YETI Coolers, LLC v. Robert Wesley
Claim Number: FA1606001680756
Complainant is YETI Coolers, LLC (“Complainant”), represented by Katherine Laatsch Fink of Banner & Witcoff, Ltd., Illinois, USA. Respondent is Robert Wesley (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <coatmyyeti.com> and <powdercoatmyyeti.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 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 <coatmyyeti.com> and <powdercoatmyyeti.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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@coatmyyeti.com, and postmaster@powdercoatmyyeti.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 12, 2016.
On July 20, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant
Complainant uses the YETI mark in connection with its portable cooler and insulated beverageware business. Complainant has 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. Respondent’s <coatmyyeti.com> and <powdercoatmyyeti.com> domain names are confusingly similar to Complainant’s mark as they each incorporate the YETI mark in its entirety, only adding the generic phrases “coat my” or “powder coat my,” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <coatmyyeti.com> and <powdercoatmyyeti.com> domain names. Respondent is not commonly known by the disputed domain names. Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <coatmyyeti.com> and <powdercoatmyyeti.com> domain names. Rather, the domain names both resolve to websites containing hyperlinks that redirect to the products of Complainant’s competitors. The displayed links include “Personalized Tumblers,” “YETI In Stock - Provengo,” “Stainless Steel Bottles.”
Respondent’s registration and use of the <coatmyyeti.com> and <powdercoatmyyeti.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. 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). 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.
Respondent
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Respondent was under the impression that the disputed domain names were currently inactive and was unaware of their parked nature. Respondent argues the domains’ use corresponds with the domain name.
Respondent claims to be a customizer of Complainant’s products. Respondent does not sell Complainant’s or competing products, but rather powder coats them. Respondent denies attempting to attract for commercial gain by misleading Internet users.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <coatmyyeti.com> and <powdercoatmyyeti.com> domain names.
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 names registered by Respondent are 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 names; and
(3) the domain names have been registered and are 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 mark with the USPTO (e.g., Reg. No. 3,203,869, registered Jan. 30, 2007), which it contends demonstrates rights in the mark. Panels have found a valid USPTO registration to be 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 has demonstrated rights in the YETI mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <coatmyyeti.com> and <powdercoatmyyeti.com> domain names are confusingly similar to Complainant’s mark as they each incorporate the YETI mark in its entirety, only adding the generic phrase “coat my” or “powder coat my,” and the gTLD “.com.” Panels have found such alterations to marks to be insufficient in overcoming 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 therefore finds that Respondent’s <coatmyyeti.com> and <powdercoatmyyeti.com> domain names are confusingly similar to the YETI mark under Policy ¶ 4(a)(i).
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 <coatmyyeti.com> and <powdercoatmyyeti.com> domain names. First, Complainant asserts that Respondent is not commonly known by the disputed domain names. The WHOIS information regarding the <coatmyyeti.com> and <powdercoatmyyeti.com> domain names lists “Robert Wesley” as registrant. Complainant also asserts that it has not given Respondent permission to use its YETI mark. Therefore, the Panel finds Respondent is not 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).
Complainant argues that Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <coatmyyeti.com> and <powdercoatmyyeti.com> domain names. Respondent claims to be a powder coater who customizes YETI products through powder coating. As such, Respondent argues the <coatmyyeti.com> and <powdercoatmyyeti.com> domains names reflect the use of the domains. However, the domain names both resolve to websites containing hyperlinks that redirect to the products of Complainant’s competitors. The titles of the links include “Personalized Tumblers,” “YETI In Stock - Provengo,” and “Stainless Steel Bottles.” The websites also offer hyperlinks to unrelated websites, including links “How to Patent Your Idea,” “Used Cars Under $5,000,” and “Local Carpeting Prices.” Complainant contends that Respondent 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 does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use 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’s <coatmyyeti.com> and <powdercoatmyyeti.com> domain names constitute neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant contends that Respondent’s registration and use of the <coatmyyeti.com> and <powdercoatmyyeti.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. 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 <coatmyyeti.com> and <powdercoatmyyeti.com> domain names 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 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. Respondent denies attempting to capitalize on Internet user confusion and denies that it is selling Complainant’s products. Rather Respondent maintains it offers an aftermarket customization business that does not compete with Complainant. The Panel agrees with Complainant’s argument and finds 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 names, and Respondent therefore had constructive knowledge of Complainant's rights in the mark. Panels have concluded that constructive notice is not sufficient to support a bad faith finding, however the Panel finds that Respondent had actual knowledge of the YETI 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 <coatmyyeti.com> and <powdercoatmyyeti.com> domain names be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: July 25, 2016
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