YETI COOLERS, LLC v. Jason Hall / Moxie Solar
Claim Number: FA1610001696699
Complainant is YETI COOLERS, LLC (“Complainant”), represented by Katherine Laatsch Fink of Banner & Witcoff, Ltd., Illinois, USA. Respondent is Jason Hall / Moxie Solar (“Respondent”), Iowa, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yetisucks.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 4, 2016; the Forum received payment on October 4, 2016.
On Oct 5, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <yetisucks.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 October 5, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@yetisucks.com. Also on October 5, 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 November 1, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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:
1. Complainant, Yeti Coolers, LLC, has rights in the YETI mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,203,869, registered Jan. 30, 2007). Respondent’s <yetisucks.com> domain name is identical or confusingly similar to the YETI mark as the addition of the term “sucks” and the generic top-level domain (“gTLD”) “.com” do not mitigate the similarity between the domain name and the YETI mark.
2. Respondent has no rights or legitimate interests in respect of the domain name. Respondent does not have any relationship or association with Respondent, has not been authorized to use the YETI mark, or been commonly known by the disputed domain name. Respondent failing to make an active use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
3. Respondent’s domain name was registered and is being used in bad faith. Respondent’s domain name resolving to an inactive website is evidence of bad faith. Further, Respondent should be found to have had actual or constructive knowledge of the YETI mark at the time of registration which demonstrates bad faith.
B. Respondent:
1. Respondent has not submitted a Response in this proceeding, other than an untimely email from a non-attorney representative on November 18, 2016 which is deemed to be both untimely and nonresponsive to the Complaint.
1. Respondent’s <yetisucks.com> domain name is confusingly similar to Complainant’s YETI mark.
2. Respondent does not have any rights or legitimate interests in the <yetisucks.com> domain name.
3. Respondent registered or used the <yetisucks.com> domain name 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:
(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.”).
Complainant asserts rights in the YETI marks based on registration with the USPTO (e.g. Reg. No. 3,203,869, registered Jan. 30, 2007). See Compl., at Attached Ex. 4. Panels have consistently held, and this Panel may hold, that registration of a mark with the USPTO is sufficient to demonstrate rights in the mark. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant next asserts that Respondent’s domain name <yetisucks.com> is identical or confusingly similar to the YETI mark as the addition of the term “sucks” and the gTLD “.com” do not mitigate the similarity between the domain name and the YETI mark. Panels have held that adding the term “sucks” does not prevent a finding of confusing similarity. See Baylor University v. Andrew Makarov, FA 1438498 (Forum May 16, 2012) (holding the <baylorsucks.com> domain name confusingly similar to the BAYLOR mark under Policy ¶ 4(a)(i)). Panels also consistently find that the addition of the gTLD “.com” is not relevant to an analysis of confusing similarity. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Taken together, this Panel finds that Respondent’s <yetisucks.com> domain is confusingly similar to the YETI mark for purposes of 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 does not have any relationship or association with Respondent, has not been authorized to use the YETI mark, or been commonly known by the disputed domain name. WHOIS information associated with the disputed domain name identifies Respondent as “Jason Hall” of the organization “Moxie Solar,” neither of which appear to resemble the disputed domain name. See Compl., at Attached Ex. 7. Panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS information and a lack of information to the contrary. See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant claims that Respondent failing to make an active use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain name resolves to a website displaying the message, “Welcome to yetisucks.com,” but does not seem to include any content besides this parked message. See Compl., at Attached Ex. 8. Panels have held that using a disputed domain name to resolve to a parked website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant claims that Respondent’s bad faith is evident from using the domain name to resolve to an inactive website. Again, Respondent’s domain resolves to a website displaying the message “Welcome to yetisucks.com,” and a message indicating that the domain is being parked by the registrar. See Compl., at Attached Ex. 8. Although Complainant argues that bad faith for failing to make an active use of the disputed domain name should be found under Policy ¶ 4(b)(iii), prior panels have typically held that failing to make an active use of a domain name can demonstrate a respondent’s bad faith under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). The Panel finds that Respondent failing to make an active use of the disputed domain name demonstrates bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the YETI mark. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "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 <yetisucks.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
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