YETI Coolers, LLC v. Landon Aune
Claim Number: FA1607001685530
Complainant is YETI Coolers, LLC (“Complainant”), represented by Katherine Laatsch Fink of Banner & Witcoff, Ltd., Illinois, USA. Respondent is Landon Aune (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <build-a-yeti.com> and <buildyouryeti.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 conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 26, 2016; the Forum received payment on July 26, 2016.
On July 27, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <build-a-yeti.com> and <buildyouryeti.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 July 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 17, 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@build-a-yeti.com, and postmaster@buildyouryeti.com. Also on July 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 August 25, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 names be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
Complainant uses the YETI mark in connection with the operation of its portable cooler and insulated beverage-ware business.
Complainant holds a registration for the YETI trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 3,203,869, registered Jan. 30, 2007).
Respondent registered each of the domain names <build-a-yeti.com> and <buildyouryeti.com> on April 4, 2016.
The domain names are confusingly similar to Complainant’s YETI mark.
Respondent has not been commonly known by the domain names.
Complainant has not authorized Respondent to use the YETI mark or to register domain names incorporating the YETI mark.
Respondent is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names.
The domain name <build-a-yeti.com> resolves to a parked website, while the <buildyouryeti.com> domain name resolves to a page displaying the YETI mark and offering unauthorized services for Complainant’s goods.
The latter website falsely represents itself as being associated with an authorized seller of Complainant’s goods.
The domain name <buildyouryeti.com> competes with Complainant’s business and offers unauthorized services, from which Respondent presumably seeks to profit commercially.
Respondent has no rights to or legitimate interests in the domain names.
The inactive parking of the domain name <build-a-yeti.com> evidences bad faith.
Respondent knew of Complainant and its rights in the YETI mark when it registered the domain names.
Respondent registered and uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the same domain names were registered and are being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the YETI trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, YETI Coolers, LLC v. Chris Chaffins, FA 1675148 (Forum June 22, 2016).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s domain names <build-a-yeti.com> and <buildyouryeti.com> are confusingly similar to Complainant’s YETI trademark. The domain names contain the YETI mark in its entirely, as well as the generic term “build” and the generic Top Level Domain (“gTLD”) “.com.” Moreover, in the former domain name, hyphens are included, along with the indefinite article “a;” and, in the latter domain, the possessive “your” is included. These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See LEGO Juris A/S v. Nathan Joseph, D2011-1382 (WIPO Oct. 4, 2011) (finding that adding the term “build” to a UDRP complainant’s trademark in creating a domain name did not distinguish the domain name from that mark).
As to the <buildyouryeti.com> domain name, see also YETI COOLERS, LLC v. ELISA MAREK / ETCH WORKZ, FA 1672835 (Forum June 9, 2016), finding that:
[T]he expression ‘your’, according to the Merriam Webster Dictionary is an adjective, that means, ‘[R]elating to or belonging to you: made or done by you,’ which simply emphasizes the trademark YETI as ‘your’ directly relates to whatever comes next, thus, the YETI is yours. Consequently, the expression ‘your’ is generic. Hence, consumers are likely to expect the disputed domain name to be related to YETI products. Thus, the disputed domain name is confusingly similar to Complainant’s trademark.
And, with respect to <build-a-yeti.com>, the addition of a further vowel to Complainant’s mark in forming that domain name is not a distinguishing feature. See OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015:
Respondent’s … domain name is confusingly similar to the … mark under Policy ¶ 4(a)(i) because the disputed domain merely adds [to it] the letter ‘i’ . . . .
Further, the addition of hyphens to one of the domain names and of gTLDs to Complainant’s mark in each of them is irrelevant to a Policy ¶ 4(a)(i) analysis. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015), finding, under Policy ¶ 4(a)(i), that:
[t]he addition of a hyphen and a gTLD is insufficient to establish distinctiveness from a complainant’s mark.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <build-a-yeti.com> and <buildyouryeti.com> domain names, and that Complainant has not authorized Respondent to use the YETI mark or to register domain names incorporating the YETI mark. Moreover, the pertinent WHOIS information identifies the registrant of each of the domain names only as “Landon Aune,” which does not resemble the domain names. On this record we conclude that Respondent has not been commonly known by either of the disputed domain names so as to have demonstrated that it has rights to or legitimate interests in either of them within the purview of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name, and so failed to show that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the subject domain name).
We next observe that Complainant asserts, without objection from Respondent, that the <build-a-yeti.com> domain resolves to a parked website, thus indicating that it is not being actively used, while the <buildyouryeti.com> domain resolves to a page displaying Complainant’s YETI mark and offering unauthorized services for Complainant’s goods, and, at the same time, representing itself as an authorized seller of Complainant’s goods. We may safely presume that the latter domain name is thus employed in an effort to secure for Respondent a measure of commercial gain. In neither case is Respondent making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). On the point of inactive use, see Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005):
The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
And, on the point of commercial competition, see Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010):
The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the <buildyouryeti.com> domain name, which is confusingly similar to Complainant’s YETI mark, is an attempt to profit commercially from the confusion thus caused among Internet users as to the possibility of complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent registered a domain name confusingly similar to a UDRP complainant’s mark, and where that domain name was used to host a commercial website selling services similar to those offered by that complainant under its mark).
We are also convinced by the evidence that Respondent’s inactive use, called parking, of the <build-a-yeti.com> for an extended period after its registration is likewise evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (finding that a UDRP respondent’s failure to make an active use of a contested domain name satisfied the bad faith requirement of ¶ 4(a)(iii) of the Policy).
Finally, under this head of the Policy, it is plain from the record that Respondent knew of Complainant and its rights in the YETI mark when it registered the <build-a-yeti.com> and <buildyouryeti.com> domain names. This further demonstrates Respondent’s bad faith in registering those domain names. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (finding that a UDRP respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii), having first concluded that that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <build-a-yeti.com> and <buildyouryeti.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 6, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page