YETI COOLERS, LLC v. anne davis
Claim Number: FA1701001711306
Complainant is YETI COOLERS, LLC (“Complainant”), represented by Katherine Laatsch Fink of Banner & Witcoff, Ltd., Illinois, USA. Respondent is anne davis (“Respondent”), Taiwan.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <shopyetis.com>, <yeticoolerscup.com>, <yeticupshop.com>, <yetitumblershop.com> and <rticyeticupshop.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 6, 2017; the Forum received payment on January 6, 2017.
On January 9, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <shopyetis.com>, <yeticoolerscup.com>, <yeticupshop.com>, <yetitumblershop.com> and <rticyeticupshop.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 January 9, 2017, the Forum served the Complaint and all Annexes, including a 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@shopyetis.com, postmaster@yeticoolerscup.com, postmaster@yeticupshop.com, postmaster@yetitumblershop.com, postmaster@rticyeticupshop.com. Also on January 9, 2017, 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 February 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant YETI Coolers, LLC (“YETI”), owns over 100 active worldwide trademark applications and registrations that encompass “YETI,” including registrations for YETI, YETI COOLERS, YETI TANK, YETI COLSTER, and YETI RAMBLER COLSTER for its products. These applications and registrations are in many countries including, but not limited to, the United States, Argentina, Australia, Brazil, Canada, China, European Community, India, Japan, Mexico, New Zealand, Norway, Philippines, Russia, South Africa, Switzerland, Thailand, and United Arab Emirates. YETI also owns substantial common law rights in and to its marks YETI, YETI COOLERS, YETI HOPPER, YETI RAMBLER, YETI TANK, YETI COLSTER, and YETI RAMBLER COLSTER. This Complaint refers to all of YETI’s applications, registrations, and common law rights (U.S. and foreign) collectively as the “YETI Mark.” YETI’s active registrations for the YETI Mark in the U.S. and internationally, with priority dates that predate the registration of the SHOPYETIS.COM, YETICOOLERSCUP.COM, YETICUPSHOP.COM, YETITUMBLERSHOP.COM, and RTICYETICUPSHOP.COM domains, are detailed in Exhibits 4 and 5 of the Appendix.
YETI’s active applications for the YETI Mark in the U.S. with priority dates that predate the registration of the SHOPYETIS.COM, YETICOOLERSCUP.COM, YETICUPSHOP.COM, YETITUMBLERSHOP.COM, and RTICYETICUPSHOP.COM domains are also inlcuded in the Appendix.
YETI also sells customized portable coolers, insulated containers, and insulated beverageware under the YETI Mark. YETI has continuously sold customized portable coolers since at least as early as April 2014. YETI has also continuously sold customized insulated containers and insulated beverageware through its exclusive licensee YETI Customer Shop (formerly RamblerOn), since at least as early as April 2015.
Because of the fame and renown of YETI and the “YETI” Mark, cybersquatters frequently seek to register domain names featuring the “YETI” Mark. YETI defends itself against cybersquatting, and has recovered many domain names from cybersquatters, including but not limited to the following domains:
· “customizedyeti.com,” “laserengravedyeti.com,” “laseretchedyeti.com,” and “monogrammedyeti.com” (ETI Coolers, LLC v Jonathan Gower , FA1604001670606 (FORUM May 15, 2016));
· “raceyeti.com” (YETI Coolers, LLC v LYDIA NADAL / RACEY-ETI, FA1604001670605 (FORUM May 26, 2016));
· “youryeti.com” (YETI COOLERS, LLC v ELISA MAREK / ETCH WORKZ , FA1604001672835 (FORUM June 9, 2016));
· “customizeyeti.com” (ETI Coolers, LLC v. Jed Turman, FA1606001677546 (FORUM July 1, 2016));
· “mycustomyeti.com” (YETI Coolers, LLC v. Kevin Dargie, FA1606001677551 (FORUM July 1, 2016));
· “yetistraw.com” (YETI Coolers, LLC v. Asbille, Tony / Global Star Medical , FA1606001677837 (FORUM July 5, 2016));
· “yeticustomcoolers.com” (YETI Coolers, LLC v. Eric Carney, FA1606001677549 (FORUM July 5, 2016));
· “mycustomyetis.com” (YETI Coolers, LLC v. Darrell Landers / darrell@funflicks.com, FA1606001677550 (FORUM (July 7, 2016));
· “wrapmyyeti.com” and “wrapyouryeti.com” (YETI Coolers, LLC v. Jerry Stonecipher, FA1606001679039 (FORUM July 10, 2016));
· “monogramyeti.com” (YETI Coolers, LLC v. Deke Bell, FA1606001677871 - (FORUM July 11, 2016));
· “customizemyyeti.com” and “customizemyyeti.net”, (YETI Coolers, LLC v. Bryan Westbrook, FA1606001677552 (FORUM July 11, 2016));
· “theyetistore.com” (YETI Coolers, LLC v. Erik McGuire, FA1606001677861 (FORUM July 15, 2016));
· “yeticoolers.info” (YETI Coolers, LLC v. Hanna Stafford, FA1606001678720 (FORUM July 20, 2016));
· “cooleryeti.com” (YETI Coolers, LLC v. Joe Berry, FA1606001679058 (FORUM July 21, 2016));
· “theyeti.net” (YETI Coolers, LLC v. Super Privacy Service c/o Dynadot, FA1606001681147 (FORUM July 25, 2016))
· “coatmyyeti.com” and “powdercoatmyyeti.com” (YETI Coolers, LLC v. Robert Wesley, FA1606001680756 (FORUM July 26, 2016));
· “coolersyeti.com” YETI Coolers, LLC v. JAMES DARRAR , (FA1606001680754 (FORUM July 29, 2016));
· “yetipowdercoating.com” (YETI Coolers, LLC v. Randall Bearden, FA1606001681147 - FA1606001680755 (FORUM August 12, 2016));
· “30ozyeti.com” (YETI Coolers, LLC v. Brock Hutchinson, FA1606001681147 - FA1606001679922 (FORUM August 12, 2016));
· “build-a-yeti.com” and “buildyouryeti.com” (YETI Coolers, LLC v. Landon Aune, FA1607001685530 (FORUM September 6, 2016));
· “yetidrinkholder.com” (YETI Coolers, LLC v. Richard Ford, FA1608001686882 (FORUM September 8, 2016));
· “shirtyeti.com” (YETI COOLERS, LLC v. Giles Southey / Shirtyeti.com, FA1608001686891 (FORUM September 8, 2016)); and
· “yeticlothingco.com” and “yetiactivewear.com” (YETI COOLERS, LLC v. Neil Hardcastle / Hardcastle Holdings LLC, FA1608001686877 (FORUM September 13, 2016)).
· “yeticoat.com” (YETI Coolers, LLC v. Anthony Wegmann, FA1608001689991 (FORUM October 6, 2016)).
· “yetisucks.com” (YETI COOLERS, LLC v. Jason Hall / Moxie Solar, FA1610001696699 (FORUM November 22, 2016)).
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
YETI operates websites at the URLs YETICOOLERS.COM and YETI.COM that receive substantial traffic from persons seeking information about YETI and to purchase its portable coolers and other available products.
As part of its business, YETI became the registrant of the domain name YETICOOLERS.COM in 2006, and the registrant of the domain name YETI.COM in 2015.
Respondent, anne davis, (hereinafter “Respondent”) is the currently-listed registrant for the domain names SHOPYETIS.COM, YETICOOLERSCUP.COM, YETICUPSHOP.COM, YETITUMBLERSHOP.COM, and RTICYETICUPSHOP.COM (the “Disputed Domain Names”) Respondent lists addresses of “Tai an jian yuan Taibei, Taiwan 10055 TW” and “Tai an jian yuan, Putian City, Putian, Fujian 351100 CN”.
The Disputed Domain Names currently resolve to websites (“Respondent’s Websites”) that are selling counterfeit YETI branded drinkware products, including powder coated drinkware products. These products are counterfeit YETI branded products as evidenced at least by the facts that YETI does not offer powder coated products and by the products being offered for significantly below the market price for the actual YETI products. YETI does not have any relationship or association with Respondent. YETI has not authorized Respondent to use YETI’s Mark, or to register, maintain, or renew domain names incorporating YETI’s Mark.
[a.] The domain names are identical or confusingly similar to a trademark in which Complainant has rights; UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
As described above in Section 6(c), YETI owns trademark registrations and common law rights in the YETI Mark. The Disputed Domain Names, SHOPYETIS.COM, YETICOOLERSCUP.COM, YETICUPSHOP.COM, YETITUMBLERSHOP.COM, and RTICYETICUPSHOP.COM are confusingly similar to the YETI Mark because the Disputed Domain Names includes the entirety of the YETI Mark in combination with the generic terms “cups,” “tumbler,” “shop,” and “.com.” See, e.g., Seiko Epson Corporation and Epson America, Inc. v. Christopher Dzialo, FA 1341785 (FORUM Oct. 4, 2010) (finding that the domain name “epsonleads.com,” which incorporates the entirety of complainant’s mark and adds the generic term “leads” and the gTLD “.com” does not sufficiently distinguish the disputed domain name from the mark).
As a threshold matter, the additional term “.com” in the Disputed Domain Names has no impact on the question of whether the Disputed Domain Names are confusingly similar to the YETI Mark because it corresponds to a required signifier of common generic Top Level Domains (“gTLDs”). See Research in Motion Ltd. v. Input Inc, Domain Manager, D2011-2197 (WIPO Mar. 13, 2012) (finding with a “.com” domain name that “[t]he top level domain of the disputed domain name is to be ignored for the purposes of assessing similarity as it is a functional requirement of the domain name system”).
Similarly, the inclusion of the generic terms “cups,” “tumbler,” “shop,” in the Disputed Domain Names does not mitigate the confusing similarity between SHOPYETIS.COM, YETICOOLERSCUP.COM, YETICUPSHOP.COM, YETITUMBLERSHOP.COM, and RTICYETICUPSHOP.COM and YETI’s YETI Mark, because they are merely descriptive and generic, including merely describing products YETI sells, and therefore does not defeat a claim of confusing similarity. See also Dixie Consumer Products LLC v. Private Whois dixiecup.com, FA 1112001419529 (FORUM Jan. 27, 2012) (finding the domain was confusingly similar to complainant’s mark because “the disputed domain name consists only of the DIXIE mark, the descriptive term ‘cup,’ and the generic top-level domain (“gTLD”) ‘.com.’)’ see Nervous Tattoo, Inc. v. dehua liu d/b/a netease, ltd., FA0911001294698 (FORUM December 16, 2009) (finding “shop” to be generic term that doesn’t mitigate confusing similarity).
In view of the above, the Disputed Domain Names, which include the entirety of the YETI Mark and merely generic terms, is confusingly similar to the YETI Mark and YETI has proven the first element of UDRP Policy ¶4(a). See also Desktop Media, Inc. v. Desktop Media, Inc., FA 96815 (FORUM Apr. 12, 2001) (“[F]or the limited purposes of the domain name dispute resolution process[,] a low threshold of proof is all that is required to meet the first element . . . .”).
[b.] Respondent has no rights or legitimate interests in respect of the domain names; UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii).
Respondent has no rights or legitimate interests in the Disputed Domain Names, SHOPYETIS.COM, YETICOOLERSCUP.COM, YETICUPSHOP.COM, YETITUMBLERSHOP.COM, and RTICYETICUPSHOP.COM
As a threshold matter, to prove the second element of UDRP Policy ¶4(a), YETI only needs to establish a prima facie case that Respondent lacks rights to and legitimate interests in the Disputed Domain Names. Then the burden shifts to Respondent to prove that Respondent does have rights to or legitimate interests in the Disputed Domain Names. See, e.g., Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (FORUM Aug. 18, 2006). This initial burden on the complainant is “light.” AOL LLC v. Gerberg, FA 780200 (FORUM Sept. 25, 2006).
Turning to the merits, YETI first reiterates that it does not have any relationship or association with Respondent. Moreover, YETI has not authorized Respondent to use YETI’s YETI Mark or to register domain names incorporating the YETI Mark.
Second, Respondent has not used and is not using Disputed Domain Names “in connection with a bona fide offering of goods or services” pursuant to UDRP Policy ¶4(c)(i), and has not made and is not “making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue” pursuant to UDRP Policy ¶4(c)(iii). Indeed, Respondent is using the Disputed Domain Names to sell counterfeit YETI branded products. For example, YETI does not offer powder coated products and Respondent is selling its purported YETI products at a price that is significantly below the market price for actual YETI products. In addition, Internet users are erroneously directed to the Disputed Domain Names when they input terms from the Disputed Domain Names (including the YETI Mark) into a search engine and click on search engine result links.
In this regard, when Internet users interested in YETI type the Disputed Domain Names SHOPYETIS.COM, YETICOOLERSCUP.COM, YETICUPSHOP.COM, YETITUMBLERSHOP.COM, and RTICYETICUPSHOP.COM into the web address bar of web browsing software, they are unexpectedly directed to Respondent’s websites featuring a prominent display of YETI’s YETI Mark and counterfeit YETI branded products. Once Internet users arrive at Respondent’s website, the use of YETI’s Mark in Respondent’s website is designed to confuse and mislead. See Fossil, Inc. v. Juan Cabral, FA1211001469662 (FORUM Dec. 18, 2012) (finding no rights or legitimate interests in web site having unauthorized trademark usages).
Respondent is attempting to divert Internet users away from YETI’s websites to the Disputed Domain Names where it is offering for sale counterfeit YETI branded products that it is not authorized to sell. Respondent’s intent to divert Internet users away from YETI’s website to the Disputed Domain Names to sell counterfeit products demonstrates that Respondent lacks any legitimate interest in the domain. See, e.g., Scott Elowitz Photography, LLC v. zhang yinfeng / Hengshui Fn Fur Trading Co., Ltd., FA1312001534428 (FORUM January 22, 2014) (holding respondent’s use of the disputed domain name to sell counterfeit versions of complainant’s products was not a bona fide offering of goods or legitimate noncommercial activity); eLuxury.com Inc. v. WangJunJie, FA 1075554 (FORUM Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name); see K.M.A. Sunbelt Trading Corporation d/b/a International Diamond Center v. Brian Cummings / Cummings Manookian, FA1601001654974 (FORUM, Feb. 17, 2016) (“a respondent’s use of a domain name to divert Internet users seeking a complainant’s website to the website of the respondent does not constitute a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).
Respondent’s website contains prominent unauthorized uses of the YETI Mark but does not disclaim affiliation with or sponsorship by YETI. Rather, Respondent’s website displays the YETI Mark and counterfeit YETI products in a way that suggests association with YETI and the sale of legitimate YETI products. Amazon Technologies, Inc. v. Jay Mulama / Jay Media, FA1605001675807 (FORUM, June 16, 2016) (finding a lack of rights and legitimate interests where respondent fails to distinguish itself from complainant and the domain is used in bad faith to divert users through confusion); see YETI Coolers, LLC v. Asbille, Tony / Global Star Medical, FA1606001677837 (FORUM, July 5, 2016) (finding no legitimate interests where Respondent’s website did not present a disclaimer to its association with Complainant). The lack of any disclaimer of affiliation of sponsorship by YETI leads consumers to falsely believe that Respondent’s website features authorized sales and services of legitimate YETI goods.
As stated in Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (FORUM Sept. 30, 2003), “Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under [UDRP] Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use under [UDRP] Policy ¶4(c)(iii).” See also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (FORUM Feb. 16, 2006). Similarly, use based on exploitation of consumer confusion caused by the Disputed Domain Names’ confusing similarity to the YETI Mark and YETI’s domain names also is not qualifying activity under UDRP Policy ¶4(c)(i) and (iii). See, e.g., Am. Family Life Assurance Co. of Columbus v. defaultdata.com a/k/a Brian Wick, FA0208000123896 (FORUM Oct. 14, 2002) (finding no rights or legitimate interests where “respondent, in choosing a domain name that at its essence completely incorporates [c]omplainant’s mark AFLAC and appends to it the generic term ‘insurance’, not only has intentionally sought to create a confusingly similar name but also is opportunistically exploiting Internet user confusion by diverting, through re‑direction and diversion, Internet users away from [c]omplainant’s site to [r]espondent’s web site for the latter’s own benefit.”); Big Dog Holdings, Inc. v. Day, FA 93554 (FORUM Mar. 9, 2000) (finding no legitimate use when respondent was diverting consumers to its own website by using complainant’s trademarks).
Additionally, further to UDRP Policy ¶4(c)(ii), nothing in the public record (including WHOIS records) suggests that Respondent is commonly known by the Disputed Domain Names. See Tercent Inc. v. Yi, FA 139720 (FORUM Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that respondent is commonly known by the disputed domain name, is a factor in evaluating Policy ¶4(c)(ii)); see also Gallup Inc. v. Amish Country Store, FA 96209 (FORUM Jan. 23, 2001) (finding that respondent does not have rights in a domain name when respondent is not known by the mark).
Finally, in keeping with the burden shifting associated with this element of UDRP Policy ¶4(a), if Respondent fails to respond to this Complaint, the panel may construe such a failure as an implicit admission that Respondent lacks rights to and legitimate interests in the Disputed Domain Names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (FORUM June 29, 2004) (“The failure of respondent to respond to the complaint functions both as an implicit admission that respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that complainant’s reasonable allegations are true.”).
In view of the above, YETI has, at the very least, met its burden under the second element in Policy ¶4(a), and has proven that Respondent has no rights to or legitimate interests in the Disputed Domain Names.
[c.] The domain names were registered and are being used in bad faith; UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii).
Respondent registered and is using the Disputed Domain Names, SHOPYETIS.COM, YETICOOLERSCUP.COM, YETICUPSHOP.COM, YETITUMBLERSHOP.COM, and RTICYETICUPSHOP.COM, in bad faith.
Further, with respect to UDRP Policy ¶4(b)(iii), Respondent has pointed the Disputed Domain Names to Respondent’s website. Respondent’s websites prominently feature YETI’s YETI Mark. The Webpages also feature unauthorized sales of counterfeit YETI branded goods and accordingly disrupts YETI’s business. See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (FORUM Mar. 5, 2008) (concluding that the complainant’s business is disrupted by Respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products); see also Scott Elowitz Photography, LLC v. zhang yinfeng / Hengshui Fn Fur Trading Co., Ltd., FA1312001534428 (FORUM January 22, 2014) (holding respondent’s website that was selling counterfeit versions of complainant’s products disrupted complainant’s business and demonstrated bad faith registration).
Second, further to UDRP Policy ¶4(b)(iv), Respondent is able to generate web traffic, and in turn realize a commercial gain, through the use of domain names which are confusingly similar to YETI’s YETI Mark. Quite simply, Respondent capitalizes on visitors’ mistaken belief that they are accessing legitimate products and/or services that YETI offers or authorizes for sale. This business model constitutes registration and use of a domain name in bad faith pursuant to Policy ¶4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (FORUM June 2, 2006) (finding bad faith registration and use under Policy ¶4(b)(iv) where Respondent was diverting Internet users searching for the complainant to its own website and likely profiting); H-D Michigan, Inc. v. Petersons Auto, FA 135608 (FORUM Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶4(b)(iv) through Respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its website by using the complainant’s marks).
Even if Respondent alleges that it did not have actual knowledge of the YETI Mark, YETI’s Registrations bestow upon Respondent constructive notice of YETI’s rights in the YETI Mark. Respondent’s registration of domain names that are confusingly similar to YETI’s YETI Mark, in spite of Respondent’s actual or constructive knowledge of YETI’s rights in the mark, is evidence of bad faith registration and use pursuant to UDRP Policy ¶4(a)(iii). See Orange Glo Int’l v. Blume, FA 118313 (FORUM Oct. 4, 2002) (“[C]omplainant’s OXICLEAN mark is listed on the Principal Register of the [U.S. Patent and Trademark Office], a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”); Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the [c]omplainant’s mark when it registered the subject domain name”).
For at least the above reasons, YETI has proven that Respondent registered and is using the Disputed Domain Names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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 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 Complainant must prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 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 uses the YETI mark in connection with its business in the sales of customized portable coolers, insulated containers, and insulated bevarageware. Complainant owns the YETI mark through numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3203869, registered January 30, 2007), inter alia. Registration with the USPTO (or any other governmental authority) suffices to demonstrate rights in a mark under Policy ¶4(a)(i), even where a respondent operates and/or resides in a different country. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
Complainant claims the disputed domain names are confusingly similar to Complainant’s YETI mark under Policy ¶4(a)(i). Respondent simply adds descriptive terms such as: “coolers,” “cup,” “tumblers,” and “shop.” Complainant does not explain in its complaint what the phrase “rtic” has to do with Complainant’s marks. It seemed to be completely unrelated to Complainant’s marks. A little bit of on-line research revealed RTIC is a competitor to Complainant. Therefore, there is some relationship. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Likewise, a space is a prohibited character in a domain name and its omission must be disregarded under a Policy ¶4(a)(i) analysis. See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish Respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Therefore, this Panel determines <rticyeticupshop.com> is confusingly similar to Complainant’s marks under Policy ¶4(a)(i) in addition to <shopyetis.com>, <yeticoolerscup.com>, <yeticupshop.com> and <yetitumblershop.com>. The disputed domain names are confusingly similar to Complainant’s YETI marks pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 Respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to 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 claims Respondent lacks rights or legitimate interests in the disputed domain names. The available WHOIS information lists “anne davis” as the registrant of the disputed domain names. There is no obvious connection between the disputed domain names and the registrant’s name. Respondent has failed to submit a Response in this proceeding. Respondent is neither licensed or authorized to use Complainant’s YETI marks. The Panel must conclude Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that Respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Complainant claims Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain names. Respondent uses the disputed domain names to offer counterfeit YETI products. Selling counterfeit products does not constitute a bona fide offering of goods or services under Policy ¶¶4(c)(i) and 4(c)(iii). Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶¶4(c)(i) and 4(c)(iii), respectively. See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum August 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using the disputed domain names in bad faith under Policy ¶4(a)(iii). Respondent uses the disputed domain names to offer counterfeit YETI products, which disrupts Complainant’s business and attracts Internet users to Respondent’s websites for its own commercial gain. Such behavior constitutes bad faith registration and use under Policy ¶4(b)(iii) and Policy ¶4(b)(iv). See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum December 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶4(b)(iii).”); see also H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that Respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion). Respondent has registered and is using the disputed domain names in bad faith pursuant to Policy ¶¶4(b)(iii) and 4(b)(iv).
Complainant claims Respondent must have had actual knowledge of Complainant’s rights in the YETI marks. This seems obvious. The domain names use Complainant’s marks in context. The resolving web sites show counterfeit products. It seems obvious Respondent would not create these counterfeit products entirely by chance. Respondent had to know about Complainant’s marks, which constitutes bad faith registration and use under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <shopyetis.com>, <yeticoolerscup.com>, <yeticupshop.com>, <yetitumblershop.com> and <rticyeticupshop.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, February 6, 2017
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