YETI Coolers, LLC v. JAMES DARRAR
Claim Number: FA1606001680754
Complainant is YETI Coolers, LLC (“Complainant”), represented by Katherine Laatsch Fink of Banner & Witcoff, Ltd., Illinois, USA. Respondent is JAMES DARRAR (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coolersyeti.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 A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 22, 2016; the Forum received payment on June 22, 2016.
On June 23, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <coolersyeti.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 24, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 14, 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@coolersyeti.com. Also on June 24, 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 8, 2016.
On July 14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 uses the YETI mark in connection with its portable cooler and insulated beverageware business. Complainant has registered the YETI COOLERS mark with the Philippines Patent and Trademark Office (No. 4-2011-008-554, registered June 7, 2012), which demonstrates rights in the mark. Respondent’s <coolersyeti.com> domain name is confusingly similar to Complainant’s mark.
Respondent has no rights or legitimate interests in the <coolersyeti.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the YETI mark in connection with domain registrations. Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <coolersyeti.com> domain name. Rather, the domain name exploits Internet user confusion by allowing competing hyperlinks to display on the resolving page to the <coolersyeti.com> domain name. Further, clicking the “Coolers and Ice Chests” hyperlink resolves to “EVAKOOL-USA,” a competitor of Complainant.
Respondent’s registration and use of the <coolersyeti.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 websites according to Policy ¶ 4(b)(iv).
B. Respondent
Respondent concedes Policy ¶¶ 4(a)(i) and (ii).
Under Policy ¶ 4(a)(iii), Respondent has not engaged in bad faith registration and use. Rather, the domain was merely registered by Respondent and inadvertently parked by GoDaddy, the registrar, without Respondent’s express permission.
The Panel notes that the <coolersyeti.com> domain name was registered on March 30, 2016.
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.
Complainant uses the YETI mark in connection with its portable cooler and insulated beverageware business. Complainant claims it has registered the YETI COOLERS mark with the Philippines Patent and Trademark Office (e.g., Reg. No. 4-2011-008-554, registered June 7, 2012). The Panel agrees that Complainant has demonstrated rights in the YETI COOLERS mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <coolersyeti.com> domain name is confusingly similar to Complainant’s mark as it simply reverses the order of the words “YETI COOLERS” to “COOLERS YETI.” Panels have found minor alterations to marks to be insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). The Panel therefore finds that Respondent’s <coolersyeti.com> domain name is confusingly similar to the YETI COOLERS mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in the <coolersyeti.com> domain name. First, Complainant asserts that Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the YETI COOLERS mark in connection with domain registrations. The Panel sees that the WHOIS information regarding the <coolersyeti.com> domain name lists “JAMES DARRAR” as registrant. The Panel notes that Respondent has conceded Policy ¶ 4(a)(ii) as a whole, and finds that Complainant has established a prima facie case that has not been rebutted. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Next, Complainant contends that Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <coolersyeti.com> domain name. Rather, Complainant asserts that the domain name exploits Internet user confusion by allowing competing hyperlinks to display on the resolving page to the <coolersyeti.com> domain name. Further, clicking the “Coolers and Ice Chests” hyperlink resolves to “EVAKOOL-USA,” a competitor of Complainant. 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 does not 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, FA1626253 (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.”). Therefore, the Panel agrees that Respondent’s <coolersyeti.com> domain name constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Respondent urges that it has not engaged in bad faith registration and use. Rather, according to Respondent, the domain was merely registered by Respondent and inadvertently parked by GoDaddy, the registrar, without Respondent’s express permission. However, in State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Forum Nov. 20, 2007), another case in which the disputed domain name was parked with GoDaddy, the Panel held: “As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.” Similarly, this Panel finds that Respondent has engaged in bad faith registration and use of the YETI COOLERS mark. The fact that Respondent appropriated both words of Complainant’s mark and simply transposed their order further supports this bad faith registration finding.
Thus, Complainant has also satisfied ¶ 4(a)(iii) 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 <coolersyeti.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: July 28, 2016
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