per Policy ¶ 4(a)(ii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant argues that Respondent registered and used the disputed domain names in bad faith as Respondent attempts to sell the <syscofoods.com> domain name. Attempts to sell a disputed domain name may be evidence of bad faith per Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Complainant has provided a screenshot that shows Respondent attempting to sell the <syscofoods.com> domain name for $500.00. See Compl. Annex 8. Therefore, the Panel finds that Respondent registered and used the <syscofoods.com> domain name in bad faith per Policy ¶ 4(b)(i).
Complainant contends Respondent’s registration of the <myworksysco.com>, <syscofoods.com>, and <syscojobs.com> domain names is part of a pattern of bad faith registration and use of domain names. A pattern of bad faith registration can be established by a showing of multiple domain names in a single case, and such a pattern can indicate bad faith per Policy ¶ 4(b)(ii). See Deutsche Telekom AG v. Dana Dudones, FA 1798440 (Forum Sep. 7, 2018) (“Here the same registrant registered the seven disputed domain names over a two-day period [. . .] Thus the Panel finds that Respondent’s registration of multiple domain names in the present case evinces bad faith registration under Policy ¶ 4(b)(ii).”). The Panel notes that there are three (3) domain names in the present case. The Panel therefore determines that the registration and use of the <myworksysco.com>, <syscofoods.com>, and <syscojobs.com> domain names is part of a pattern and is evidence of Respondent’s bad faith per Policy ¶ 4(b)(ii).
Complainant further argues that Respondent is also using the disputed domain names to feature unrelated hyperlinks in order to create a likelihood of confusion with Complainant’s SYSCO mark. Use of a disputed domain name to create a likelihood of confusion and profit from unrelated hyperlinks may be evidence of bad faith per Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain); see also Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)). Complainant argues that Respondent’s use of the SYSCO mark in its domain names in order to profit from pay-per-click links constitutes a likelihood of confusion for commercial gain. See Compl. Annexes 4-6. Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith per Policy ¶ 4(b)(iv).
Complainant contends that Respondent uses the disputed domain names in an attempt to distribute adware and other malicious software. Use of a disputed domain name to distribute malware may be evidence of bad faith per Policy ¶ 4(a)(iii). See eNom, Incorporated v. Muhammad Enoms General delivery / Enoms.com has been registered just few days after Enom.com, therefore could not have been regstere, FA1505001621663 (Forum July 2, 2015) (“In addition, Respondent has used the disputed domain name to install malware on Internet users’ devices. The Panel finds that this is bad faith under Policy ¶ 4(a)(iii).”). Complainant has provided the Panel with screenshot of Respondent’s domain name’s resolving web pages that show the webpage asking Internet users to download software. See Compl. Annexes 4 and 5. Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <myworksysco.com>, <syscofoods.com>, and <syscojobs.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: November 4, 2019
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