YETI Coolers, LLC v. Joe Berry
Claim Number: FA1606001679058
Complainant is YETI Coolers, LLC ("Complainant"), represented by Katherine Laatsch Fink of Banner & Witcoff, Ltd., Illinois, United States. Respondent is Joe Berry ("Respondent"), South Carolina. United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cooleryeti.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 10, 2016; the Forum received payment on June 10, 2016.
On June 13, 2016, GoDaddy.com, LLC confirmed by email to the Forum that the <cooleryeti.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 20, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 2016 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@cooleryeti.com. Also on June 20, 2016, the Written Notice of the Complaint, notifying Respondent of the email 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.
An email message was received from Respondent, stating that Respondent had never used the disputed domain name and inquiring how he might assign the name to Complainant. Having received no formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 18, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 a formal response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant sells portable coolers, insulated beverage containers, and other products under the YETI mark. Complainant holds numerous registrations for the YETI mark in the United States and other jurisdictions, many dating back several years, and also claims common law rights in the mark.
The disputed domain name <cooleryeti.com> was registered in 2016 through a privacy registration service, concealing the registrant's identity. The domain name resolves to a registrar-provided placeholder page that includes links to competitors of Complainant. Complainant states that it has no relationship or association with Respondent, that it has not authorized Respondent to use its mark, and that Respondent is not commonly known by the disputed domain name. Complainant contends on these grounds that the disputed domain name is confusingly similar to its YETI mark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used 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 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 (Nat. Arb. 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.").
The disputed domain name corresponds to Complainant's registered mark YETI, adding only the word "cooler," which refers to one of Complainant's products, and the ".com" top-level domain. These additions do not diminish the similarity between the domain name and Complainant's mark. See, e.g., YETI Coolers, LLC v. Elisa Marek / Etch Workz, FA 1672835 (Forum June 9, 2016) (finding <youryeti.com> confusingly similar to YETI); Innovative Marketing & Distribution, Inc., d/b/a Engel USA v. Roy Seiders, FA 1605344 (Forum Mar. 24, 2015) (finding <engelcoolers.com> confusingly similar to ENGEL). The Panel finds that the disputed domain name is confusingly similar to Complainant's mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and Respondent has not made any active use of the domain name. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
The disputed domain name resolves to a web page that includes links to competitors of Complainant. As the page appears to be a default page generated and maintained by the domain name registrar, the Panel would be reluctant to ascribe bad faith to Respondent solely on this basis. However, the domain name was registered through a privacy registration service in an apparent effort to conceal Respondent's identity, and it combines Complainant's mark with a generic term for its products. Furthermore, Respondent has failed to come forward with any explanation for its use of Complainant's mark or its plans for the domain name. These circumstances support an inference that Respondent registered the domain name and is maintaining the registration with the intent to profit from confusion with Complainant's mark. See YETI Coolers, LLC v. John c Cooper III, FA1677553 (Forum July 5, 2016). The Panel therefore finds that the disputed domain name was registered and has been used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cooleryeti.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: July 21, 2016
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