YETI Coolers, LLC v. Randall Bearden
Claim Number: FA1606001680755
Complainant is YETI Coolers, LLC (“Complainant”), represented by Katherine Laatsch Fink of Banner & Witcoff, Ltd., Illinois, USA. Respondent is Randall Bearden (“Respondent”), represented by Sara Giddings of Smith Rose Finley, P.C., Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yetipowdercoating.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Luz Helena Villamil J. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 22, 2016; the Forum received payment on June 22, 2016.
On June 23, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <yetipowdercoating.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 24, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 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@yetipowdercoating.com. Also on June 24, 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.
Preliminary Issue: Deficient Response
A Response was received on July 19, 2016, after the July 18, 2016 deadline. Thus the Forum does not consider the Response to be in compliance with ICANN Rule 5(a). The Panel, at its discretion, may choose whether to accept and consider this Response. Compare Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5), with Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
In the case at hand the Panel has decided to consider the arguments submitted by the Respondent’s representative in light of her information regarding the technical difficulties with the server which impeded sending the response on time.
On July 27, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Luz Helena Villamil J. 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 that it is the registered owner of the trademark YETI, and also of related trademarks such as YETI COOLERS, YETI TANK, YETI COLSTER and YETI RAMBLER COLSTER, being said trademarks registered in several countries such as the United States, Argentina, Australia, Brazil, Canada, China, European Community, India, Japan, Mexico, New Zealand, Norway, Philippines, Russia, South Africa, Switzerland, Thailand and United Arab Emirates. It is also stated that Complainant owns as well common law rights in and to the aforementioned trademarks.
Complainant asserts that it operates the websites YETICOOLERS.COM and YETI.COM that receive substantial traffic from persons seeking information about YETI and to purchase products such as its coolers, insulated beverage ware, clothing, etc.
As stated by the Complainant, Respondent uses the Disputed Domain Name <yetipowdercoating.com> to resolve to a website containing hyperlinks which resolve to direct competitors of Complainant and from which Respondent presumably nets pay-per-click profits. Respondent’s Website features links to competitive product offerings, including the “Personalized Tumblers” link, which resolves to http://kapp-studio.Myshopify.com, which has third-party insulated beverage ware and container products for sale that directly compete with YETI’s goods.
Based on the foregoing, Complainant’s main contentions are as follows:
1. The domain name <yetipowdercoating.com> is confusingly similar to Complainant’s registered trademark YETI because the it includes the entirety of the YETI Mark in combination with the descriptive and/or generic terms “powder,” “coating,” and “.com”. Complainant also mentions that YETI offers customized products and customization services to its customers under the YETI Mark. In addition, customization services may occur through providing wraps, stickers, decals, and/or coatings on products. Therefore, the terms “powder” and “coating” in connection with the YETI Mark are descriptive and/or generic and describe YETI’s goods and services, and therefore the domain name <yetipowdercoating.com> is confusingly similar to the trademark YETI. Thus, Respondent infringes upon and violates the Complainant’s rights under Policy ¶ 4(a)(i).
2. Respondent has no rights or legitimate interests in the Disputed Domain Name, <yetipowdercoating.com>. Complainant states that it only needs to establish a prima facie case that Respondent lacks rights to and legitimate interests in the Disputed Domain Name, and then the burden shifts to Respondent to prove that Respondent does have rights to or legitimate interests in the Disputed Domain Name. Complainant adds that it does not have any relationship or association with Respondent, and it has not authorized Respondent to use the YETI Mark, or to register domain names incorporating the YETI Mark. Moreover, Respondent has not used and is not using the Disputed Domain Name in connection with a bona fide offering of goods or services, and has not made and is not “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” pursuant to Policy ¶ 4(c)(iii).
3. The domain name <yetipowdercoating.com> was registered and is being used in bad faith. Respondent’s use serves as a disruption of Complainant’s legitimate business. Second, 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 website. Lastly, based on Complainant’s multiple trademark registrations, Respondent had constructive and/or actual knowledge of the YETI mark at the time the domain was registered.
B. Respondent
Respondent contends that the domain name <yetipowdercoating.com> is not identical nor confusingly similar to the trademark YETI, since the addition of the terms “powder” and “coating” are key elements of the disputed domain name. Respondent asserts that it provides powder coating services for not only YETI’s but also for washers, car parts, light stands, patio furniture, lighting carts and other items, and that customers are seeking the services of powder coating, and not seeking to purchase Yeti’s products, which Respondent does not sell.
As to the rights and legitimate interests in respect of the domain name, Respondent asserts that it has bona fide intentions to use the website for the advertisement of his company Angelo Powder Coating. To that end, Respondent states that it pays <godaddy.com> a monthly fee for website building.
In addition, the Respondent states that it has the right to use Yeti when discussing his company’s offerings under the theory of nominative fair use. Respondent is only informing that he provides the service of powder coating Yeti’s, but he does not use the mark more than necessary, and he has not suggested anywhere that he is sponsored or endorsed by Yeti.
In connection with Complainant’s allegation that Respondent uses the Disputed Domain Name to resolve to a website containing hyperlinks which resolve to direct competitors of Complainant and from which Respondent presumably nets pay-per-click profits, Respondent states that GoDaddy.com provides parking of the website on its own accord for free. Respondent has not requested that this page be shown, and Respondent does not benefit from this page. Respondent also states that the sponsored listings frequently change, and thus when accessing the <yetipowdercoating.com> webpage the sponsored links are different.
On the other hand, as regards the registration and use of the domain <yetipowdercoating.com> in bad faith, Respondent contends that the domain was not registered with the intention to damage or exploit the Complainant in any manner. Respondent and his company do not sell Yeti products, and if a customer wants respondent to purchase a Yeti product on their behalf, Respondent will purchase the product and include it in the final purchase price at the same cost that he purchased it.
Lastly, Respondent states that it has never offered nor it intends to offer the website for sale, but only to demonstrate the services that he offers.
The Panel finds that the Complainant is the owner of the trademark YETI, which is registered in several countries. In particular, the trademark YETI is registered with the USPTO under Reg. No. 3,203,869 as of January 30, 2007.
Complainant next argues that Respondent’s <yetipowdercoating.com> domain name is confusingly similar to the YETI mark. Complainant notes that the domain name adds the phrase “powder coating” to the YETI mark, and since YETI offers customized products and customization through providing wraps, stickers, decals, and/or coatings on products, the Panel agrees that the terms “powder” and “coating” in connection with the YETI Mark are descriptive, since they indeed describe certain services and in fact, some of YETI’s services.
As to the generic top-level domain (“gTLD”) “.com”, the Panel finds that it is not relevant to a confusing similarity analysis under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
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 first requirement of the Policy in Paragraph 4(a)(i) for the Complainant to meet is to demonstrate its rights over a trademark identical or confusingly similar to a domain name registered by the Respondent.
In the present case, Complainant demonstrated with the trademark registration copies submitted with the Complaint that it is the exclusive owner of the trademark YETI and related ones such as YETI TANK, YETI COLSTER, and YETI RAMBLER COLSTER.
The similarities particularly between the trademark YETI and the domain name <yetipowdercoating.com> are undeniable. The trademark YETI is totally contained in the disputed domain name, and in addition the words “powder coating” are merely explicative and directly refer to some of the services rendered by the Complainant. Therefore it would not be possible to deny that there is a virtual identity, or at least in any case an irrefutable confusing similarity, between the registered trademark and the disputed domain name.
In light of the foregoing, there is no doubt for the Panel that the Policy requirement in Paragraph 4(a)(i) is met as to the fact that the disputed domain name <yetipowdercoating.com> is confusingly similar to the trademarks owned by the Claimant.
The Panel agrees 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), before the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the <yetipowdercoating.com> domain. Complainant asserts that Respondent is not commonly known by the domain, and it does not have a relationship with Complainant, nor has Complainant authorized Respondent to use the YETI mark. The WHOIS information regarding <yetipowdercoating.com> domain lists “Randall Bearden” as registrant. Therefore, in light of the available evidence, the Panel agrees there is no basis to find Respondent commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
In turn, Respondent argued that it has the right to use the trademark YETI when discussing his company’s offerings under the theory of nominative fair use. Respondent is only informing that he provides the service of powder coating Yeti’s, but he does not use the mark more than necessary, and he has not suggested anywhere that he is sponsored or endorsed by Yeti.
The Panel does not agree with this assertion by the Respondent. The theory of nominative fair use exists, but it does not extend to the right to include a trademark in a registration of any kind, and definitely not in a domain name. Thus, the Panel considers that the Respondent does use the mark much more than necessary, inasmuch as containing it in a domain name does give rights to the owner thereof, and no doubt leads the general public to believe that there is some kind of relation between the domains <yeti.com> (of the Complainant) and <yetipowdercoating.com> of the Respondent. Furthermore, as mentioned in the attachments to the response, Respondent owns as well the domain name <angelopowdercoating.com>, which also refers to powder coating services. This being the case, nothing explains why such name would not be sufficient to promote and render its powder coating services and why, then, it would be necessary to create another domain name including the registered trademark YETI owned by the Complainant, and precisely to offer the services of powder coating the YETI products, as mentioned in the response.
Considering the foregoing, the Panel agrees that Respondent’s domain name <yetipowdercoating.com> constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent registered and used the <yetipowdercoating.com> domain name in bad faith. Complainant argues that 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 website. Complainant contends that Respondent registered the disputed domain name to create a likelihood of confusion with Complainant and Complainant’s mark in order to profit from users looking for Complainant’s website. As mentioned in the preceding paragraph, there is no explanation for the inclusion of the registered trademark YETI in the domain under dispute, aside of the assumption that confusion would be caused by leading internet users to believe that there is some type of relationship between the trademark YETI and the domain <yeti.com> with the domain name <yetipowdercoating.com>, such as, for instance, that the services rendered by the owner of the domain <yetipowdercoating.com> are rendered by the same owner of the trademark YETI. It should be taken into account that, as mentioned by the Complainant, YETI offers customized products and customization through providing wraps, stickers, decals, and/or coatings on products, so it is clear that Complainant and Respondent offer the same type of services in connection with products bearing the trademark YETI.
The Panel therefore agrees with Complainant and holds that Internet user confusion that results in the redirection to Respondent’s site with links to the goods of Complainant’s competitors constitutes bad faith registration and use under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yetipowdercoating.com> domain name be TRANSFERRED from Respondent to Complainant.
Luz Helena Villamil J., Panelist
Dated: August 10, 2016
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