YETI Coolers, LLC v. zhang li
Claim Number: FA1703001724268
Complainant is YETI Coolers, LLC (“Complainant”), represented by Katherine Laatsch Fink of Banner & Witcoff, Ltd., Illinois, USA. Respondent is zhang li (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cuprticyeti.com>, <rambleryeti.com>, <rticyeticup.com>, <rticyetivip.com>, <rticyetiyes.com>, <yetiscup.com>, and <yetisrambler.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 March 28, 2017; the Forum received payment on March 28, 2017.
On March 30, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the domain names <cuprticyeti.com>, <rambleryeti.com>, <rticyeticup.com>, <rticyetivip.com>, <rticyetiyes.com>, <yetiscup.com> and <yetisrambler.com> are registered with PublicDomainRegistry.com and that Respondent is the current registrant of the names. PublicDomainRegistry.com has verified that Respondent is bound by the PublicDomainRegistry.com 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 March 31, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 20, 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@cuprticyeti.com, postmaster@rambleryeti.com, postmaster@rticyeticup.com, postmaster@rticyetivip.com, postmaster@rticyetiyes.com, postmaster@yetiscup.com, and postmaster@yetisrambler.com. Also on March 31, 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 April 27, 2017, 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 a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant sells customized portable coolers, insulated containers and insulated beverageware under the YETI Mark.
Complainant holds a registration for the YETI mark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 3,203,869, registered January 30, 2007).
Respondent registered the domain name <rticyeticup.com> on November 10, 2016, the domain names <rticyetiyes.com>, <rticyetivip.com> and <cuprticyeti.com> on November 19, 2016, the domain name <rambleryeti.com> on December 7, 2016, and the domain names <yetiscup.com> and <yetisrambler.com> on December 14, 2016.
The domain names are all confusingly similar to Complainant’s YETI mark.
Respondent has not been commonly known by any of the domain names.
Complainant has not licensed or otherwise authorized Respondent to use its YETI mark in any fashion.
Respondent makes no active use of some of the domain names, but uses others to sell for a profit counterfeit versions of Complainant’s products.
Respondent has no rights to or legitimate interests in any of the domain names.
Respondent’s use of some of the domain names to sell products falsely purporting to be those of Complainant disrupts the business of Complainant.
Respondent’s use of some of the domain names is an attempt to benefit financially, creating confusion among Internet users as to the possibility of Complainant’s affiliation with those domain names.
Respondent knew of Complainant and its rights in the YETI mark when it registered the domain names.
Respondent has registered and is using the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 to or legitimate interests in respect of the domain name; and
iii. the domain name was registered and is being used by Respondent 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 February 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 T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum August 9, 2015) (finding that a UDRP complainant had rights in the METROPCS mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here China). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that all of Respondent’s <cuprticyeti.com>, <rambleryeti.com>, <rticyeticup.com>, <rticyetivip.com>, <rticyetiyes.com>, <yetiscup.com> and <yetisrambler.com> domain names are confusingly similar to Complainant’s YETI mark. Each of the domain names contains the mark in its entirety, differing only by the addition of the generic Top Level Domain (“gTLD”) “.com” and one of the generic terms “CUP”, “RAMBLER”, “YES”, “VIP” or “RTIC”, the latter being the name of a commercial competitor of Complainant. 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 Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum January 22, 2016) (finding the addition of a generic term and of a gTLD to the mark of another in creating a domain name is insufficient to distinguish the domain name from that mark under Policy ¶ 4(a)(i)).
Additionally, specific to the domain names <rticyeticup.com>, <rticyetivip.com> and <rticyetiyes.com>, each containing the term “RTIC,” a mark belonging to a company not party to the current proceedings, Respondent’s inclusion of a third-party mark in those domain names does not distinguish them from the mark under Policy ¶ 4(a)(i). See G.D. Searle v. Martin Mktg., FA 118277 (Forum October 1, 2002):
Complainant has the right to protect its trademark whether standing alone, or included in a string of industry-related marks. Respondent’s inclusion of other drug-related marks [in the <viagra-xenical-celebrex-propecia-meridia-zyban.com> domain name] only increases the likelihood that confusion will result from use of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 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 (ForumSeptember 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 any of the disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that that 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 names 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 any of the domain names
<cuprticyeti.com>, <rambleryeti.com>, <rticyeticup.com>, <rticyetivip.com>, <rticyetiyes.com>, <yetiscup.com> and <yetisrambler.com>, and that Complainant has not licensed or otherwise authorized Respondent to use its YETI mark in any fashion. Moreover, the pertinent WHOIS information identifies the registrant of each of the contested domain names only as “ZHANG LI,” which does not resemble any of them. On this record, we conclude that Respondent has not been commonly known by any of the challenged domain names so as to have acquired rights to or legitimate interests in any of them within the purview of Policy ¶ 4(c)(ii). See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by a disputed domain name, and so failed to show that it had rights to or legitimate interests in it as provided in Policy ¶ 4(c)(ii), where a UDRP complainant had not authorized that respondent to incorporate its NAVISTAR mark in a domain name registration).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the domain names <cuprticyeti.com>, <rticyeticup.com>, <rticyetiyes.com> and <yetisrambler.com> to sell for profit counterfeit products purporting to be those of Complainant. This employment of those domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum August 19, 2015) (finding no bona fide offering of goods or services under Policy ¶ 4(c)(i) nor any legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) existed where a respondent used a website resolving from a disputed domain name to sell counterfeit products branded with a UDRP complainant’s mark).
Finally, under this head of the Policy, Complainant claims, again without objection from Respondent, that Respondent has failed to make any active use of the domain names <rambleryeti.com>, <rticyetivip.com> and <yetiscup.com>. It is well established that the failure of a domain name holder to make any active use of it over an extended period after its registration is evidence that that holder has no rights to or legitimate interests in it. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum September 2, 2004):
Respondent is wholly appropriating Complainant’s mark and is not using the … 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).
Therefore, the Panel finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the domain names <cuprticyeti.com>, <rticyeticup.com>, <rticyetiyes.com> and <yetisrambler.com> to sell counterfeit products pretending to be those of Complainant disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using those domain names. See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (ForumDecember 22, 2014):
…, 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 [in registering and using the domain name] under Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent registered and uses the same domain names, each of which is confusingly similar to Complainant’s YETI trademark, to exploit the confusion thus caused among Internet users as to the possibility of Complainant’s association with those domain names in an attempt to benefit financially. Under Policy ¶ 4(b)(iv), this too demonstrates its bad faith in registering and using those domain names. See Staples, Inc. v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014):
Therefore, the Panel finds that Respondent registered and is using the … domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the … domain name to host third-party links to [the websites of] Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.
And, as to the domain names <rambleryeti.com>, <rticyetivip.com> and <yetiscup.com> domain names, Respondent’s failure, over the entire period since their separate registrations, to make any active use of those domain names is evidence of its bad faith in their registration and use. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015):
Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Finally, it is apparent that Respondent knew of Complainant and its rights in the YETI mark when it registered each of the challenged domain names. This is a further showing of Respondent’s bad faith in registering them. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum August 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith where a panel found that that respondent knew of a UDRP complainant and its rights in its mark when that respondent registered a domain name that was confusingly similar to it). And, specifically as to Respondent’s employment of certain of the contested domain names to sell counterfeit goods purporting to be those of Complainant, see Mycoskie, LLC v. William Kelly, FA 1488105 (Forum April 23, 2013):
[T]he Panel finds [bad faith registration of a domain name in] that, due to Respondent’s use of the domain name to sell counterfeit versions of Complainant’s products, Respondent had actual knowledge of the mark and Complainant's rights.
Therefore, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cuprticyeti.com>, <rambleryeti.com>, <rticyeticup.com>, <rticyetivip.com>, <rticyetiyes.com>, <yetiscup.com>, and <yetisrambler.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 4, 2017
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