YETI Coolers, LLC v. LYDIA NADAL / RACEYETI
Claim Number: FA1604001670605
Complainant is YETI Coolers, LLC (“Complainant”), represented by Katherin Laatsch Fink of Banner & Witcoff, Ltd., Illinois, United States. Respondent is LYDIA NADAL / RACEYETI (“Respondent”), Illinois, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <raceyeti.com>, registered with eNom, Inc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically April 14, 2016; the Forum received payment April 14, 2016.
On April 15, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <raceyeti.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. verified that Respondent is bound by the eNom, Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 18, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 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@raceyeti.com. Also on April 18, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 12, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 name be transferred from Respondent to Complainant.
A. Complainant’s Contentions in this Proceeding:
Complainant uses the YETI mark in connection with its websites to sell YETI portable coolers, insulated beverage ware, clothing, and other available products. Complainant registered the YETI mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,203,869, registered January 30, 2007), which establishes rights in the mark. See Amended Compl., at Attached Ex. 4. Respondent’s <raceyeti.com> domain name is confusingly similar to the YETI mark as it includes the entirety of the mark in combination with the generic term “race” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <raceyeti.com> domain name. Respondent is not commonly known by the disputed domain name, nor does Respondent have a relationship with Complainant, nor has Complainant given Respondent permission to use the YETI mark. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <raceyeti.com> domain name. Rather, the domain name resolves to an active website displaying hyperlinks for competing services. See Amended Compl., at Attached Ex. 8 (hyperlinks include: “Yeti Collers,” “Yeti Tundra,” “Yeti Roadie,” and “Yeti Bikes”). Further, when clicking on these links, it redirects Internet users to websites that offer products that directly compete with Complainant’s products. See Amended Compl., at Attached Exs. 9 and 10.
Respondent is using the <raceyeti.com> domain name in bad faith. Respondent’s use of the website serves as a disruption of Complainant’s legitimate business purposes. Respondent has also 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. Further, Respondent had actual and constructive notice of the YETI mark and Complainant’s rights therein because of the mark’s fame, notoriety and multiple trademark registrations.
Respondent’s Contentions in this Proceeding:
Respondent did not submit a response in this case for the Panel’s review. The Panel notes that Respondent registered the <raceyeti.com> domain name November 27, 2015.
Complainant established rights to and legitimate interests in the disputed domain name and the protected mark contained within it; Respondent has no such rights or legitimate interests.
Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name in bad faith.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Identical or Confusingly Similar:
Complainant uses the YETI mark in connection with websites to sell YETI portable coolers, insulated beverage ware, clothing, and other available products. Complainant registered the YETI mark with the USPTO (Reg. No. 3,203,869, registered January 30, 2007) and argues that its demonstration of trademark registrations establishes Policy ¶ 4(a)(i) rights in the YETI mark. See Amended Compl., at Attached Ex. 4. A complainant’s valid USPTO registration establishes rights in a mark pursuant to a Policy ¶ 4(a)(i) analysis. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Therefore, this Panel finds that Complainant established Policy ¶ 4(a)(i) rights in the YETI mark.
Next, Complainant argues that Respondent’s <raceyeti.com> domain name is confusingly similar to the YETI mark as it includes the entirety of the mark in combination with the generic term “race” and “.com” gTLD. Such alterations to a mark do not overcome a finding of confusing similarity under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Therefore, the Panel finds that Respondent’s <raceyeti.com> domain name is confusingly similar to the YETI mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected marks; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and Legitimate Interests:
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), and then the burden of proof shifts to Respondent to show it does have such 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 <raceyeti.com> domain name. To begin, Complainant asserts that Respondent is not commonly known by the disputed domain name, nor is there a relationship or association between Complainant and Respondent, nor has YETI authorized Respondent to use the YETI mark. Complainant’s Exhibit 7, the WHOIS information regarding the disputed domain name, lists “LYDIA NADAL / RACEYETI” as registrant of record. While Respondent appears to be commonly known by the disputed domain (namely, the dominant portion: “raceyeti”), the Panel is also reminded that Respondent failed to submit a response in this proceeding. Therefore, in light of available evidence, this Panel agrees that no basis exists to find Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Google Inc. v. S S / Google International, FA1506001625742 (Forum August 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”).
Further, Complainant argues that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <raceyeti.com> domain name. Rather, Complainant contends that the domain name resolves to a website featuring links to third party suppliers offering products that compete with Complainant’s offerings. See Amended Compl., at Attached Ex. 8. Such links include: “Yeti Collers,” “Yeti Tundra,” “Yeti Roadie,” and “Yeti Bikes.” Id. Complainant asserts that clicking on “Yeti Tundra” will bring you to a website that is offering products that directly compete with YETI’s products. See Amended Compl., at Attached Exs. 9 and 10. Such competitive use by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum January 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”). Therefore, this Panel finds that Respondent’s <raceyeti.com> domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent’s use of the <raceyeti.com> domain name serves as a disruption of Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) because of the inclusion of competing hyperlinks. See Amended Compl., at Attached Ex. 8. Such links include: “Yeti Collers,” “Yeti Tundra,” “Yeti Roadie,” and “Yeti Bikes.” Id. Where, as here, a respondent has attempted to divert Internet users to competitors of a complainant via hyperlinks related to such a complainant’s legitimate business, such use constitutes bad faith disruption under 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).”). Therefore, this Panel finds that Respondent’s <raceyeti.com> domain name falls within the purview of Policy ¶ 4(b)(iii).
Further, Complainant contends that Respondent also 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. The Panel agrees with Complainant and holds that Internet user confusion, which subsequently results in the clicking of included hyperlinks, which presumably awards Respondent profit, constitutes bad faith attraction for commercial gain 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)).
Lastly, Complainant argues that Respondent had actual or constructive knowledge of Complainant's rights in the YETI mark. Complainant argues that Complainants numerous trademark registrations indicates that Respondent had at least constructive knowledge of Complainant's mark and rights. Although constructive notice generally does not support findings of bad faith, this Panel finds that based on the notoriety of Complainant’s products and Respondent’s use, Respondent had actual knowledge of Complainant's mark and rights, and finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also 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 "actual knowledge of Complainant's mark when registering the disputed domain name").
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <raceyeti.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 26, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page