YETI Coolers, LLC v. Chad williams / Dakota South
Claim Number: FA1605001675164
Complainant is YETI Coolers, LLC (“Complainant”), represented by Katherine Laatsch Fink of Banner & Witcoff, Ltd., Illinois, USA. Respondent is Chad williams / Dakota South (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <yetitexas.com>, <yetifortworth.com>, <yetidfw.com>, and <yeticoolersdfw.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 16, 2016; the Forum received payment on May 16, 2016.
On May 16, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <yetitexas.com>, <yetifortworth.com>, <yetidfw.com>, and <yeticoolersdfw.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 May 18, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 7, 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@yetitexas.com, postmaster@yetifortworth.com, postmaster@yetidfw.com, and postmaster@yeticoolersdfw.com. Also on May 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.
A timely Response was received and determined to be complete on June 6, 2016.
On June 16, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <yetitexas.com>, <yetifortworth.com>, <yetidfw.com>, and <yeticoolersdfw.com> domain names are confusingly similar to Complainant’s YETI marks.
2. Respondent does not have any rights or legitimate interests in the <yetitexas.com>, <yetifortworth.com>, <yetidfw.com>, and <yeticoolersdfw.com> domain names.
3. Respondent registered and uses the <yetitexas.com>, <yetifortworth.com>, <yetidfw.com>, and <yeticoolersdfw.com> domain names in bad faith.
B. Respondent
1. Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
2. Respondent registered the <yetitexas.com>, <yetifortworth.com>, <yetidfw.com>, and <yeticoolersdfw.com> domain names on the encouragement of Complainant while in the process of attempting to become a seller of Complainant’s goods.
3. Respondent has not engaged in any bad faith because the resolving websites were established by GoDaddy without the input of Respondent as to their content.
Complainant holds a registration for its YETI mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,203,869, registered Jan. 30, 2007), used in connection with selling coolers. The Panel notes that Complainant has many YETI marks regsitered around the world, including a registration for YETI COOLERS in the Phillipines and in the U.S.
Respondent’s <yetitexas.com>, <yetifortworth.com>, <yetidfw.com>, and <yeticoolersdfw.com> domain names resolve to parked pages featuring links that compete with Complainant’s business.
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 Panel finds that Complainant has rights in the YETI mark under Policy ¶ 4(a)(i) through its registration with the USPTO. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i).)
Respondent’s <yetitexas.com>, <yetifortworth.com>, <yetidfw.com>, and <yeticoolersdfw.com> domain names contain the YETI mark along with the terms “texas,” “fort worth,” “dfw,” and “coolers,” and the gTLD “.com.” Complainant argues that the added terms are generic or geographic modifiers that do not adequately differentiate the domains and mark. The Panel agrees and finds that the disputed domain names are confusingly similar to the YETI mark. 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.); see also Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.)
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 contends that Respondent is not commonly known by the <yetitexas.com>, <yetifortworth.com>, <yetidfw.com>, and <yeticoolersdfw.com> domain names, and is not associated with Complainant. Complainant states that Respondent is not authorized to use the YETI mark, and no evidence was submitted that proves otherwise. The WHOIS information lists “Chad williams / Dakota South” as the registrant of the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names according to Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Complainant alleges that Respondent fails to use the <yetitexas.com>, <yetifortworth.com>, <yetidfw.com>, and <yeticoolersdfw.com> domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because each domain resolves to a parked page containing links to competitors of Complainant. The Panel notes a screenshot of a resolving website demonstrating the competitive nature of these links. Therefore, the Panel finds that Respondent fails to use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and 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.”).
Although Respondent claims that it did not give GoDaddy permission for the competing use of the disputed domain names, prior panels have found that such circumstances do not alleviate a respondent of responsibility for the manner in which a domain name is used. See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent uses the <yetitexas.com>, <yetifortworth.com>, <yetidfw.com>, and <yeticoolersdfw.com> domain names in bad faith because they resolve to a parked page containing links to competitors of Complainant, disrupting Complainant’s business. The Panel agrees and finds that Respondent uses the domain names in bad faith 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).”).
Complainant maintains that Respondent uses the <yetitexas.com>, <yetifortworth.com>, <yetidfw.com>, and <yeticoolersdfw.com> domain names in bad faith because domain resolves to a parked page containing links to competitors of Complainant, presumably for click-through fees. The Panel agrees and finds that Respondent uses the domain names in bad faith according to 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)).
The Panel again notes that Respondent claims no responsibility for the competitive links present at the resolving websites, on the basis that GoDaddy established these links without Respondent’s input. However, Respondent is the registrant of the disputed domain names and is responsible for their use. See Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (finding that it makes no difference that a respondent contends that the advertisements in this case were “generated by the parking company,” the respondent still registered and used the disputed domain name in bad faith).
Complainant alleges that Respondent registered the <yetitexas.com>, <yetifortworth.com>, <yetidfw.com>, and <yeticoolersdfw.com> domain names in bad faith because it did so with constructive or actual knowledge of Complainant’s rights in the YETI mark. The Panel finds that Respondent admits to actual knowledge of Complainant’s rights at the time of registration and thus registered the domain names in bad faith. Though Respondent claims that he was in discussions with Complainant regarding the disputed domain names, the fact remains that he did not have permission to register any domain names using Complainant’s YETI mark. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
The Panel finds that Complainant has satisfied 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 <yetitexas.com>, <yetifortworth.com>, <yetidfw.com>, and <yeticoolersdfw.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 20, 2016
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