RTIC Outdoors, LLC v. Kane Lee / Thelma Thomas
Claim Number: FA2104001943667
Complainant is RTIC Outdoors, LLC (“Complainant”), represented by P. Weston Musselman, Jr. of Fish & Richardson P.C., Minnesota, USA. Respondent is Kane Lee / Thelma Thomas (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <rtic-usa.com>, <rticoutdoors-us.com>, and <coolers-rtic.com>, registered with Dynadot, LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 30, 2021; the Forum received payment on April 30, 2021.
On May 13, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <rtic-usa.com>, <rticoutdoors-us.com>, and <coolers-rtic.com> domain names are registered with Dynadot, LLC and that Respondent is the current registrant of the names. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 May 20, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 9, 2021, 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@rtic-usa.com, postmaster@rticoutdoors-us.com, postmaster@coolers-rtic.com. Also on May 20, 2021, 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 June 14, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the domain names are controlled by the same entity since the contact email and physical addresses are fake, the resolving websites for the domain names are virtually identical, and the domains were registered in close proximity to each other, and with the same registrar.
The Panel here finds that Complainant has sufficiently presented evidence demonstrating that the listed entities are jointly controlled.
A. Complainant
Complainant, RTIC Outdoors, LLC, is a retailer of coolers and drinkware. Complainant has rights in the RTIC mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,886,270, registered Oct. 15, 2019). Respondent’s <rtic-usa.com>, <rticoutdoors-us.com>, and <coolers-rtic.com> domain names are confusingly similar to Complainant’s mark since they incorporate Complainant’s entire RTIC mark, adding either descriptive terms (“outdoors” or “coolers”) and/or geographic terms (“usa” or “us”), and all are followed by the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <rtic-usa.com>, <rticoutdoors-us.com>, and <coolers-rtic.com> domain names as it is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent to use the RTIC mark. Additionally, Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent copied content from Complainant’s website to pass off as Complainant and sell unauthorized or counterfeit products branded with Complainant’s mark.
Respondent registered and uses the <rtic-usa.com>, <rticoutdoors-us.com>, and <coolers-rtic.com> domain names in bad faith because Respondent passes off as Complainant on the resolving website for the disputed domain names in order to sell counterfeit products. Furthermore, Respondent had constructive and/or actual knowledge of Complainant’s rights in the RTIC mark based on the registration of the mark and Respondent’s blatant copying of the RTIC mark, images, and content from Complainant’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is RTIC Outdoors, LLC (“Complainant”), of Houston, TX USA. Complainant is the owner of domestic and international registrations for the mark RTIC, which it has used since at least as early as 2015 in connection with its manufacture and production of coolers and drinkware. Complainant is also the owner of numerous RTIC formative domain names from which it conducts business over the web such as <rticcoolers.com> and <rticoutdoors.com>.
Respondent is Kane Lee / Thelma Thomas (“Respondent”), of Filmore, NY, USA and Burbank, CA, USA. Respondent’s registrar’s address is listed as San Mateo, CA, USA. The Panel notes that the <rtic-usa.com>, <rticoutdoors-us.com>, and <coolers-rtic.com> domain names were registered on or about April 19, 21 & 22, 2021.
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 rights in the RTIC mark through its registration with the USPTO (e.g., Reg. No. 5,886,270, registered Oct. 15, 2019). Registration of a mark with a national trademark agency is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). The Panel here finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <rtic-usa.com>, <rticoutdoors-us.com>, and <coolers-rtic.com> domain names are confusingly similar to Complainant’s RTIC mark because they incorporate Complainant’s entire mark, adding either descriptive terms (“outdoors” or “coolers”) or generic geographical terms (“usa” or “us”), and all are followed by the “.com” gTLD. Adding a term that describes the complainant’s business to a mark does not remove confusing similarity, nor is the addition of the “.com” gTLD sufficient to differentiate between the disputed domain name and the mark. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The addition of a generic geographical term like ‘us’ or ‘usa’ also does not alter the underlying mark. See Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”). The Panel here finds that the disputed domain names are identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that 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”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <rtic-usa.com>, <rticoutdoors-us.com>, and <coolers-rtic.com> domain names because Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the RTIC mark. Under Policy ¶ 4(c)(ii), when no response is submitted, relevant WHOIS information may demonstrate that a respondent is not commonly known by a disputed domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Additionally, lack of authorization to use a mark is further evidence that a respondent is not commonly known by the mark. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). Here, the WHOIS information identifies “Kane Lee / Thelma Thomas” as the registrant. Additionally, Complainant asserts that there is no affiliation between RTIC and Kane Lee or Thelma Thomas, nor has Complainant authorized or licensed Respondent to use the RTIC mark. The Panel here finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Furthermore, Complainant argues that Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). The disputed domain names resolve to websites that copy Complainant’s RTIC logos and website content, and purport to offer RTIC branded coolers and drinkware products for sale, which are unauthorized by Complainant and likely counterfeit. Using the domain name to resolve to a website that mimics a complainant’s website and displays counterfeit versions of a complainant’s products for purchase is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”); see also Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Here, Complainant provides screenshots that show the resolving websites for the disputed domain names feature Complainant’s RTIC mark and display photographs of coolers and drinkware products branded with the RTIC mark for sale. Additionally, Complainant asserts that it purchased a cooler from the <rtic-usa.com> website and thus far has not received the order, nor any communication regarding the order. The Panel here finds that Respondent is not using the domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent registered and uses the <rtic-usa.com>, <rticoutdoors-us.com>, and <coolers-rtic.com> domain names in bad faith because Respondent disrupts Complainant’s business and attracts users for commercial gain by passing off as Complainant on the resolving websites for the disputed domain names in order to sell counterfeit products. Under Policy ¶¶ 4(b)(iii) and (iv), mimicking a complainant’s website in order to confuse users and pass off as complainant while offering counterfeit products for sale demonstrates bad faith. See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products); see additionally H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”). The Panel again notes that Complainant provides screenshots showing the resolving websites for the disputed domain names feature Complainant’s RTIC mark and images of RTIC products from Complainant’s website. For comparison, Complainant also provides a chart comparing a side-by-side sampling of pages from Complainant’s website and the Domain Names. The Panel here finds Respondent registered and uses the disputed domain names in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Furthermore, Complaint argues that Respondent registered the <rtic-usa.com>, <rticoutdoors-us.com>, and <coolers-rtic.com> domain names with constructive and/or actual knowledge of Complainant’s rights in the RTIC mark based on Respondent’s blatant copying of the RTIC mark and the images and content from Complainant’s website. While constructive knowledge is generally insufficient for finding of bad faith, per Policy ¶ 4(a)(iii), actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by a respondent’s use of the disputed domain name to pass off as a complainant. See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”); see additionally G.D. Searle & Co. v. Pelham, FA 117911 (Forum Sept. 19, 2002) (“[I]t can be inferred that Respondent had knowledge of Complainant’s rights in the CELEBREX mark because Respondent is using the CELEBREX mark as a means to sell prescription drugs, including Complainant’s CELEBREX drug.”). The Panel again notes that Complainant provides screenshots of the resolving websites for the <rtic-usa.com>, <rticoutdoors-us.com>, and <coolers-rtic.com> domain names which display Complainant’s RTIC logos and images and feature counterfeit versions of Complainant’s RTIC products. The Panel here finds that Respondent had actual knowledge of Complainant’s rights in the RTIC mark, and thus registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <rtic-usa.com>, <rticoutdoors-us.com>, and <coolers-rtic.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: June 29, 2021
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