YETI Coolers, LLC v. Ryan Himmel
Claim Number: FA1606001677869
Complainant is YETI Coolers, LLC (“Complainant”), represented by Katherine Laatsch Fink of Banner & Witcoff, Ltd., Illinois, USA. Respondent is Ryan Himmel (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <yetimonogram.com> and <yetistickers.com>, registered with GoDaddy.com, LLC.
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.
On June 3, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <yetimonogram.com> and <yetistickers.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC 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 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@yetimonogram.com and postmaster@yetistickers.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 July 1, 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 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 names be transferred from Respondent to Complainant.
Complainant’s Contentions in This Proceeding:
Complainant uses the YETI mark in connection with its portable cooler and insulated beverage ware business. Complainant 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 Ex. 5. Respondent’s <yetimonogram.com> and <yetistickers.com> domain names are confusingly similar to Complainant’s mark as they each incorporate the YETI mark in its entirety, adding only the generic terms “monogram” or “stickers” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <yetimonogram.com> and <yetistickers.com> domain names. Respondent is not commonly known by the disputed domain names. Respondent is not making a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use through the <yetimonogram.com> and <yetistickers.com> domain names. Rather, the domain names both resolve to websites containing hyperlinks that redirect to the products of Complainant’s competitors. See Compl., at Attached Exs. 11, 13 (“Personalized Tumblers,” “YETI In Stock - Provengo,” “Soft Sided Coolers”).
Respondent’s registration and use of the <yetimonogram.com> and <yetistickers.com> domain names serves as a disruption of Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) because of the inclusion of competing hyperlinks. See Compl., at Attached Exs. 11, 13. Respondent attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the websites according to Policy ¶ 4(b)(iv). 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. However, the Panel must see actual knowledge in order to find bad faith.
Respondent’s
Contentions in This Proceeding:
Respondent did not submit a response. The Panel notes that Respondent registered the <yetimonogram.com> and <yetistickers.com> domain names March 30, 2016.
Complainant established rights to and legitimate interests in the mark contained in its entirety within the two disputed domain names.
Respondent has not shown rights or legitimate interests in the disputed domain names contained Complainant’s protected marks.
Respondent registered two disputed domain names containing Complainant’s protected mark and both are confusingly similar to Complainant’s protected mark.
The Panel finds that the wording of the disputed domain names and the use establishes actual knowledge by Respondent of Complainant’s rights and legitimate interests in its protected mark and thus finds that Respondent registered and used the disputed domain names 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.”).
Preliminary Issue: Consent to Transfer
The Forum received documentation from Respondent, which is identified in this proceeding as “Other Correspondence.” In this document, Respondent purports to consent to the transfer of the <yetimonogram.com> and <yetistickers.com> domain names. Respondent asked in the correspondence how to go about releasing the domain names, following up with “I have no problem doing so.” See Correspondence—Respondent. The Panel notes that while Respondent consents to transfer the <yetimonogram.com> and <yetistickers.com> domain names to Complainant, this offer occurred after the initiation of this proceeding, and GoDaddy.com, LLC has placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain names while this proceeding is still pending. As a result, the Panel may find that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain names but instead agrees to transfer the domain names in question to Complainant, the Panel may forego traditional UDRP analysis and order an immediate transfer of the <yetimonogram.com> and <yetistickers.com> domain names. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
However, Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain names without a decision on the merits by the Panel and the Panel notes that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
Therefore, the Panel will analyze and determine this case on the merits under the elements of the UDRP.
Identical or Confusingly Similar:
Complainant uses the YETI mark in connection with its portable cooler and insulated beverage ware business. Complainant claims it registered the YETI mark with the USPTO (e.g., Reg. No. 3,203,869, registered Jan. 30, 2007), which demonstrates rights in the mark. See Compl., at Attached Ex. 5. A valid USPTO registration is sufficient to establish rights in a trademark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i).). Therefore, the Panel finds that Complainant demonstrated rights in the YETI mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <yetimonogram.com> and <yetistickers.com> domain names are confusingly similar to Complainant’s mark as they each incorporate the YETI mark in its entirety, only adding the generic terms “monogram” or “stickers,” and the gTLD “.com.” Such alterations to marks are insufficient to overcome a finding of confusing similarity under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). The Panel agrees with Complainant that Respondent’s<yetimonogram.com> and <yetistickers.com> domain names are 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 the two disputed domain names are confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and 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 such 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 <yetimonogram.com> and <yetistickers.com> domain names. First, Complainant asserts that Respondent is not commonly known by the disputed domain names. The Panel notes the WHOIS information regarding the <yetimonogram.com> and <yetistickers.com> domain names lists “Ryan Himmel” as registrant. Complainant also asserts that it has not given Respondent permission to use its YETI mark. Respondent failed to submit a response in this proceeding. Therefore, in light of the available evidence, the Panel finds no basis to find Respondent commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Further, Complainant argues that Respondent is not making a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use through the <yetimonogram.com> and <yetistickers.com> domain names. Rather, Complainant contends that the domain names both resolve to websites containing hyperlinks that redirect to the products of Complainant’s competitors. See Compl., at Attached Exs. 11, 13. The link titles include “Personalized Tumblrs,” “Soft Sided Coolers,” and “Personalized Gifts.” See id. The Panel notes that the two websites also offer hyperlinks to unrelated websites, including links “Wireless Home Security,” “Used Cars Under $5,000,” and “Life Insurance Calculator.” See id. Complainant contends that Respondent receives pay-per-click revenue in connection with the links. A respondent’s use of a mark to operate a pay-per-click website containing links to the goods of a complainant’s competitors or unrelated goods or services is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) and (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”); see also Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). Therefore, this Panel agrees that Respondent’s <yetimonogram.com> and <yetistickers.com> domain names are not being used in a bona fide offering of goods or services and are not being used as 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 names containing Complainant’s protected mark in its entirety; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant contends that Respondent’s registration and use of the <yetimonogram.com> and <yetistickers.com> domain names serve as a disruption of Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) because of the inclusion of competing hyperlinks. See Compl., at Attached Exs. 11, 13. A respondent’s diversion of Internet users to competitors via hyperlinks related to a complainant’s legitimate business to constitute bad faith disruption under Policy ¶ 4(b)(iii). 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).”). Therefore, the Panel agrees that Respondent’s registration and use of the <yetimonogram.com> and <yetistickers.com> domain names constitutes bad faith disruption under Policy ¶ 4(b)(iii).
Further, Complainant argues that Respondent attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the websites. Complainant contends that Respondent registered the disputed domain names to create a likelihood of confusion with Complainant and Complainant’s mark in order to profit from users looking for Complainant’s website. The Panel agrees with Complainant and holds that Internet user confusion that results in the redirection to Respondent’s site with links to the goods of Complainant’s competitors supports findings of bad faith registration and use under Policy ¶ 4(b)(iv). See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)).
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 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 here finds that, due to the fame of Complainant's mark, due to the use of Complainant’s mark as the foundation of the disputed domain names, and given the use of the disputed domain names, this Panel finds that Respondent had actual knowledge of the mark and Complainant's rights in it. This Panel holds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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 used the disputed domain names 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 <yetimonogram.com> and <yetistickers.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 7, 2016
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