DECISION

 

Yeti Software Inc. v. Deepak Kumar

Claim Number: FA2410002120540

 

PARTIES

Complainant is Yeti Software Inc. ("Complainant"), represented by Sophie Edbrooke of Gerben Perrott, PLLC, District of Columbia, USA. Respondent is Deepak Kumar ("Respondent"), Washington, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <yetisoftware.com>, registered with NameCheap, Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Michael A. Albert as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 15, 2024; Forum received payment on October 15, 2024.

 

On October 15, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <yetisoftware.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. 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 October 16, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 5, 2024 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@yetisoftware.com. Also on October 16, 2024, 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 November 4, 2024.

 

On November 5, 2024, pursuant to the Parties' requests to have the dispute decided by a single-member Panel, Forum appointed Michael A. Albert as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends that it has been the owner and operator of the website <yetisnow.com> since 2016. Complainant has used the Yeti Software mark in connection with software, as well as the advertising and sale of the same, and has built goodwill in the Yeti reputation.

 

Respondent has targeted the YETI mark and the Yeti website. The disputed Domain Name registered by Respondent contains the entirety of the YETI mark and is identical to Yeti's corporate name, in each of which Complainant has rights. Respondent's disputed Domain Name appears to advertise Yeti's competitors in an attempt to confuse potential consumers.

 

Respondent has both registered and used the Infringing Domain Name in bad faith.

 

B. Respondent

Respondent contends that he registered <yetisoftware.com> and a corresponding LLC in the fall of 2008, which predates Complainant's use. Respondent continued to use the LLC and the YetiSoftware name while he consulted and contracted with companies in the Seattle area to build custom software. Respondent states that the website is now dormant, and nothing is hosted on the website. It currently resolves to a generic landing page provided by the registrar.

 

Respondent has been using the domain <yetisoftware.com> for longer than Complainant has operated its own Yeti website, which dates back only to 2015. 

 

Respondent contends that he has not squatted on the disputed domain name with the hope of selling it and that he has made no attempts to monetize the site or otherwise drive traffic to it. Respondent notes that he was contacted by a brokerage company regarding purchasing the domain on September 1, 2024, which Respondent declined.

 

Respondent states that he does not intend to build software associated with snow removal or anything related to that line of business. Respondent contends that Complainant has no right to seize a domain name owned and maintained by Respondent for the last 16 years, i.e., since long before Complainant acquired any rights in the YETI mark.

 

FINDINGS

For the reasons set out below, the Panel finds that Complainant has not established the three elements necessary to entitle it to a transfer of the Disputed Domain Name. Accordingly, the requested relief will be denied.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

Identical and/or Confusingly Similar

Complainant has rights in the mark YETI as reflected in its trademark registration (USPTO Reg. No. 5924997, registered on December 3, 2019). The disputed Domain Name <yetisoftware.com> contains the entirety of its YETI mark and is identical to Complainant's corporate name.  

 

The disputed Domain Name uses Complainant's YETI mark and appends to it the generic term "software." The bar for meeting this first element of a claim under the Policy is relatively low, amounting, as some panels have described it, to a minimal "standing" requirement. Under these circumstances, the Panel finds that the disputed domain name is confusingly similar to Complainant's mark.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), at which point the burden shifts to Respondent to show that he does have rights or legitimate interests. Here, Complainant only alleges in cursory fashion that Respondent does not have any rights or legitimate interests, but does not provide any details, evidence, or arguments.

 

Respondent claims that he registered the disputed domain seven years prior to Complainant's first use of its mark, and used it in connection with his custom software company.  Respondent provides written evidence supporting the accuracy of his claim – in particular, a copy of a confirmation of the registration of the disputed domain name dated July 18, 2008.

 

Complainant fails to address Respondent's evidence of prior use. Accordingly, on the sole evidence before this Panel, it appears that Respondent's use predates Complainant's. Accordingly, Respondent has rights and legitimate interests in the disputed domain name. Complainant has failed to meet its burden under Paragraph 4(a)(ii).

 

Registration and Use in Bad Faith

For the reasons discussed above, Complainant has failed to meet its burden to show that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and so has likewise failed to establish bad faith registration. See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).  

 

Even if bad faith were assessed as a separate factor, Complainant has offered no evidence of such bad faith beyond the bare allegation that the disputed domain name is "infringing" and was registered for commercial purposes. Nothing in the Complaint shows why that constitutes bad faith, particularly in view of Respondent's prior use of the mark.

 

DECISION

Complainant having failed to establish two of the three elements required under the Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <yetisoftware.com> domain name REMAIN WITH Respondent.

 

 

Michael A. Albert, Panelist

Dated: November 19, 2024