YETI Coolers, LLC v. Xia Jun Jian / Xia Jun Jian
Claim Number: FA1704001728345
Complainant is YETI Coolers, LLC (“Complainant”), represented by Katherine Laatsch Fink of Banner & Witcoff, Ltd., Illinois. Respondent is Xia Jun Jian / Xia Jun Jian (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <topyeti.us>, registered with Todaynic.com, Inc.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 21, 2017; the Forum received payment on April 21, 2017.
On April 25, 2017, Todaynic.com, Inc. confirmed by e-mail to the Forum that the <topyeti.us> domain name is registered with Todaynic.com, Inc. and that Respondent is the current registrant of the name. Todaynic.com, Inc. has verified that Respondent is bound by the Todaynic.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 4, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 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@topyeti.us. Also on May 4, 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 May 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the National Arbitration 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, YETI Coolers, LLC, manufactures and distributes insulated containers to store drinks and food. In connection with this business, Complainant uses the YETI mark to provide and market services. Complainant has rights in the mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,203,869, registered January 30, 2007). Respondent’s <topyeti.us> is identical or confusingly similar to Complainant’s mark as it contains the mark in its entirety and merely adds the generic term “top”.
Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not granted Respondent permission or license to use the YETI mark for any purpose. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, when Internet users interested in YETI, type the <topyeti.us> domain name into the web address bar of web browsing software, they are unexpectedly directed to Respondent’s website featuring a prominent display of Complainant’s YETI mark and counterfeit YETI branded products. Further, Respondent attempts to divert Internet users away from Complainant’s website to the disputed domain name where it is offering for sale counterfeit YETI branded products that it is not authorized to sell. Respondent’s website displays the YETI Mark and counterfeit Complainant’s products in a way that suggests association with Complainant and the sale of legitimate products manufactured by Complainant.
Respondent has registered and used the disputed domain name in bad faith. Respondent attempts to attract, for commercial gain Internet users by creating confusion as to the source sponsorship, affiliation, or endorsement of the disputed domain name. Respondent capitalizes on visitors’ mistaken belief that they are accessing legitimate products and/or services that Complainant offers or authorizes for sale because Respondent likely attempts to commercially profit from this use. Lastly, Respondent had knowledge of Complainant’s rights in the YETI mark at the time it registered and subsequently used the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that Respondent registered the disputed domain name on January 11, 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 claims rights in the YETI mark based upon its registration with the USPTO (e.g., Reg. No. 3,203,869, registered January 30 2007). Registration with USPTO sufficiently establishes rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the YETI mark for the purposes of Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <topyeti.us> is identical or confusingly similar to the YETI mark, as it contains the mark in its entirety and adds the generic or descriptive term “top” along with the ccTLD “.us.” Panels have found that such slight differences between domain names and registered marks do not distinguish the domain name from the mark incorporated therein. See Kohler Co. v. Curley, FA 890812 (Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). Accordingly, the Panel finds that <topyeti.us> is identical or confusingly similar to the MICROSOFT mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in the <topyeti.us> domain name because Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the YETI mark in any way. Where a response is lacking, WHOS information can support a finding that respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (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.) The WHOIS information of record identifies Respondent as “Xia Jun Jian.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds that Respondent is not commonly known by the disputed domain name.
Complainant also argues that Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Selling competing products can evince a failure to make a bona fide offering of goods or services, or a legitimate non-commercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business 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).”) When Internet users interested in YETI type the <topyeti.us> domain name into the web address bar of web browsing software, they are unexpectedly directed to Respondent’s website featuring a prominent display of Complainant’s YETI mark and counterfeit YETI branded products. The Panel agrees that Respondent’s use of the <topyeti.us> evinces a failure to make a bona fide offering of goods or services or legitimate non-commercial or fair use.
Complainant further argues that Respondent attempts to divert Internet users away from Complainant’s website to the disputed domain name where it is offering for sale counterfeit YETI branded products that it is not authorized to sell. Selling counterfeit products can evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See 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 Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”). Respondent’s Website displays the YETI Mark and counterfeit Complainant’s products in a way that suggests association with Complainant and the sale of legitimate Complainant’s products. The Panel agrees that Respondent’s use of the <topyeti.us> domain name fails to make a bona fide offering of goods or services or legitimate non-commercial or fair use.
Further, Complainant argues that Respondent is able to generate web traffic, and in turn realize a commercial gain, through the use of a domain name that is confusingly similar to the YETI Mark. Where a respondent endeavors to sell counterfeit products, commercial gain is a logical reason for such deceptive use, which therefore demonstrates bad faith under Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products). Complainant asserts that Respondent capitalizes on visitors’ mistaken beliefs that they are accessing legitimate products and/or services that YETI offers or authorizes for sale. The Panel agrees that this business model constitutes registration and use of a domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Lastly, Complainant argues that Respondent had knowledge of Complainant's rights in the YETI mark. Complainant argues that Respondent's offering of competing products at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. The Panel agrees that Respondent registered the <topyeti.us> domain name with actual knowledge of Complainant’s mark and, accordingly, finds that Respondent registered the <topyeti.us> domain name in bad faith.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <topyeti.us> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: June 13, 2017
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