YETI COOLERS, LLC v. James Easton
Claim Number: FA1703001724325
Complainant is YETI COOLERS, LLC (“Complainant”), represented by Katherine Laatsch Fink of Banner & Witcoff, Ltd., Illinois, USA. Respondent is James Easton (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <rticvsyeti.com> and <yetivsrtic.com>, registered with NameCheap, Inc.
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.
Eduardo Magalhães Machado as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 29, 2017; the Forum received payment on March 29, 2017.
On March 29, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <rticvsyeti.com> and <yetivsrtic.com> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 30, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 8, 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@rticvsyeti.com, postmaster@yetivsrtic.com. Also on March 30, 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.
A timely Response was received and determined to be complete on May 8, 2017.
On May 19, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eduardo Magalhães Machado 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is an Austin, TX, USA, based company that makes and sells customized portables coolers, insulated containers, insulated beverageware, and other similar products.
Complainant holds trademark registrations in several countries across the globe, in particular, it holds registration for its YETI mark with the United States Patent and Trademark Office (“USPTO”), its main country for business. Therefore, it has rights in the mark under the Policy ¶ 4(a)(i).
Complainant claims that Respondent’s <rticvcyeti.com> and <yetivcrtic.com> are confusingly similar to Complainant’s mark because each includes the YETI mark entirely while merely adding the generic top-level domain (“gTLD”) “.com”, the name of Complainant’s competitor “RTIC”, and the letters “vs”.
Complainant maintains that Respondent has no rights or legitimate interests in the disputed domain names. Complainant has not licensed or otherwise authorized Respondent to use its YETI mark in any fashion and Respondent is not commonly known by any of the disputed domain names.
Additionally, Respondent is not making any bona fide offering of goods or services or any legitimate noncommercial or fair use of the domains names. Specifically, <yetivsrtic.com> resolves to a number of third party links offering competing products, in a Pay-Per-Click page fashion, and <rticvsyeti.com> resolves to an inactive page that displays the message “WELCOME TO YOUR NEW WEBSITE”.
Complainant claims that Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(a)(iii). Respondent’s arrangement of competing hyperlinks hooks Policy ¶ 4(b)(iii) as well as Policy ¶ 4(b)(iv) because competitive use is disruptive and Respondent likely nets click-through profit from the inclusion of the link. Further, the inactive holding of <rticvsyeti.com> is nonexclusive of bad faith under Policy ¶ 4(a)(iii).
Lastly, Complainant states that Respondent had actual or constructive notice of Complainant’s YETI mark and its rights in the mark when it registered and used the domain names.
B. Respondent
In summary, Respondent claims that the letters “vs” are used in the disputed domain names to indicate a comparison between Complainant’s YETI mark products and the third party competitor, RTIC, as “vs” means “versus”.
Secondly, Respondent argues that his intents for the domain names are to serve as comparison sites of the two competing brands, which wouldn’t be considered a bad faith use of the domain names under the Policy.
Further, Respondent states that he has purchased products sold by both companies to proceed to their analysis and comparison, in preparation to use the domain names in question. Respondent claims that he will be providing testing data on both YETI and RTIC products and how they compare, therefore the intended use of the domain names falls within the scope of fair use under Policy ¶ 4(c)(iii). Also, Respondent’s parking of <yetivscrtic.com> was not intended to infringe on any of Complainant’s rights, rather, it was arranged through a “nameserver” and Respondent received no pay-per-click fees.
Respondent claims that he has not registered nor used the domain names in bad faith.
Complainant is an Austin, TX, USA, based company that makes and sells customized portables coolers, insulated containers, insulated beverageware, and other similar products. Complainant owns several trademark registrations for the “YETI” mark in various countries, including in the U.S. with the USPTO, e.g., registration No. 3,203,869, registered Jan. 30, 2007, which proves that Complainant has rights in the mark under Policy ¶ 4(a)(i). See T-Mobile USA, 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).
Respondent registered the disputed domain names <yetivsrtic.com> and <rticvsyeti.com> on Jan. 9, 2017.
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 this case, it is well clear that Complainant has rights in the YETI mark.
The Panel verifies that the disputed domain names include the YETI mark entirely as well as also adds Complainant’s competitor’s mark, RTIC, and the letters “vs.” (to mean “versus” as a comparison between Complainant’s YETI mark and the third-party competitor).
As is well established, where a complainant’s mark is not the dominant portion of a domain name, distinction may be created.
However, the Panel also verifies that Complainant is the owner of various trademark registrations for the YETI mark in several countries other than US, e.g: Japan, Australia, Mexico, Philippines, among others.
As Internet users outside the United States may not immediately recognize the disputed domain names as involving the RTIC mark, the Panel finds that the disputed domain names are confusingly similar to Complainant's trademark.
The Panel therefore finds that the first requirement of the UDRP is satisfied.
Paragraph 4(c) of the Policy includes a nonexclusive listing of circumstances that prove a respondent’s rights or legitimate interests in a domain name:
(i) Before any notice of the dispute, Respondent’s 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) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
First, the Panel verifies that although Respondent argues that its parking of <yetivsrtic.com> was not intended to infringe on any of Complainant’s rights as well as that it has not received pay-per-click fees, at the time this procedure was initiated the domain <yetivsrtic.com> resolved to a number of third party links offering competing products. As is well established by prior panels, offering links to competing products has been considered to weigh against a respondent’s claim to rights and legitimate interests. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). As demonstrated by Complainant, the resolving page to <yetivsrtic.com> used to display links like “Yeti Collers,” “Yeti Mug,” and “Yeti Koozie”.
Nevertheless, the Panel also verifies that the Respondent has quickly removed all third party links once notified.
Therefore, after analyzing the case, including all documents attached to the complaint and to Respondent’s reply, the Panel finds that Respondent’s intended use falls within the scope of fair use under the Policy.
In fact, the Panel verifies that Respondent intends for the disputed domain names to serve as legitimate comparison sites of the two competing brands, namely, YETI mark and a third-party competitor, RTIC.
The Panel therefore concludes that the second requirement of the UDRP is not satisfied.
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
First, The Panel recognizes that <yetivsrtic.com> used to resolve to a number of third party links offering competing products. In this sense, the Panel finds that the provision in the registration agreement between Respondent and the domain name registrar indicates that the registrant is responsible to determine whether the domain name registration or use infringes on another’s rights. As well, in accordance with the registration agreement, Respondent is also responsible for maintaining the website and the content within it.
In light of this, some panels have established that maintaining a parked webpage at a disputed domain name is sufficient to make a finding of the respondent’s bad faith registration and use, regardless of the entity that initiates the parked content. See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent.”).
Notwithstanding the above, the Panel notes that parking a domain name does not always or necessarily impute that a respondent does not have rights or legitimate interests. See Elec. Arts. Inc. v. Abstract Holdings Int’l LTD, FA 1415905 (Forum Jan. 4, 2012) (concluding that the respondent established rights and legitimate interests in the disputed domain name when the respondent did not intend to host competing hyperlinks and quickly removed them once it was notified).
In the present case, the Panel verifies that Respondent has not only explained such use but has quickly removed all third links once he was notified.
Thus, even though it can be said that the <yetivsrtic.com> domain might have been used in bad-faith, after analyzing the case and evidence brought by both parties, the Panel could not verify that such domain has been registered in bad-faith.
On the contrary, the Panel verifies that Respondent intends for the domain names to serve as legitimate comparison sites of the two competing brands, which, in accordance with the Policy, falls within the scope of fair use.
For this purpose, Respondent has purchased items in preparation to use the domain names in question, including products sold by both companies.
Lastly, the Panel also verifies that the fact that <rticvsyeti.com> resolves to an inactive page that displays the message “WELCOME TO YOUR NEW WEBSITE” is not sufficient evidence to constitute bad faith registration.
In view of the above, and considering the totality of the circumstances of the case, the Panel concludes that Respondent did not register and use the disputed domain names in bad faith.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED, without prejudice to the complainant’s right to file a new complaint under the Policy if it verifies that the disputed domain names are not serving as legitimate comparison sites of the two competing brands in the future.
Accordingly, it is Ordered that the <rticvsyeti.com> and <yetivsrtic.com> domain names REMAIN WITH Respondent.
Eduardo Machado, Panelist
Dated: June 2, 2017
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