YETI Coolers, LLC v. Bryan Westbrook
Claim Number: FA1606001677552
Complainant is YETI Coolers, LLC (“Complainant”), represented by Katherine Laatsch Fink of Banner & Witcoff, Ltd., Illinois, USA. Respondent is Bryan Westbrook (“Respondent”), represented by M. Scott Hall, Arkansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <customizemyyeti.com> and <customizemyyeti.net>, 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.
Kenneth L. Port 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 <customizemyyeti.com> and <customizemyyeti.net> 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 June 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 1, 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@customizemyyeti.com, postmaster@customizemyyeti.net. 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 July 8, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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. 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the YETI mark in connection with its portable cooler and insulated beverageware 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. See Compl., at Attached Exs. 4–5. Respondent’s <customizemyyeti.com> and <customizemyyeti.net> domain names are confusingly similar to Complainant’s mark as they each incorporate the YETI mark in its entirety, only adding the generic terms “customize” and “my” and the generic top-level domain (“gTLD”) “.com” or “.net.”
Respondent has no rights or legitimate interests in the <customizemyyeti.com> and <customizemyyeti.net> domain names. Respondent is not commonly known by the disputed domain names. Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <customizemyyeti.com> and <customizemyyeti.net> domain names. Rather, the domain names both resolve to inactively held pages, which read, “The account you were looking for doesn’t exist.” Compl., at Attached Ex. 10.
Respondent’s registration and use of the <customizemyyeti.com> and <customizemyyeti.net> domain names serves as nonexclusive evidence of bad faith under Policy ¶ 4(a)(iii) because the domains have been inactively held since registration. Because Complainant’s trademark registrations for the YETI mark existed well before the registration of the disputed domain names, Respondent had at least constructive knowledge of Complainant's rights in the mark.
B. Respondent
Other than asking for a four-day extension of time in which to file a response pursuant to Rule 5(b), which was granted, Respondent has failed to submit a Response in this proceeding. Respondent registered the <customizemyyeti.com> and <customizemyyeti.net> domain names on August 11, 2015.
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s valid and subsisting trademark, that the Respondent has no rights or legitimate interests in or to the disputed domain names, and that the Respondent has engaged in bad faith use and registration of the disputed domain names.
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.
In view of 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 draw such inferences it 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 (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.”).
The Panel finds that the Complainant has adequately plead its interests in and to the trademark YETI. Complainant appears to be the sole owner of a federal trademark registration in the United States for this mark. See Compl., at Attached Exs. 4–5.
The Panel further finds that the disputed domain names and this registered trademark are confusingly similar. Both disputed domain names incorporate this trademark in its entirety and merely add the generic words “customize” and “my” and the gTLD “.com” or “.net.” This is insufficient to distinguish the disputed domain names from the registered trademark.
As such, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s registered trademark.
The Panel finds that Respondent has no rights or legitimate interests in or to the <customizemyyeti.com> and <customizemyyeti.net> domain names. Respondent is apparently not commonly known by the disputed domain names. The WHOIS information regarding the <customizemyyeti.com> and <customizemyyeti.net> domain names indicates “Bryan Westbrook” as registrant. Complainant asserts that it has not given Respondent permission to use its YETI mark. The Respondent has failed to submit a response in this proceeding. Therefore, in light of the available evidence, the Panel finds that there is no basis to find Respondent commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Additionally, Respondent is apparently neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <customizemyyeti.com> and <customizemyyeti.net> domain names. Rather, the domain names both resolve to inactively held pages, which read, “The account you were looking for doesn’t exist.” Compl., at Attached Ex. 10. Such inactive holding does not amount to rights and legitimate interests.
Therefore, the Panel finds that no rights or legitimate interests have been established by Respondent.
The Panel finds that under Policy ¶ 4(b), express arguments regarding bad faith use and registration are not mandatory—so long as Complainant shows bad faith use and registration in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant argues that Respondent’s registration and use of the <customizemyyeti.com> and <customizemyyeti.net> domain names serves as nonexclusive evidence of bad faith under Policy ¶ 4(a)(iii) because the domains have been inactively held since registration. See Compl., at Attached Ex. 10. Inactive holding may be seen to constitute bad faith under Policy ¶ 4(a)(iii). See Microsoft Corporation v. Jordin Barth, FA1211001473274 (Forum Jan. 14, 2013) (finding that the respondent’s failure to make an active use of the disputed domain name from the time it was registered until the time it was contacted by the complainant’s counsel indicated that the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)).
Therefore, the Panel finds that Policy ¶ 4(a)(iii) nonexclusive bad faith registration and use has been established.
Lastly, Complainant asserts that its trademark registrations for the YETI mark existed well before the registration of the disputed domain names. Complainant argues that Respondent has actual or constructive knowledge of Complainant's rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel fins that that, due to the fame of Complainant's mark and a totality of the circumstances, Respondent had actual knowledge of the mark and Complainant's rights thereto.
Thus, the Panel finds that Respondent registered and used the disputed domain names in bad faith under 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 <customizemyyeti.com> and <customizemyyeti.net> domain names transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: July 11, 2016
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