YETI COOLERS, LLC v. Wang Yun
Claim Number: FA1612001709736
Complainant is YETI COOLERS, LLC (“Complainant”), represented by Katherine Laatsch Fink of Banner & Witcoff, Ltd., Illinois, USA. Respondent is Wang Yun (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <yeticoolers.mobi>, <yeti.band>, <yeti.bid>, <yeti.gift>, <yeti.kim>, <yeti.market>, <yeticoolers.band>, <yeticoolers.ltd>, <yeticoolers.help>, <yeticoolers.mom>, <yeticoolers.online>, <yeticoolers.site>, <yeticoolers.pub>, <yeticoolers.top>, <yeticoolers.store>, registered with HiChina Zhicheng Technology Limited; Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 28, 2016; the Forum received payment on December 28, 2016. The Complaint was received in both Chinese and English.
On Dec 29, 2016, Jan 05, 2017, HiChina Zhicheng Technology Limited; Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <yeticoolers.mobi>, <yeti.band>, <yeti.bid>, <yeti.gift>, <yeti.kim>, <yeti.market>, <yeticoolers.band>, <yeticoolers.ltd>, <yeticoolers.help>, <yeticoolers.mom>, <yeticoolers.online>, <yeticoolers.site>, <yeticoolers.pub>, <yeticoolers.top>, <yeticoolers.store>, domain names are registered with HiChina Zhicheng Technology Limited; Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the names. HiChina Zhicheng Technology Limited; Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the HiChina Zhicheng Technology Limited; Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 January 10, 2017, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of January 30, 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@yeticoolers.mobi, postmaster@yeti.band, postmaster@yeti.bid, postmaster@yeti.gift, postmaster@yeti.kim, postmaster@yeti.market, postmaster@yeticoolers.band, postmaster@yeticoolers.ltd, postmaster@yeticoolers.help, postmaster@yeticoolers.mom, postmaster@yeticoolers.online, postmaster@yeticoolers.site, postmaster@yeticoolers.pub, postmaster@yeticoolers.top, postmaster@yeticoolers.store. Also on January 10, 2017, the Chinese language 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 February 7, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 names be transferred from Respondent to Complainant.
A. Complainant
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. Nos. 3,203,869 and registered Jan. 30, 2007). Respondent’s domain names are confusingly similar to the YETI mark as the domain names merely add generic top-level domains (“gTLDs”) and in some cases the generic term “coolers.”
Respondent has no rights or legitimate interests in the disputed domain names. Respondent has no relationship with Complainant, been given permission to use the YETI mark, or been commonly known by the disputed domain names. Respondent’s domain names resolve to inactive websites which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain names in bad faith. Respondent’s inactive use of the domain names demonstrates bad faith. Further, Respondent should be held as having constructive or actual notice of Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is YETI COOLERS, LLC (“Complainant”), of Austin, TX, USA. Complainant is the owner of domestic and international registrations for the mark YETI, and variations thereof, which it has continuously used since at least as early as 2007 in connection with its provision of goods and services in the portable cooling container business.
Respondent is Wang Yun of Beijing, China. Respondent’s registrars are located in China and Singapore. The Panel notes the disputed domain names were created on or about October 24, 2016.
Panel Note: Language of the Proceedings
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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). Past panels have held 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)). The Panel here finds that Complainant has established rights in the mark.
Complainant claims that Respondent’s domain names are confusingly similar to the YETI mark for the purposes of Policy ¶ 4(a)(i). Respondent’s domain names include the entire YETI mark and differ from the mark through the addition of a gTLD and in some cases the generic term related to Complainant’s business, “coolers.” Prior panels have held that adding a gTLD to a mark does not allevaite confusing similarity. See NAED Education and Research Foundation, Inc. v. Domain Administrator / Marketing Express, FA 1602497 (Forum March 23, 2015) (“The Panel agrees that the disputed domain name is identical to the NAED mark, and that the addition of a gTLD to the mark is not sufficient to rebut a finding of confusing similarity under Policy ¶ 4(a)(i).”). Panels have also held that adding generic or descriptive terms to a mark does not prevent a finding of confusing similarity under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel here finds that Respondent’s domain names are confusingly similar to the YETI mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that 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 (Nat. Arb. 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). The Complainant has met this burden.
Complainant contends that Respondent has not been authorized to use the YETI mark, been associated with Complainant, or been commonly known by the disputed domain names. WHOIS information associated with the disputed domain names identifies Respondent as, “Wang Yun,” of the same organization. Past panels have found that a respondent is not commonly known by a disputed domain name according to WHOIS information and a lack of evidence to the contrary. 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). The Panel here finds that Respondent has not been commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant next contends that Respondent’s use of the domain name is not a use in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain names appear to all resolve to websites bearing the message, “This site can’t be reached,” indicating that no content is hosted at the disputed domain names. Previous panels have held that failing to make an active use of a disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. 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).”) The Panel here finds that Respondent has failed to make an active use of the disputed domain within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant first argues that Respondent’s inactive use of the disputed domain names demonstrates bad faith registration and use of the disputed domain names. Again, Respondent’s domain names resolve to websites that appear to host no content. Prior panels have held that failing to make an active use of a disputed domain name demonstrates bad faith under the Policy. See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum November 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)). The Panel here finds that Respondent’s inactive use of the disputed domain names evinces bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
Because Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <yeticoolers.mobi>, <yeti.band>, <yeti.bid>, <yeti.gift>, <yeti.kim>, <yeti.market>, <yeticoolers.band>, <yeticoolers.ltd>, <yeticoolers.help>, <yeticoolers.mom>, <yeticoolers.online>, <yeticoolers.site>, <yeticoolers.pub>, <yeticoolers.top>, <yeticoolers.store>, domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: February 21, 2017
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