YETI Coolers, LLC v. Jared Burnup
Claim Number: FA1703001724909
Complainant is YETI Coolers, LLC (“Complainant”), represented by Katherine Laatsch Fink of Banner & Witcoff, Ltd., Illinois, USA. Respondent is Jared Burnup (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yetishirts.com>, (‘the Domain Name’) registered with Tucows Domains 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.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 31, 2017; the Forum received payment on March 31, 2017.
On April 3, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <yetishirts.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 April 3, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 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@yetishirts.com. Also on April 3, 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 Dawn Osborne of Palmer Biggs IP 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’s contentions can be summarized as follows:
Complainant owns the registered trade mark YETI, inter alia, in the USA where Respondent is based, for, inter alia, clothing. It owns a number of domain names including yeti.com.
The Domain Name is confusingly similar to Complainant’s YETI mark, including it in its entirety with the generic terms ‘shirts’ and ‘.com’, which do not mitigate the necessary confusing similarity. Indeed, the inclusion of ‘shirts’ in the Domain Name increases the likelihood of confusion between the YETI mark and the Domain Name.
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not commonly known by the Domain Name. Complainant does not have any relationship with Respondent and has not authorized Respondent to use Complainant’s marks. Respondent is not using the Domain Name in relation to a bona fide offering of goods and services and is not making legitimate non commercial use of it.
The Domain Name points to a web site which contains hyperlinks which resolve to direct competitors of Complainant.
Respondent has registered and is using the Domain Name in bad faith as it is disruptive to Complainant’s business under Policy 4 (b)(iii) and causes confusion on the Internet under 4 (b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark YETI, registered in the United States where Respondent is based, for clothing with first use in commerce recorded as 1987.
The Domain Name, registered in 2017, has been used for pay per click links that point to competitors of Complainant.
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.”).
Identical or Confusingly Similar
The Domain Name consists of Complainant's YETI mark (which is registered in the USA where Respondent is based for, inter alia, clothing with first use in commerce recorded as 1987), the generic term ‘shirts’ and the gTLD .com. Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000)(finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underling mark held by the complainant). The Panel agrees that the addition of the generic ‘shirts’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy. In fact, it may add to confusion as it describes some products offered by Complainant.
The gTLD .com does not serve to distinguish the Domain Name from the YETI mark, which is the distinctive component of the Domain Name in relation to clothing. See Red Hat Inc. v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose to a mark in which Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
Complainant has not authorised the use of its mark. Respondent has not answered this Complaint and there is no evidence or reason to suggest Respondent is, in fact. commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Complainant contends that the site is set up for commercial benefit to compete with Complainant using the latter's intellectual property rights. Respondent is using the site for links offering products in competition with those of Complainant. It does not make it clear that there is no commercial connection with Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See Cheapcaribbean.com, Inc. v Moniker Privacy Services, FA 1411001589962 (Forum Jan 1, 2015) (The panel finds that respondents use of the cheepcaribbean.com name to promote links in competition with Complainant’s travel agency services does not fall within Policy 4 ( c )(i) bona fide offering of goods or services, nor does it amount to a legitimate non commercial or fair use described in Policy 4(c)(iii).
As such, the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Complainant also alleges that Respondent's use of the site attached to the Domain Name is commercial and it is using it to make a profit by competing with Complainant in a confusing and disruptive manner. In the opinion of the panelist the use made of the Domain Name in relation to the site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by Complainant as it offers competing goods without any explanation. The use on Respondent's web site relating to competing clothing suggests that Respondent is aware of Complainant.
Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of Complainant. See Health Republic Insurance Company v Above.com Legal, FA 1506001622088 (Forum) Jul 10, 2015)(The use of a domain name’s resolving website to host links to competitors shows intent to disrupt that complainant’s business thereby showing bad faith in use and registration under Policy 4 (b)(iii).)
See also Staples, Inc and Staples the Office Superstores, LLC v Hanna El Hin/Dtaples.com, FA 1404001557007 (Forum Jun 6, 2014)(‘Therefore the Panel finds that Respondent registered and is using the dtaples.com Domain Name in bad faith under Policy 4 (b)(iv) because Respondent is using the disputed domain name to host third party links to Complainant’s competitors from which respondent is presumed to obtain some commercial benefit’).
As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4 (b)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yetishirts.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: May 2, 2017
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