YETI Coolers, LLC v. Deke Bell
Claim Number: FA1606001677871
Complainant is YETI Coolers, LLC (“Complainant”), represented by Katherine Laatsch Fink of Banner & Witcoff, Ltd., Illinois, USA. Respondent is Deke Bell (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <monogramyeti.com>, 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.
Hon. Karl V. Fink (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, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <monogramyeti.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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@monogramyeti.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.
On June 27, 2016, the Forum received email correspondence from Respondent requesting an extension to file a Response.
Having received no Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 7, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (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.
Complainant
Complainant holds a registration for its YETI mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,203,869, registered Jan. 30, 2007). Complainant uses the mark in connection with selling portable coolers, insulated beverageware, clothing, and other products. Respondent’s <monogramyeti.com> domain name is confusingly similar as it includes the YETI mark, the generic term “monogram,” and the gTLD “.com.”
Respondent has no rights or legitimate interests in the <monogramyeti.com> domain name. Respondent is not commonly known by the disputed domain name. Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <monogramyeti.com> domain name. Rather, Respondent’s website features links to third party suppliers offering products that compete with Complainant’s offerings (for example, clicking on the “Personalized Mugs” link resolves a page of PersonalizationMall.com’s website, which is offering products that directly compete with YETI’s products).
Respondent’s registration and use of the <monogramyeti.com> domain name serves as a disruption of Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) because of the inclusion of competing hyperlinks. Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website according to Policy ¶ 4(b)(iv). Because Complainant’s trademark registrations for the YETI mark existed well before the registration of the disputed domain name, Respondent had actual or constructive knowledge of Complainant's rights in the mark.
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <monogramyeti.com> 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 purports that it holds a registration for its YETI mark with the USPTO (e.g., Reg. No. 3,203,869, registered Jan. 30, 2007). Complainant uses the mark in connection with selling portable coolers, insulated beverageware, clothing, and other products. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the YETI mark per Policy ¶ 4(a)(i).
Respondent’s <monogramyeti.com> domain name is confusingly similar as it includes the YETI mark, the generic term “monogram,” and the gTLD “.com.” In YETI Coolers, LLC v. Kevin Dargie, the Panel found the respondent’s addition of the generic terms “custom” and “my,” and the gTLD “.com” rendered <mycustomyeti.com> confusingly similar to the YETI mark. FA 1677551 (Forum July 1, 2016); see also 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 therefore finds that the <monogramyeti.com> domain name is confusingly similar to the YETI mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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 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 disputed domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name. The WHOIS information regarding the <monogramyeti.com> domain name lists “Deke Bell” as registrant of record. Complainant also asserts that it has not given Respondent permission to use its YETI mark. Respondent has failed to submit a response in this proceeding. Therefore, in light of the available evidence, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name 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).
Complainant argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use through the <monogramyeti.com> domain name. Complainant contends that Respondent’s website features links to third party suppliers offering products that compete with Complainant’s offerings. For example, clicking on the “Personalized Mugs” link resolves a page of PersonalizationMall.com’s website, which is offering products that directly compete with YETI’s products. Complainant contends that Respondent presumably receives pay-per-click revenue in connection with the links. Panels have found 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 not to constitute 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, the Panel finds that Respondent does not have rights or legitimate interests in the <monogramyeti.com> domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant asserts that Respondent’s registration and use of the <monogramyeti.com> domain name serves as a disruption of Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) because of the inclusion of competing hyperlinks. Panels have found 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 finds that Respondent’s registration and use of the <monogramyeti.com> domain name constitutes bad faith disruption under Policy ¶ 4(b)(iii).
Complainant argues that Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Complainant contends that Respondent registered the disputed domain name 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 constitutes 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 name. Complainant argues that Respondent has actual or at least 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 finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Therefore, the Panel finds that Respondent registered 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).
Complainant has proved this element.
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 <monogramyeti.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: July 8, 2016
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