YETI Coolers, LLC v. bruno ringwald
Claim Number: FA1606001677865
Complainant is YETI Coolers, LLC (“Complainant”), represented by Katherine Laatsch Fink of Banner & Witcoff, Ltd., Illinois, USA. Respondent is bruno ringwald (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myyeti.net>, registered with Gandi SAS.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically June 3, 2016; the Forum received payment June 3, 2016. The Complaint was submitted in both French and English.
On June 7, 2016, Gandi SAS confirmed by e-mail to the Forum that the <myyeti.net> domain name is registered with Gandi SAS and that Respondent is the current registrant of the name. Gandi SAS verified that Respondent is bound by the Gandi SAS registration agreement and 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 10, 2016, the Forum served the Complaint and all Annexes, including a French Written Notice of the Complaint, setting a deadline of June 30, 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@myyeti.net. Also on June 10, 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 Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant’s Contentions in This Proceeding:
Complainant has Policy ¶ 4(a)(i) rights in the YETI mark pursuant to its United States Patent and Trademark Office (“USPTO”) registration (e.g., Reg. No. 3,203,869, registered Jan. 30, 2007). See Compl., at Attached Ex. 4. Respondent’s <myyeti.net> domain wholly incorporates Complainant’s YETI mark, and merely adds the generic term “my” and the generic top-level domain (“gTLD”) “.net,” making the domain confusingly similar to Complainant’s mark.
Respondent has no rights or legitimate interests in the disputed domain. Respondent is not commonly known by the disputed domain. Respondent’s disputed domain name currently resolves to a website displaying the message: “This site can’t be reached” and: “www.myyet.net’s server DNS address could not be found,” which constitutes inactive holding of the domain. Such use demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The Panel notes Attached Exhibit 8 is a screenshot of Respondent’s resolving webpage.
Respondent registered and is using the disputed domain in bad faith. First, the disputed domain currently resolves to an inactive webpage. Second, because of Complainant’s trademark registrations, it is clear that Respondent registered the domain with at least constructive knowledge of Complainant’s mark and rights therein.
Respondent’s Contentions in This Proceeding:
Respondent did not submit a response in this proceeding. The Panel notes that Respondent registered the <myyeti.net> domain name June 25, 2015.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in French, thereby making the language of the proceedings French. The Panel, after review of the applicable rules on language of the proceedings under the UDRP finds:
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the French language
Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant established rights to and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent did not establish rights or legitimate interests in the disputed domain name containing Complainant’s protected mark.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and passively held the disputed domain name 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant claims that it has Policy ¶ 4(a)(i) rights in the YETI mark pursuant to its USPTO registration (e.g., Reg. No. 3,203,869, registered Jan. 30, 2007). See Compl., at Attached Ex. 4. This Panel agrees; Complainant’s USPTO trademark registration of the YETI mark satisfies Policy ¶ 4(a)(i), with respect to the geographic disparity of the parties. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Accordingly, the Panel finds that Complainant demonstrated rights in its mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <myyeti.net> domain wholly incorporates the YETI mark, and merely adds the generic term “my” and the gTLD “.net,” making the domain confusingly similar to the mark. Complainant provided precedent in which a panel found confusing similarity where a respondent added the term “my” to a fully incorporated mark. See, e.g., NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000). Panels have also agreed that the inclusion of the “.net” gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”). Accordingly, the Panel finds that Respondent’s <myyeti.net> domain is confusingly similar to the YETI mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name that is
confusingly similar to Complainant’s protected mark; Complainant satisfied the
elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof 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 argues that Respondent has no rights or legitimate interests in the <myyeti.net> domain name. Complainant urges that Respondent is not commonly known by the disputed domain name because nothing in the publicly available WHOIS establishes any connection between Respondent and the domain. The Panel notes that the WHOIS information lists “bruno ringwald” as registrant and that Respondent failed to provide any evidence for the Panel’s consideration. Thus, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant argues that Respondent’s domain currently resolves to a website displaying the message: “This site can’t be reached” and: “www.myyet.net’s server DNS address could not be found,” which both constitute inactive holding of the domain. See Compl., at Attached Ex. 8. Complainant asserts that such passive holding of the domain by Respondent demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. A respondent lacks rights and legitimate interests in a domain name where it fails to make any active use of the domain. See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent is not using the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing in its entirety Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
While Complainant has not made arguments under Policy ¶ 4(b), such arguments are not mandatory under the Policy, so long as Complainant shows bad faith registration and use 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 fails to make any active use of the disputed domain. A respondent’s failure to make an active use of a domain is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). The Panel agrees with Complainant’s contention, and finds that Respondent’s passive holding supports findings of bad faith registration and use under a Policy ¶ 4(a)(iii) evaluation.
Complainant asserts that, due to its multiple trademark registrations, Respondent must have had at least constructive knowledge of Complainant's rights in the YETI mark when Respondent registered the disputed domain name. The Panel notes as to Complainant's arguments concerning constructive knowledge that even if the Panel were to assume the constructive notice occurred, the cases show that constructive knowledge is not sufficient evidence to support findings of bad faith registration and use. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel finds, however, that Respondent registered the disputed domain with actual knowledge of Complainant’s YETI mark and rights therein. See Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii)."); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and passively held the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <myyeti.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 19, 2016
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