RTIC Outdoors, LLC v. REDACTED PRIVACY et al.
Claim Number: FA2111001974938
Complainant: RTIC Outdoors, LLC of Houston, Texas, United States of America.
Complainant Representative:
Complainant Representative: Fish & Richardson P.C. of Minneapolis, Minnesota, United States of America.
Respondent: Super Privacy Service LTD c/o Dynadot of San Mateo, California, US.
Respondent Representative: None
REGISTRIES and REGISTRARS
Registries: .CLUB DOMAINS, LLC; .TOP Registry; Dog Beach, LLC; DotOnline Inc.; DotStore Inc.; GMO Registry, Inc.; Minds + Machines Group Limited; One.com A/S; Top Level Design, LLC
Registrars: Dynadot, LLC; Chengdu West Dimension Digital Technology Co., Ltd.
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 Examiner in this proceeding.
Terry F. Peppard, as Examiner.
Complainant submitted: November 29, 2021
Commencement: December 10, 2021
Default Date: December 28, 2021
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure, Paragraphs 3 and 4, and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain names be suspended for the life of their registrations.
Clear and convincing evidence.
URS Procedure 1.2.6. requires that, to obtain an order that a domain name should be suspended, Complainant must make out a prima facie case, proven by clear and convincing evidence, for each of the following three elements:
1. The registered domain name is identical or confusingly similar to
a mark for which Complainant holds a valid national or regional registration and that it is in current use;
2. Registrant has no right to or legitimate interest in the domain name;
and
3. The same domain name was registered and is being used by
Respondent in bad faith.
Identity or Confusing Similarity
In its Complaint, Complainant shows that it holds a valid registration for the
trademark RTIC, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,909,776, registered March 1, 2016, for food and beverage coolers, and that the mark is in current use.
The relevant WHOIS information shows that Respondent registered all of the twenty (20) challenged domain names between November 12 and November 17, 2021.
Each of the domain names incorporates Complainant’s RTIC mark in its entirety, and in each instance the mark is paired with one or another of the generic terms “coolers,” “office,” “outlet,” “deals,” official,” “outdoor,” “usa,” or variants, sometimes with a hyphen (-) separating the mark from the generic term, plus a generic Top Level Domain (“gTLD”) such as “.shop,” “store,” or “online.”
For their part, each of the generic terms added to Complainant’s mark in framing the domain names relates to some aspect of Complainant’s business, and so illustrates the connection between the domain names and the mark evidently intended by Respondent.
The hyphens added to Complainant’s mark in forming some of the domain names are of no consequence to our analysis because they do not affect the meaning of the result or its phonetic qualities.
Likewise, the various gTLD’s used to complete the domain names do not affect our analysis because all domain names are required to have a gTLD or other TLD.
All of the domain names are therefore confusingly similar to Complainant’s RTIC mark.
Registrant’s Rights or Interests
Complainant denies that there is any affiliation between Respondent and Complainant, and there is nothing in the record to suggest that there is any association between them. Moreover, Complainant asserts, without objection from Respondent, that it has not authorized Respondent to use its RTIC mark. There is likewise nothing in the record suggesting that Respondent has been commonly known by any of the challenged domain names.
Complainant also asserts that the websites resolving from the contested domain names contain replicas of the RTIC mark as well as images and verbatim text lifted from Complainant’s official <rticoutdoors.com> website, while purporting to offer Complainant’s goods at deep discount prices, with the evident intent to steal funds from unsuspecting Internet users. Respondent denies none of this.
On these undenied facts, we find that Respondent has neither any rights to nor any legitimate interests in any of the disputed domain names.
Registrant’s Bad Faith
Under the URS Procedure, essentially the same considerations establishing that Respondent has no rights to or legitimate interests in the twenty challenged domain names are also pertinent to the question whether the domain names have been registered and are being used in bad faith. See URS Procedure¶5.7. To this can be added that it is plain from the record before us that Respondent knew of Complainant and its rights in the RTIC mark when it registered nearly two dozen domain names confusingly similar to the RTIC mark in the space of a single week, which strongly suggests that all of them were registered, and are now being used, in bad faith.
Accordingly, a finding of bad faith in the registration and use of the domain names follows directly from the undenied facts set out above.
Our review of the record discloses no evidence suggesting that the Complaint was brought in abuse of this proceeding or that it contains any material falsehood.
Upon review of Complainant’s submissions, we find that Complainant has proven prima facie all three elements of the URS by clear and convincing evidence. We therefore Order that each of the domain names <coolers-rtic.live>, <coolers-rtic.one>, <office-rtic.shop>, <outlet-rtic.shop>, <outlet-rtic.store>, <rtic-official.shop>, <rticcoolers.ink>, <rticdealsnow.shop>, <rtic.fit>, <rtic-deals.shop>, <rticcoolers.live>, <rtic-deals.online>, <rticooler-deal.top>, <usa-rtic.shop>, <rticoutdoorcoolers.shop>, <rticoutdoorcoolers.store>, <rtic-us.club>, <rticoutdoorus.store>, <rticoutdoorusa.shop> and <rticoutdoorusa.store> be SUSPENDED for the duration of their separate registrations.
Terry F. Peppard, Examiner
Dated: December 30, 2021
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