YETI Coolers, LLC v. Darrell Landers / darrell@funflicks.com
Claim Number: FA1606001677550
Complainant is YETI Coolers, LLC (“Complainant”), represented by Katherine Laatsch Fink of Banner & Witcoff, Ltd., Illinois, United States. Respondent is Darrell Landers / darrell@funflicks.com (“Respondent”), Texas, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mycustomyetis.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 1, 2016; the Forum received payment on June 1, 2016.
On June 2, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mycustomyetis.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 6, 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@mycustomyetis.com. Also on June 6, 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 June 30, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the YETI mark to sell its portable coolers, insulated beverage ware, clothing and other products.
Complainant holds a registration for the YETI trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registration No. 3,203,869, registered January 30, 2007).
Respondent registered the domain name <mycustomyetis.com> on December 20, 2015.
The domain name is confusingly similar to Complainant’s YETI mark.
Respondent has not been commonly known by the domain name.
Respondent has no relationship with Complainant, and Complainant has not given Respondent permission to use the YETI mark.
Respondent is making neither a bona fide offering of goods or services by means of, nor a legitimate noncommercial or fair use of, the domain name.
The domain name resolves to a website displaying hyperlinks to the websites of Complainant’s business competitors, from the operation of which links Respondent profits commercially.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent’s use of the domain name creates confusion among Internet users as to the possibility of Complainant’s sponsorship of or affiliation with it.
Respondent knew of Complainant and its rights in the YETI mark when it registered the domain name.
Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the YETI trademark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015):
There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i)….
Turning to the central question posed by Policy ¶ 4(a)(i), the Panel concludes from a review of the record that Respondent’s <mycustomyetis.com> domain name is confusingly similar to Complainant’s YETI trademark. The domain name contains the entirety of the mark in combination with the letter “s,” the generic terms “my” and “custom,” and the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where a disputed domain name contains a UDRP complainant’s entire mark and differs from it only by the addition of a generic or descriptive phrase and a Top Level Domain); see also PathAdvantage Associated v. VistaPrint Technologies Ltd, FA 1625731 (Forum July 23, 2015) (finding the <pathadvantages.com> domain name confusingly similar to the PATHADVANTAGE trademark under Policy ¶ 4(a)(i) because the domain name “merely adds the letter ‘s’ to Complainant’s mark”).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006):
Complainant must…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,…the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits the Panel to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, the Panel will examine the record before it, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
The Panel begins by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <mycustomyetis.com> domain name, that there is no relationship between Respondent and Complainant, and that Respondent has not been authorized by Complainant to use its YETI mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Darrell Landers / Darrell@funflicks.com,” which does not resemble the domain name. On this record, the Panel concludes that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that a respondent was not commonly known by the <lilpunk.com> domain name, and so failed to show that it had rights to or legitimate interests in it as provided in Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, showing that that respondent was commonly known by that domain name, and where a UDRP complainant asserted without contradiction that it did not authorize or license that respondent’s use of its mark in the domain name).
The Panel next observes that Complainant asserts, without objection from Respondent, that the <mycustomyetis.com> domain name resolves to a website featuring links to third party suppliers offering products that compete with Complainant’s business, and that Respondent profits commercially from the operation of those links. This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015):
The Panel finds that Respondent’s use of the…[domain] name to promote links in competition with Complainant’s…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).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
The Panel is persuaded by the evidence that Respondent’s use of the contested <mycustomyetis.com> domain name as alleged in the Complaint disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. 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).
The Panel is also convinced by the evidence that Respondent’s use of disputed <mycustomyetis.com> domain name, which is confusingly similar to Complainant’s YETI trademark, is an attempt by Respondent to profit financially from the confusion thus caused among Internet users as to the possibility of Complainant’s sponsorship of or affiliation with the domain name and its resolving website. Under Policy ¶ 4(b)(iv), this too demonstrates Respondent’s bad faith in the registration and use of the domain name. See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (finding, under Policy ¶ 4(b)(iv), that a respondent’s use of a domain name to display links to the websites of a UDRP complainant’s competitors constituted evidence of its bad faith in registering and using the domain name).
Finally, under this head of the Policy, it is evident from the record that Respondent knew of Complainant and its rights in the YETI mark when it registered the <mycustomyetis.com> domain name. This further shows Respondent’s bad faith in registering the domain name. See, for example, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (finding that a respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii), having concluded that that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
For all of these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mycustomyetis.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 7, 2016
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