Yakima Products, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1908001860069
Complainant is Yakima Products, Inc. (“Complainant”), represented by Noel Cook of Hanson Bridgett LLP, California, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yakima-racks.com>, registered with GoDaddy.com, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 29, 2019; the Forum received payment on August 29, 2019.
On August 30, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <yakima-racks.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 September 4, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 24, 2019 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@yakima-racks.com. Also on September 4, 2019, 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 25, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant is one of the leading manufactures of vehicle cargo accessories, including cargo racks, bicycle carriers and cargo boxes.
Complainant has rights in the Complainant is one of the leading manufactures of vehicle cargo accessories, including cargo racks, bicycle carriers and cargo boxes. Complainant has rights in the YAKIMA mark through its trademark registrations around the world, including with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <yakima-racks.com> domain name is confusingly similar to Complainant’s YAKIMA mark as it fully incorporates Complainant’s YAKIMA mark and adds the generic term “racks,” along with the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <yakima-racks.com> domain name as Respondent is not commonly known by such domain name. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to a webpage which display links to third parties some of which appear to be competitors. Respondent also attempts to sell the disputed domain name.
Respondent registered and used the <yakima-racks.com> domain name in bad faith as Respondent advertises the at-issue domain name for sale for more than out-of-pocket costs. Respondent also has a pattern of registering well-known trademarks in domain names. Additionally, Respondent’s disputed domain name resolves to a website displaying links to competing products. Respondent attempts to attract for commercial gain Internet users believing that some sort of affiliation exists between Complainant and Respondent. Lastly, Respondent had actual and constructive knowledge of Complainant’s rights in the YAKIMA mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the YAKIMA mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its YAKIMA trademark.
Respondent’s <yakima-racks.com> domain name addresses a webpage displaying pay-per-click links some of which are to third party competitors of Complainant. Respondent offered the domain name for sale.
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”).
The at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO trademark registration for its YAKIMA mark. Complainant’s USPTO registration is sufficient to demonstrate Complainant’s rights in the YAKIMA trademark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Respondent’s <yakima-racks.com> domain name contains Complainant’s YAKIMA trademark followed by a hyphen, the generic term “racks” with all followed by the top-level domain name “.com.” The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the <yakima-racks.com> domain name from the YAKIMA trademark for the purposes of Policy ¶ 4(a)(i). In fact, the term “racks” is descriptive of Complainant’s main products and thus its inclusion in the at-issue domain name only adds to any confusion between the domain name and Complainant’s trademark. Therefore, the Panel concludes that Respondent’s <yakima-racks.com> domain name is confusingly similar to Complainant’s YAKIMA trademark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for <yakima-racks.com> reveals that the domain name’s registrant is “Carolina Rodrigues / Fundacion Comercio Electronico” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <yakima-racks.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <yakima-racks.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore, Respondent uses the <yakima-racks.com> domain name to address a website that generates click-through revenue by linking to third-party products, some of which compete with Complainant’s business. Respondent’s use the of the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA 1613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business).
Complainant also shows that Respondent offers the domain name for sale for an amount in excess of Respondent’s out-of-pocket costs related to such domain name. Currently, Respondent offers to sell the at-issue domain name for $1,000.00, but previously listed the domain name at auction for a minimum offer of $500.00. Here too, Respondent’s use of the of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”).
Given the forgoing, Complainant satisfies its initial burden and shows that Respondent lacks of rights or legitimate interests in the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights and legitimate interests, Respondent attempts to sell the at-issue domain name for an amount in excess of Respondent’s out-of-pocket cost concerning such domain name. Respondent’s attempt to sell the at-issue domain name indicates Respondent’s bad faith registration and use of the domain name under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”).
Additionally and as also mentioned above, Respondent uses the <yakima-racks.com> domain name to address a website displaying third-party pay-per-click links, including competitive links. Such use demonstrates Respondent’s bad faith per Policy ¶¶ 4(b)(iii) & (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant 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 1557007 (Forum June 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 the 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.”).
Next, Respondent is shown to have exhibited a pattern of bad faith domain name registration via its multiple adverse UDRP decisions. See e.g. Telemundo Network Group LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA1840240 (Forum May 24, 2019); Amazon Technologies, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA1819070 (Forum Dec. 27, 2018). Respondent’s pattern of domain name abuse suggests Respondent’s bad faith in the instant dispute pursuant to Policy ¶ 4(b)(ii). See Sanlam Life Insurance Limited v. Syed Hussain / Domain Management MIC, FA 1787219 (Forum June 15, 2018) (finding bad faith per Policy ¶ 4(b)(ii) where the complainant provided evidence the respondent owned various domain names infringing on famous third-party marks; and also that the respondent had been ordered to transfer domain names in previous UDRP decisions).
Finally, Respondent had actual knowledge of Complainant’s rights in the YAKIMA mark when it registered <yakima-racks.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s obvious reference to Complainant by including the term “racks” in Respondent’s confusingly similar domain name. Registering and using a confusingly similar domain name with knowledge of Complainant’s rights in such domain name in itself shows bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yakima-racks.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 26, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page