YETI Coolers, LLC v. Erik McGuire
Claim Number: FA1606001677861
Complainant is YETI Coolers, LLC (“Complainant”), represented by Katherine Laatsch Fink of Banner & Witcoff, Ltd., Illinois, United States. Respondent is Erik McGuire (“Respondent”), Florida, United States
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <theyetistore.com>, registered with NameSilo, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) 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, NameSilo, LLC confirmed by e-mail to the Forum that the <theyetistore.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 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@theyetistore.com. 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.
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 the Honorable Charles K. McCotter, Jr. (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the YETI mark in connection with its websites to sell YETI portable coolers, insulated beverage ware, clothing, and other available products. Complainant has registered the YETI mark with the United States patent and Trademark Office (“USPTO”) (Reg. No. 3,203,869, registered Jan. 30, 2007), which establishes rights in the mark. Respondent’s <theyetistore.com> domain name is confusingly similar to the YETI mark as it includes the mark in its entirety while adding the article “the,” the generic term “store,” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <theyetistore.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 <theyetistore.com> domain name. Rather, the domain name resolves to an inactive website with an error message stating, “This site can’t be reached.”
Respondent is using the <theyetistore.com> domain name in bad faith. Respondent has failed to make an active use of the disputed domain name. Further, Respondent had actual and/or constructive notice of the YETI mark and Complainant’s rights therein because of the mark’s fame, notoriety and multiple trademark registrations.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, YETI Coolers, LLC, uses the YETI mark in connection with its websites to sell YETI portable coolers, insulated beverage ware, clothing, and other available products. Complainant has rights in the YETI mark through registration with the USPTO (ie, Reg. No. 3,203,869, registered Jan. 30, 2007). Respondent’s <theyetistore.com> domain name is confusingly similar to the YETI mark.
Respondent, Erik McGuire, registered the <theyetistore.com> domain name on December 19, 2015.
Respondent has no rights or legitimate interests in the <theyetistore.com> domain name. Respondent is not commonly known by the disputed domain name. Respondent does not have a relationship with Complainant. Complainant has not 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 of the <theyetistore.com> domain name. Rather, the domain name resolves to an inactive website with an error message stating, “This site can’t be reached.”
Respondent is using the <theyetistore.com> domain name in bad faith. Respondent has failed to make an active use of the disputed domain name. Further, Respondent had actual notice of the YETI mark and Complainant’s rights therein when registering the domain name.
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.”).
Complainant has rights in the YETI mark under Policy ¶ 4(a)(i) through registration with the USPTO. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (USPTO registrations are sufficient to show a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s <theyetistore.com> domain name is confusingly similar to the YETI mark under Policy ¶ 4(a)(i) as it includes the entirety of the mark in combination with the article “the,” the generic term “store,” and the “.com” gTLD. Panels have found such alterations to a mark are insufficient in overcoming 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 exists 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 Antoun v. Truth Squad, FA 114766 (Forum Aug. 21, 2002) (stating that the article "the" is "often added only for grammatical purposes, and may be superfluous to the name itself").
Respondent has no rights or legitimate interests in the <theyetistore.com> domain name. Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii). There is no relationship or association between Complainant and Respondent. Complainant has not authorized Respondent to use the YETI mark. The WHOIS information for the domain name, lists “Erik McGuire” as registrant of record. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (concluding 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).
Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the <theyetistore.com> domain name. The domain name resolves to an inactive website displaying an error message stating, “This site can’t be reached.” Panels have found such inactive use by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent’s inactive use of the <theyetistore.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)).
Respondent had actual knowledge of Complainant's rights in the YETI mark. Therefore, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See 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").
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 <theyetistore.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 15, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page