YETI Coolers, LLC v. Brock Hutchinson
Claim Number: FA1606001679922
Complainant is YETI Coolers, LLC (“Complainant”), represented by Katherine Laatsch Fink of Banner & Witcoff, Ltd., Illinois, USA. Respondent is Brock Hutchinson (“Respondent”), represented by Daniel J. Fischer of Koley Jessen PC, LLO, Nebraska, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <30ozyeti.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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 17, 2016; the Forum received payment on June 17, 2016.
On June 20, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <30ozyeti.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 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 25, 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@30ozyeti.com. Also on June 21, 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.
A timely Response was received and determined to be complete on July 25, 2016.
On August 2, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in YETI and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent broadly denies each of those allegations. It does not contest the claim to trademark rights but argues that the domain name is not confusingly similar to the trademark since the terms added to the mark create a new and distinctive composite expression. Further, that there is no actual confusion because the domain name has not been used. Furthermore, in its own words:
[T]he domain is not confusingly similar to Complainant’s mark because “30OZYETI” is general and descriptive of a certain product made by Yeti and is not used as a trademark. … [I]f Respondent was to use the Disputed Domain Name, the sole purpose would be to distinguish Yeti products from Big Frig products and engage in comparative advertising between its 30 ounce product and Yeti’s 30 ounce product, as it already does on Big Frig’s website.
. … Respondent registered the Disputed Domain Name to distinguish Brig Frig products from Yeti products, not to confuse them ... Respondent would only use the website to compare Big Frig and Yeti products so customers can discover that Big Frig products perform just as well, or better, than Yeti products at a cheaper price. The Disputed Domain Name would be used to promote Respondent’s products by advocating the differences between Big Frig and Yeti. Thus, Respondent’s goal is precisely not to confuse internet users about the Disputed Domain Name’s association with Yeti, rather to promote their product’s differences and why to choose a Big Frig product over a Yeti product, such as Yeti’s 30 ounce cup. The foregoing demonstrates the Disputed Domain Name is not confusingly similar to the Yeti Mark.
Respondent asserts that it has rights and legitimate interests in the disputed domain name because it:
[W]ould only use the Disputed Domain Name for comparative advertising purposes. … Respondent would use the Disputed Domain Name to promote the differences between Big Frig and Yeti products. Respondent’s company promotes its product by openly comparing it to Yeti products and encourages customers to do the same. Respondent believes when customers compare Big Frig’s product to Yeti products, they will find that Big Frig’s product performs as well, or better, than Yeti products at a cheaper price.
Respondent submits that it is not using the disputed domain in bad faith and did not register the disputed domain in bad faith. Respondent states that Complainant has not provided any evidence of bad faith registration and there can be no bad faith use because Respondent has not used the domain name.
The factual findings pertinent to the decision in this case are that:
1. Complainant and Respondent are competitors in the same market for the sale of portable coolers;
2. Complainant sells coolers by reference to the trademark YETI;
3. Complainant owns United States Patent and Trademark Office (“USPTO”) Reg. No. 3,203,869, registered Jan. 30, 2007 for the word mark, YETI;
4. the disputed domain name was registered on February 22, 2016;
5. the domain name is parked and resolves to a webpage with links, some of which show competitive products to those sold under the trademark; and
6. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides proof of its USPTO registration for YETI, the Panel is satisfied that it has trademark rights.[i]
For the purposes of comparison, the generic top-level domain (gTLD), “.com”, can be disregarded. The comparison then reduces to a comparison of the term, “30ozyeti” with YETI. It is clear from Respondent’s submissions that it selected the terms “30” and “oz” because they referred to a “30 ounce” vessel and Panel is of the view that the element, “30oz”, would be so understood by Internet users as a reference to “30 ounce”. The words, “30 ounce”, and their abbreviation, “30oz”, are essentially generic. The distinctive part of the composite expression “30ozyeti” is the trademark and so Panel finds the disputed domain name to be confusingly similar to the trademark. [ii]
Panel notes here for the sake of completeness that the relevant question is not (as Respondent would suggest) whether the domain name has caused confusion, but the abstracted question of whether the domain name is confusingly similar to the trademark, regardless of use. Similarly, argument about whether the intended future possible use of the domain name will cause actual confusion or not is irrelevant for the purposes of paragraph 4(a)(i) of the Policy.
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[iii]
The publicly available WHOIS information identifies Respondent as “Brock Hutchinson” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. The evidence is that the domain name is parked with its Registrar and resolves to a webpage with links, some of which show competitive products to those sold under the trademark. Panel finds that such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.[iv]
The onus shifts to Respondent to establish a legitimate interest in the domain name. Respondent’s argument about comparative advertising is irrelevant since there has been no use in good faith, nor is there compelling evidence of preparations for such use. Respondent’s argument that it has not sought to misleadingly divert Complainant’s potential customers because it has not so far used the domain name fails to take account of the website content at the parking page to which the domain name resolves and the consistent line of authority in earlier UDRP cases which attributes responsibility for website content (generated by the parking company or otherwise) to the owner of the at-issue domain name. In this case, at least some of that material is competitive with Complainant’s business under the trademark.
Panel finds that Respondent has no rights or interests in the domain name and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.
Respondent contends that it has not acted in bad faith because Complainant has not provided any evidence of registration of the domain name in bad faith. Further, Respondent contends that there is no use in bad faith because Respondent is not using the domain. To the contrary, Panel finds that Respondent’s conduct falls squarely under paragraph 4(b)(iv) above. Panel has already found the terms to be confusingly similar and the links exist for Respondent’s commercial gain in terms of likely pay-per-click revenue. Panel finds registration and use in bad faith under paragraph 4(b)(iv)[v] and accordingly finds that Complainant has satisfied the final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <30ozyeti.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: August 11, 2016
[i] See State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
[ii] See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”)
[iii] See Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[iv] See Provide Commerce, Inc. v. e on Craze, FA1506001626318 (Forum Aug. 11, 2015) holding that the respondent was not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii) where the respondent was using the disputed domain name to host generic links to third-party websites, some of which directly competed with the complainant’s business.
[v] See, for example, H-D Michigan Inc. v. Buell, FA 1106640 (Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”); see also, The Dress Barn, Inc. v. Pham Dinh Nhut, FA1503001611220 (Forum May 15, 2015) (“The Panel agrees that Respondent’s inclusion of various hyperlinks; some of which direct Internet users to competing websites of Complainant, some which direct Internet users to Complainant’s own website, and some of which are unrelated to Complainant’s business; evince bad faith attraction for commercial gain.”).
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