YETI COOLERS, LLC v. Christian Bugge / Rebel Media
Claim Number: FA1612001709712
Complainant is YETI COOLERS, LLC (“Complainant”), represented by Katherine Laatsch Fink of Banner & Witcoff, Ltd., Illinois, USA. Respondent is Christian Bugge / Rebel Media (“Respondent”), Denmark.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yetimugs.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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 28, 2016; the Forum received payment on December 28, 2016.
On December 28, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <yetimugs.com> domain name is 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 December 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 2017 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@yetimugs.com. Also on December 29, 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.
On December 29, 2016, Respondent contacted the Forum by e-mail to explain his reasoning for registering the disputed domain name, but did not respond specifically to the statements and allegations contained in the Complaint, or meet any of the other requirements per ICANN Rule 5. Thus the Forum does not consider the Response to be in compliance with ICANN Rule 5.
Having received no adequate response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 asserts trademark rights in YETI and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
As stated, Respondent failed to submit a formal Response in this proceeding.
Nonetheless, the Panel had taken into account[i] Respondent’s informal communication with the Forum where it wrote:
“… I had the idea that I might be able to resell Yeti products, which I quickly found out was not a possibility. Now I've created content around the Yeti products, of which I own a few, based on my travels and I'm planning to launch of yetimugs.com fan site, that will monetize through Amazon affiliate ads.”
The factual findings pertinent to the decision in this case are that:
1. Complainant sells coolers by reference to the trademark YETI;
2. Complainant owns United States Patent and Trademark Office (“USPTO”) Reg. No. 3,203,869, registered Jan. 30, 2007 for the word mark, YETI;
3. the disputed domain name was registered on October 26, 2016;
4. the domain name is parked and resolves to a webpage which states merely: “We’ll Be Back Soon!”; and
5. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides proof of its USPTO registration for YETI, the Panel is satisfied that it has trademark rights.[ii]
For the purposes of comparison, the generic top-level domain (gTLD), “.com”, can be disregarded. The comparison then reduces to a comparison of the term, “yetimugs” with YETI. Since Complainant sells goods in the nature of cooler mugs, the word, “mugs”, is in context wholly descriptive and of no differentiating value. The Panel finds the disputed domain name to be confusingly similar to the trademark. [iii]
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[iv]
The publicly available WHOIS information identifies Respondent as “Christian Bugge” / “Rebel Media” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. The evidence is that the domain name is parked with its Registrar and resolves to a webpage with the message “We’ll Be Back Soon!” The Panel finds that such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.
The onus shifts to Respondent to establish a legitimate interest in the domain name. Respondent states that he is “planning to launch a yetimugs.com fan site, that will monetize through Amazon affiliate ads.” In limited circumstances the owner of a fan site may have a legitimate interest in a domain name for the purposes of the Policy. Here, there is no evidence of an active website. Accordingly, there is no evidence of use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services (paragraph 4(c)(i)) and no evidence that Respondent is making a legitimate noncommercial or fair use of the domain name (paragraph 4(c)(iii)). Moreover, it is difficult to foresee how a right or legitimate interest might arise if Respondent monetized the site in the way described.
Panel finds that Respondent has no rights or interests in the domain name and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
Complainant does not make any contentions that fall within the articulated provisions above. Nonetheless, the Panel finds on the combined evidence that Respondent’s conduct falls under paragraph 4(b)(iv) above. Panel has already found the terms to be confusingly similar. The requisite likelihood of confusion with Complainant’s trademark therefore exists. By admission, Respondent’s intention is for the website is to be monetized. It follows that registration of the domain name was for commercial gain. Finally, it can be said that the domain name is in use in that it attracts Internet users to an online location with the promise of content shortly.
Panel finds registration and use in bad faith under paragraph 4(b)(iv) and accordingly finds that Complainant has satisfied the final element 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 <yetimugs.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: February 1, 2017
[i] This is a matter of discretion for the Panel. See, for example, Sears Brands, LLC v. Airhart, FA 1350469 (FORUM Dec. 2, 2010) electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5; cf Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (FORUM Jan. 7, 2011) deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”
[ii] See State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
[iii] See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Gillette Co. v. RFK Assocs., FA 492867 (FORUM July 28, 2005) finding that the addition of the term “batteries,” which described the complainant’s products was insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark.
[iv] See Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
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