YETI Coolers, LLC v. Thelma Thomas
Claim Number: FA2107001957633
Complainant is YETI Coolers, LLC (“Complainant”), represented by Liz Brodzinski of Banner & Witcoff, Ltd., Illinois, USA. Respondent is Thelma Thomas (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <yeti-us.com> and <yeti-coolers.com>, registered with Dynadot, LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 30, 2021; the Forum received payment on July 30, 2021.
On August 2, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <yeti-us.com> and <yeti-coolers.com> domain names are registered with Dynadot, LLC and that Respondent is the current registrant of the names. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 August 9, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 2021, 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@yeti-us.com, postmaster@yeti-coolers.com. Also on August 9, 2021, 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 September 2, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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, YETI Coolers, LLC., is in the business of selling portable coolers, insulated beverageware, clothing, and other products. Complainant maintains registration in its YETI mark with the United States Patent and Trademark Office (USPTO). The disputed domain names, <yeti-us.com> and <yeti-coolers.com>, are identical or confusingly similar to Complainant’s YETI mark because they incorporate Complainant’s YETI mark while adding in a geographic or generic or descriptive term, separated by a hyphen, and the “.com” generic top-level domain (“gTLD”) to form a domain name.
Respondent does not have rights or legitimate interests in the <yeti-us.com> and <yeti-coolers.com> domain names because Respondent is not commonly known by the YETI mark nor has Respondent been authorized to use Complainant’s YETI mark. Respondent is not using the <yeti-us.com> and <yeti-coolers.com> domain names in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent impersonates Complainant by copying various aspects of Complainant’s website.
Respondent registered and uses the <yeti-us.com> and <yeti-coolers.com> domain names in bad faith because Respondent mimics Complainant’s website in order to deceive Complainant’s customers and sell identical goods. Respondent acted with actual knowledge of Complainant’s rights in the YETI mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is YETI Coolers, LLC (“Complainant”), of Austin, TX, USA. Complainant is the owner of domestic and international registrations for the mark YETI and numerous variations thereof constituting the family of YETI marks. Complainant has continuously used the YETI mark since at least as early as 2006 in connection with its manufacture of portable coolers, stainless steel drink holders, custom tumblers, and other related goods.
Respondent is Thelma Thomas (“Respondent”), of Burbank, CA, USA. Respondent’s registrar’s address is listed as San Mateo, CA, USA. The Panel notes that <yeti-us.com> was registered on or about April 17, 2021, and <yeti-coolers.com> was registered on or about April 23, 2021.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the YETI mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides copies of its registration certificates in its YETI mark with the USPTO (e.g., Reg. No. 3,203,869 – Registered on Jun. 30, 2007). The Panel here finds that Complainant has rights in the YETI mark under Policy ¶ 4(a)(i).
Complainant argues that the <yeti-us.com> and <yeti-coolers.com> domain names are identical or confusingly similar because they wholly incorporate Complainant’s YETI mark while adding a geographic or generic term, a hyphen, and the “.com” gTLD. A domain name may be found to be identical or confusingly similar to a complainant’s mark, under Policy ¶ 4(a)(i), despite the addition of terms and punctuation. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark). The added terms are the generic or descriptive term “coolers” and the geographical term “us”, referring to the United States. These terms are separated from Complainant’s YETI mark by a hyphen. The Panel here finds that the <yeti-us.com> and <yeti-coolers.com> domain names are identical or confusingly similar under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
Rights or Legitimate Interests
The Panel notes that Complainant must first make a prima facie case that 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 does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel here finds Complainant has set forth the requisite prima facie case.
Complainant first argues Respondent does not have any rights or legitimate interests in the <yeti-us.com> and <yeti-coolers.com> domain names because Respondent is not commonly known by the <yeti-us.com> and <yeti-coolers.com> domain names nor has Respondent been authorized to use Complainant’s YETI mark. A respondent may be found not to be commonly known by a domain name, under Policy ¶ 4(c)(ii), where the identifying WHOIS information is unrelated to a domain name and where a respondent is not authorized to use a complainant’s mark. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 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 for both domain names list “Thelma Thomas” as the registrant of both domain names. Complainant asserts that Respondent has never been authorized to use Complainant’s YETI mark and Respondent presents no evidence to the contrary. The Panel here finds that Respondent is not commonly known by the <yeti-us.com> and <yeti-coolers.com> domain names under Policy ¶ 4(c)(ii).
Complainant argues Respondent is not using the <yeti-us.com> and <yeti-coolers.com> domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent is using the <yeti-us.com> and <yeti-coolers.com> domain names to impersonate Complainant and sell its products. A domain name may be found to not be used in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use, under Policy ¶¶ 4(c)(i) and (iii), where a respondent uses a domain name to impersonate a complainant and sell its products. See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). Respondent’s domain names resolve to websites that make use of Complainant’s marks and sell products that a user would expect to find on Complainant’s own website. The Panel here finds that Respondent is not using the <yeti-us.com> and <yeti-coolers.com> domain names in connection with a bona fide offering a goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant first argues that Respondent registered and uses the <yeti-us.com> and <yeti-coolers.com> domain names in bad faith because Respondent impersonates Complainant and purports to sell Complainant’s products. Evidence of bad faith may be found, under Policy ¶¶ 4(b)(iii) and (iv), where a respondent impersonates a complainant while selling a complainant’s products. See Fossil, Inc. v. NAS, FA 92525 (Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). The Panel again notes that the resolving websites of each of the domain names display products that users would expect to find on Complainant’s website. The Panel here finds that Respondent registered and uses the <yeti-us.com> and <yeti-coolers.com> domain names in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues Respondent acted with actual knowledge of Complainant’s rights in the YETI mark. Actual knowledge may be found where a respondent uses a complainant’s mark to provide similar products or services. See WordPress Foundation v. mich delorme / mich d dots tlds, FA1410001584295 (Forum Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evinces Policy ¶ 4(a)(iii) bad faith.”). Respondent’s use includes employing Complainant’s YETI mark within the domain name as well as on the resolving websites. Further, Respondent displays Complainant’s products and offers them for sale. The Panel here finds that Respondent acted with actual knowledge, thus acting in bad faith under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <yeti-us.com> and <yeti-coolers.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: September 17, 2021
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