YETI Coolers, LLC v. Asbille, Tony / Global Star Medical
Claim Number: FA1606001677837
Complainant is YETI Coolers, LLC (“Complainant”), represented by Banner & Witcoff, Ltd., Illinois, USA. Respondent is Asbille, Tony / Global Star Medical (“Respondent”), Arkansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yetistraw.com>, registered with Network Solutions, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 3, 2016; the Forum received payment on June 3, 2016.
On June 3, 2016, Network Solutions, LLC confirmed by e-mail to the Forum that the <yetistraw.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 June 7, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 2016 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@yetistraw.com. Also on June 7, 2016, 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.
A timely Response was received and determined to be complete on June 27, 2016.
On July 1, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant uses the YETI mark in connection with its portable cooler and insulated beverage-ware business.
Complainant has registered the YETI mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,203,869, registered Jan. 30, 2007), which demonstrates rights in the mark.
Respondent’s <yetistraw.com> domain name is confusingly similar to the YETI mark as it incorporates the mark entirely and merely adds the generic term “straw” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <yetistraw.com> domain name. Respondent is not commonly known by the domain name, nor is it affiliated with Complainant in any way. Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <yetistraw.com> domain name. Rather, the domain resolves to a pay-per-click website which contains hyperlinks which redirect to competitors of Complainant.
Respondent registered and used the disputed domain in bad faith. Respondent’s registration of the <yetistraw.com> domain name disrupts Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) because of the inclusion of competing hyperlinks. Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the websites according to Policy ¶ 4(b)(iv). Because Complainant’s trademark registrations for the YETI mark existed well before the registration of the disputed domain names, Respondent had actual or at least constructive knowledge of Complainant's rights in the mark.
B. Respondent
Respondent contends as follows:
Respondent’s
domain will be used to sell stainless straws. The associated website will very
clearly state on the front page Respondent is not associated with Complainant
YETI in any way. We do not believe there will be any confusion on brand names
as the disclosure will be clear in stating it is not a yeti product put rather
a straw that will work with yeti, corksickle, North Pole and other
tumblers.
Complainant has rights in the YETI mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademark.
Respondent currently uses the at-issue domain name to address a pay-per-click website which contains hyperlinks which link to competitors of Complainant.
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.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant establishes its rights in the YETI mark by registering such mark with the United States Patent and Trademark (USPTO ) (e.g., Reg. No. 3,203,869, registered Jan. 30, 2007). See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Respondent’s domain name incorporates Complainant’s YETI mark it entirety, adds the generic term “straw” and appends the top-level domain name “.com.” thereto. The slight differences between the Complainant’s trademark and Respondent’s domain name are insufficient to distinguish one from the other for the purpose of Policy ¶ 4(a)(i). Therefore, the Panel finds that the <yetistraw.com> domain name is confusingly similar to Complainant’s YETI trademark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also, 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).)
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances, Complainant’s prima facie showing acts conclusively.
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.
WHOIS information for the at-issue domain name lists “Tony Asbille / Global Star Medical” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <yetistraw.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent uses the at-issue domain name to address a pay-per-click website which contains hyperlinks which link to competitors of Complainant. Respondent claims that it intends to use the at-issue domain name to advertise a product which operates with products made by Complainant, sometime in the future. Respondent thereby alludes to having a nominative fair use for the confusingly similar domain name. However, Respondent currently presents no disclaimer as to its association with Complainant, and the addressed pay-per-click website does not offer any such product for sale, or even provide evidence that such a product is in the works. To the contrary, Respondent’s <yetistraw.com> website promotes Complainant’s competition. What Respondent may or may not intend to do in the future does not vitiate Respondent’s actual use of the domain name. Therefore, Respondent’s use of the confusingly similar domain name is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”); see also, AT&T Corp. v. Domains by Brian Evans, D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate interests where the respondent alleged that it intended to use the domain name <attweb.com> for a company called “At the Web” but failed to provide any evidence as to the existence of the company).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶ 4(b) specific bad faith circumstances as well as other circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above with regard to rights and legitimate interests, Respondent’s uses the domain name to address a pay-per-click website which displays a variety of links to Complainant’s competitors. Such use disrupts Complainant’s business and demonstrate Respondent’s bad faith registration and use of the <yetistraw.com> domain name pursuant to Policy ¶ 4(b)(iii). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”).
Further, Respondent’s use of the at-issue confusingly similar domain name suggests that Complainant is the source, sponsorship, affiliation, or endorsement of the referenced websites. Respondent intends to profit from confused users looking for Complainant’s website but finding Respondent’s. Such uses of the <yetistraw.com> domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)); see also, Zee TV USA, Inc. v. Siddiqi, FA 721969 (Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Finally, the <yetistraw.com> domain name was registered knowing that Complainant has trademark rights in YETI. Respondent’s prior knowledge is evident from Respondent’s admission in its Response that a future disclaimer by Respondent will be clear in stating it is not a YETI product. If Respondent’s did not believe that Complainant’s had trademark rights in YETI, there would be no reason to for such a disclaimer. Therefore, it is obvious that Respondent intentionally registered the at-issue domain name precisely to improperly exploit its trademark value at least for a period of time, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the at-issue domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yetistraw.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 5, 2016
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