YETI Coolers, LLC v. ian taberner
Claim Number: FA1606001677855
Complainant is YETI Coolers, LLC (“Complainant”), represented by Katherine Laatsch Fink of Banner & Witcoff, Ltd., Illinois, USA. Respondent is ian taberner (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <yettination.biz>, <yettination.com>, <yettination.info>, <yettination.net>, and <yettination.org>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James Bridgeman as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 3, 2016; the Forum received payment on June 3, 2016.
On June 3, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <yettination.biz>, <yettination.com>, <yettination.info>, <yettination.net>, and <yettination.org> 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 7, 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@yettination.biz, postmaster@yettination.com, postmaster@yettination.info, postmaster@yettination.net, and postmaster@yettination.org. Also on June 7, 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 July 1, 2016.
On July 7, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman 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
Complainant’s submissions
Complainant asserts rights in the YETI, YETI COOLERS, YETI HOPPER, YETI RAMBLER, YETI TANK, YETI COLSTER, and YETI RAMBLER COLSTER trademarks through its abovementioned trademark registrations and at common law through its extensive use of the trademarks in commerce.
Complainant submits that each of the disputed domain names is confusingly similar to the YETI mark because each of the domain names at issue contain common or obvious misspellings of the YETI mark. In each case the misspelled YETI element remains the sole or dominant component of the domain name. It has been accepted in previous decisions under the Policy that the deliberate misspelling of a mark (so-called ‘typo-squatting’), by adding, deleting, substituting or reversing the order of letters in a mark creates confusion among users of the Internet. See Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings, D2004-0971 (WIPO January 19, 2005) (finding “fuijifilm.com” to be similar to “fujifilm.com).
Furthermore each of the disputed domain names incorporates the common or obvious misspelling of the entirety of the YETI mark in combination with the generic terms “nation” “.biz”, “.info”, “.net”, “.org” and “.com.” See, e.g., Seiko Epson Corporation and Epson America, Inc. v. Christopher Dzialo, FA 1341785 (NAF Oct. 4, 2010) (finding that the domain name “epsonleads.com,” which incorporates the entirety of complainant’s mark and adds the generic term “leads” and the gTLD “.com” does not sufficiently distinguish the disputed domain name from the mark).
As a threshold matter, the additional terms “.com”, “.biz”, “.info”, “.net” and “.org,” in the disputed domain names have no impact on the question of whether the disputed domain names are confusingly similar to Complainant’s mark because they correspond to a required signifier of a common generic Top Level Domain (“gTLD”). See Research in Motion Limited v. Input Inc, Domain Manager, D2011-2197 (WIPO Mar. 13, 2012) (finding with a “.com” domain name that “[t]he top level domain of the disputed domain name is to be ignored for the purposes of assessing similarity as it is a functional requirement of the domain name system”).
The inclusion of the word element “nation” in the disputed domain names has no mitigating effect on the confusing similarity between <yettination.biz>, <yettination.com>, <yettination.info>, <yettination.net>, and <yettination.org> and Complainant’s YETI mark. See, Seiko Epson Corporation and Epson America, Inc. v. Christopher Dzialo, FA 1341785 (NAF Oct. 4, 2010) (finding that the addition of a generic term and a gTLD do not sufficiently distinguish a disputed domain name from a mark).
Complainant has referred, and continues to refer, to itself as “YETI Nation” on its website offering products sold under the YETI mark since at least as early as January 2015. Complainant has attached a current screenshot of its website and a screenshot of the same page from the Internet Archive: Wayback Machine taken January 17, 2015 to illustrate this assertion. In addition, Complainant submits that the word “nation” therefore does not serve to distinguish the disputed domain names from Complainant’s mark.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names and argues that it need only establish a prima facie case that Respondent lacks rights to and legitimate interests in the disputed domain names to shift the burden to Respondent to prove that he has such rights or interests. See, e.g., Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (NAF Aug. 18, 2006). Furthermore Complainant submits that this initial burden on Complainant is “light.” AOL LLC v. Gerberg, FA 780200 (NAF Sept. 25, 2006). In this regard Complainant submits that:
· Complainant has no relationship or association with Respondent;
· Complainant has not authorized Respondent to use Complainant’s YETI mark, or to register domain names incorporating the YETI mark;
· Respondent has not used and is not using the disputed domain names “in connection with a bona fide offering of goods or services” pursuant to UDRP Policy ¶ 4(c)(i), 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 UDRP Policy ¶ 4(c)(iii);
· When Internet users seeking information about Complainant, type the disputed domain names into the address bar of web browsing software, they are unexpectedly directed to Respondent’s websites featuring links to third party suppliers offering products that compete with Complainant’s offerings. For example, clicking on the “Personalized Tumblers” link displayed at <yettination.biz> resolves a page which is offering products that directly compete with Complainant’s products. As stated in Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (NAF Sept. 30, 2003), “Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”;
· Respondent’s use of the disputed domain names to provide a website featuring hyperlinks to competing products does not qualify as legitimate use under UDRP Policy ¶ 4(c)(i) and (iii). See, e.g., United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (NAF Dec. 12, 2007);
· Additionally, nothing in the public record (including WHOIS records) suggests that Respondent is commonly known by the disputed domain names. See Tercent Inc. v. Yi, FA 139720 (NAF Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that respondent is commonly known by the disputed domain name, is a factor in evaluating Policy ¶ 4(c)(ii)).
Complainant submits that the disputed domain names were registered and are being used in bad faith.
Complainant submits that Respondent had both actual and constructive notice of Complainant’s rights in the YETI mark. Complainant’s trademark rights predate the registration of the disputed domain names. Respondent’s registration of a domain name that is confusingly similar to Complainant’s mark, in spite of Respondent’s actual or constructive knowledge of those rights, is evidence of bad faith registration and use pursuant to UDRP Policy ¶ 4(a)(iii). See Orange Glo Int’l v. Blume, FA 118313 (NAF Oct. 4, 2002) (“[C]omplainant’s OXICLEAN mark is listed on the Principal Register of the [U.S. Patent and Trademark Office], a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”).
Respondent’s websites offer links to third party suppliers offering products for sale that compete with Complainant’s product offerings and accordingly disrupt Complainant’s business.
Internet users that intend to view and potentially purchase YETI’s products may end up buying competing products after mistakenly visiting Respondent’s websites. See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (NAF July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business).
Complainant has adduced in evidence examples of content posted on each of the websites to which the disputed domain names resolve which contain links to third party websites that offer goods which are directly in competition with Complainant.
Complainant submits that Respondent capitalizes on visitors’ mistaken belief that they are accessing information and products that Complainant offers for sale to generate web traffic, and in turn realize a commercial gain. This business model constitutes registration and use of a domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (NAF July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant.
B. Respondent
Respondent submits that he registered the disputed domain names with the misspelt word “yeti” for two reasons, namely for the visual effect of a logo and brand name and secondly to avoid any confusion with Complainant.
Respondent submits that Complainant has no idea of the nature of Respondent’s plans for his future business or the products that he will manufacture. Any confusion would only arise if it was related in some way to the Complainant’s business. Complainant is seeking to monopolize the use of the word “yeti” and has also commenced a complaint regarding the domain name <yeticycles.com>.
Respondent refers to receipts for two US non-provisional patent applications filed with the United States Patent and Trademark Office (but has only exhibited the first page of application number 14/948, 185 filed on November 20 2015. When alerted to this at the administrative stage of this proceeding by the Center, Respondent decided not to furnish any further documentation).
Respondent states that his pending patent applications are evidence that before any notice to him of the dispute, he has made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. He states that he is in the process of making prototype of his invention with an off-shore manufacturer and that the process for application for a trade mark is underway with his attorney.
He denies directing Internet traffic away from Complainant because none of his websites are active. The links to third party websites on the inactive web pages to which the Complainants object are posted by the Registrar and not by the Respondent and the Respondent has now taken steps to prevent this re-direct links.
Respondent denies that he has engaged in a pattern of registering the disputed domain names in order to prevent the Complainant as owner of the trademark from reflecting the mark in a corresponding domain name. He states that he registered the disputed domain names so that no one else could infringe on his future business.
Respondent asserts that he has intentionally done everything in his power not to infringe on the Complainant’s rights. He was aware from his research with NUANS that the Complainant opposes any and all uses of the word YETI no matter the nature of the business.
As there are only twenty six letters in the alphabet, and only so many ways to use them, it is inevitable that “you are going to experience similar names.”
Finally Respondent asserts that his products differ greatly from that of the Complainants and many other companies operating with the word “yeti” in their names.
Complainant is the registered owner of the YETI trademark and has a large international portfolio of trade mark registrations and pending applications for the marks YETI, YETI COOLERS, YETI TANK, YETI COLSTER, and YETI RAMBLER COLSTER in Argentina, Australia, Brazil, Canada, China, European Community, India, Japan, Mexico, New Zealand, Norway, Philippines, Russia, South Africa, Switzerland, Thailand, and United Arab Emirates and the United States including:
· United States registered trademark YETI, registration number 3203869, registered on January 30, 2007 in international class: 21 for “portable coolers” and
· United States registered trademark YETI, registration number 4948371, registered on October 30, and 2007 in international class: 25 for “Clothing, namely, t-shirts, jerseys, shorts, hats, caps, sweatshirts, socks, jackets”.
Complainant became the registrant of the domain names <yeticoolers.com> in 2006 and <yeti.com> in 2015 which resolve to Complainant’s website that receives substantial traffic from persons seeking information about Complainant and customers wishing to purchase products including portable coolers, insulated “beverageware” and clothing.
Respondent is the owner of the disputed domain names that resolved to a website that contains hyperlinks to third parties who are direct competitors of Complainant but has since removed the hyperlinks.
Each of the disputed domain names were registered on December 17, 2015.
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 the domain names should be cancelled or transferred:
i. the domain names registered by Respondent are 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 names; and
iii. the domain names have been registered and are being used in bad faith.
Complainant has proven to the satisfaction of this Panel that it is the owner of the YETI trademark and other trademarks incorporating the element “yeti” through its above-mentioned trademark registrations.
Having compared the disputed domain names with Complainant’s mark this Panel finds that each of the disputed domain names are confusingly similar to the YETI mark. Each of the disputed domain names are identical except for their respective <.biz>, <.com>, <.info>, <.net>, and <.org> gTLD extensions. Each of the disputed domain names consist of the element “yetti” in combination with the descriptive word “nation”.
Respondent has admitted that the “yetti” element is a deliberate misspelling of the word “yeti” and he chose it to distinguish it from Complainant’s YETI mark.
This Panel finds that the additional letter “t” does not serve to distinguish the word “yetti” from Complainant’s mark. Neither does the addition of the descriptive word-element “nation” distinguish the domain names from the mark. In fact, because Complainant has used the word “nation” in combination with its YETI mark in its marketing materials, the additional element actually adds to the confusion.
Furthermore this Panel finds that the word “yetti” is the dominant element in each of the disputed domain names.
In the circumstances this Panel finds that the Complainant has succeeded in the first element of the test in Policy Paragraph 4(a)(i) in respect of each of the disputed domain names.
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has not authorized Respondent to use Complainant’s YETI mark, or to register domain names incorporating the YETI mark. There is no evidence that Respondent has ever used the disputed domain names in connection with a bona fide offering of goods or services. Respondent has not made, and is not making any legitimate noncommercial or fair use of the domain name. On the evidence Respondent is using the domain names for a commercial purpose. Respondent’s use of the disputed domain names is calculated to misleadingly divert consumers. Nothing in the public record, including WHOIS records, referred to in the Complaint, suggests that Respondent is commonly known by the disputed domain names.
In such circumstances, Respondent bears the burden of production. Respondent’s defense is that he proposes to use the disputed domain names for a commercial patented product which is unrelated to the business for which Complainant uses the YETI mark and the additional letter in the word “yetti” is sufficient to distinguish the mark. He has however failed to provide any evidence to prove that before any notice to him of the dispute, his use of, or demonstrable preparations to use, the domain names at issue or a corresponding domain name in connection with a bona fide offering of goods or services. He has not provided any information about the invention for which he has applied for patent protection. In his response he refers to receipts for two pending patent applications but has only provided a copy of one page of one patent application. Furthermore nothing on the web pages to which the disputed domain names resolve substantiates his defense.
As Respondent has failed to discharge the burden imposed on him by the prima facie case made out by Respondent, this Panel finds that the Complainant has also succeeded in the second element of the test in Policy Paragraph 4(a)(ii) in respect of each of the disputed domain names
On the evidence, this Panel finds that the disputed domain names were chosen and registered by Respondent to divert Internet Users away from Complainant’s websites.
Respondent has admitted that he was aware of Complainant’s YETI mark and reputation when he chose and registered the disputed domain names. His submission that he registered the disputed domain names with an additional letter “t” to distinguish them from Complainant’s mark is simply not credible.
On the evidence this Panel is satisfied that the disputed registrations are a typical example of typosquatting.
In reaching this decision this Panel is conscious that Complainant has used the word “nation” in combination with its YETI mark in marketing materials and obviously Respondent was aware of this.
Respondent’s claims that he registered the disputed domains to launch a forthcoming product based on an invention for which he has applied for patent protection is not credible and he has not furnished any evidence to substantiate this claim.
The disputed domain names resolved to a website with links to third party websites with links to direct competitors of Complainant. He claims that he is not responsible for posting the links as the domain names resolve to an inactive web page maintained by the Registrar and he has arranged for the links to be removed from the site. Even if this explanation were accepted, it remains the case that Respondent is responsible for the registrations over which he has control and bears the responsibility for allowing them to re-direct traffic to Complainant’s website.
This Panel does not accept Respondent’s explanations for his registration and use of the domain names. It is clear that he chose to combine the element “nation” with a misspelling of the YETI trademark because Complainant was marketing itself as “YETI nation” and he registered and is using the disputed domain names to take predatory advantage of Complainant’s divert Internet traffic away from Complainant in bad faith.
This Panel therefore finds that the Complainant has succeeded in the first element of the test in Policy Paragraph 4(a)(ii)
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yettination.biz>, <yettination.com>, <yettination.info>, <yettination.net>, and <yettination.org> domain names be TRANSFERRED from Respondent to Complainant.
____________________
James Bridgeman, Panelist
Dated: July 22, 2016
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