YETI Coolers, LLC v. Super Privacy Service c/o Dynadot
Claim Number: FA1606001681147
Complainant is YETI Coolers, LLC (“Complainant”), represented by Richard S. Stockton of Banner & Witcoff, Ltd., Illinois, USA. Respondent is Super Privacy Service c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <theyeti.net>, registered with Dynadot, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 24, 2016; the Forum received payment on June 24, 2016.
On June 27, 2016, Dynadot, LLC confirmed by e-mail to the Forum that the <theyeti.net> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 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@theyeti.net. Also on June 28, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
A. Complainant
Complainant contends as follows:
Complainant uses the YETI mark in connection with its portable cooler and insulated beverage-ware 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 <theyeti.net> domain name is confusingly similar to the YETI mark as it incorporates the mark entirely and merely adds the article “the” and the generic top-level domain (“gTLD”) “.net.”
Respondent has no rights or legitimate interests in the <theyeti.net> domain name and has no authority to use the YETI mark. Respondent is not commonly known by the domain name, nor is it affiliated with Complainant in any way. Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <theyeti.net> domain name. Rather, the domain resolves to a pay-per-click website which presumably contains pay-per-click hyperlinks which link to Complainant’s competitors.
Respondent registered and used the disputed domain in bad faith. Respondent’s registration of the <theyeti.net> domain name and use to display competing hyperlinks disrupts Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii). Respondent capitalizes on visitors to the <theyeti.net> website who mistakenly believe that they are accessing information and products that YETI offers for sale. Respondent thereby 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 actual or at least constructive knowledge of Complainant's rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the YETI mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademark.
Respondent uses the at-issue domain name to address a website containing pay-per-click hyperlinks that link to Complainant’s competitors.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant establishes its rights in the YETI mark by registering such mark with the United States Patent and Trademark (USPTO ) (e.g., Reg. No. 3,203,869, registered Jan. 30, 2007). See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Respondent’s domain name contains Complainant’s YETI mark in its entirety prefixed with the article “the” and followed by the top-level domain name “.net.” The slight differences between the Complainant’s trademark and Respondent’s domain name are insufficient to distinguish one from the other for the purpose of Policy ¶ 4(a)(i). Therefore, the Panel finds that the <theyeti.net> domain name is confusingly similar to Complainant’s YETI trademark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); 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).)
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for <theyeti.net> lists “Super Privacy Service c/o Dynadot” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <theyeti.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent uses the <theyeti.net> domain name to address a pay-per-click website which contains hyperlinks that tie to Complainant’s competitors. Such use of the confusingly similar domain name is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(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.”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶ 4(b) specific bad faith circumstances as well as other circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above with regard to rights and legitimate interests, Respondent uses the domain name to address a pay-per-click website which displays a variety of links to Complainant’s competitors. Such use disrupts Complainant’s business and demonstrate Respondent’s bad faith registration and use of the <theyeti.net> domain name pursuant to 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).”).
Additionally, Respondent’s use of the confusingly similar <theyeti.net> domain name fraudulently suggests that Complainant is the domain name’s source, sponsor, or affiliate, or that Complainant endorses the domain name and its website. Respondent apparently intends to profit from confused internet users who, looking for Complainant’s website, find Respondent’s. These circumstances demonstrate Respondent’s bad faith registration and use of the domain name 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)); see also, Zee TV USA, Inc. v. Siddiqi, FA 721969 (Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Finally, Respondent registered the <theyeti.net> domain name with actual knowledge of Complainant’s trademark rights in YETI. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and because links on Respondent’s <theyeti.net> website reference Complainant’s competition. Therefore, it is clear that Respondent intentionally registered the at-issue domain name to improperly exploit YETI’s trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the at-issue domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <theyeti.net> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 24, 2016
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