RTIC Outdoors, LLC v. Thomas A. Cahill / neo yao / Carmen Keith / Thelma Thomas / Echo lee / Elmer S. Lipscomb
Claim Number: FA2107001957409
Complainant is RTIC Outdoors, LLC (“Complainant”), represented by Nancy Ly of Fish & Richardson P.C., Minnesota, USA. Respondent is Thomas A. Cahill / neo yao / Carmen Keith / Thelma Thomas / Echo lee / Elmer S. Lipscomb (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <rticsale.com>, <rticproducts.com>, <rtic-overstock.com>, <rcoolers.com>, <rtic-cooler.com>, and <rticus.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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 29, 2021; the Forum received payment on July 29, 2021.
On July 30, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <rticsale.com>, <rticproducts.com>, <rtic-overstock.com>, <rcoolers.com>, <rtic-cooler.com>, and <rticus.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 5, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 25, 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@rticsale.com, postmaster@rticproducts.com, postmaster@rtic-overstock.com, postmaster@rcoolers.com, postmaster@rtic-cooler.com, postmaster@rticus.com. Also on August 5, 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 August 30, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
For the reasons given below, the Panel will not determine whether the registrant of the <rcoolers.com> domain name is the same as the registrant of the other disputed domain names.
The Panel finds that the <rticsale.com>, <rticproducts.com>, <rtic-overstock.com>, <rtic-cooler.com>, and <rticus.com> domain names are under common control as the resolving websites appear to be identical and display Complainant’s mark and logo and images of Complainant’s products. Further, all five domain names were registered with the same registrar. Finally, the registrant used the same privacy service for all five domain names. This is sufficient to find that the domain names were registered by the same domain name holder. See The Valspar Corporation v. Zhou Zhiliang / zhouzhiliang / Zhiliang Zhou / Eric Chow / Visspa Ltd., FA100800133934 (Forum Sept. 28, 2010); see also BBY Solutions, Inc. v. White Apple / Dev Kumar, FA1805001787251 (Forum June 20, 2018).
Consequently, the Panel will rule on the <rticsale.com>, <rticproducts.com>, <rtic-overstock.com>, <rtic-cooler.com>, and <rticus.com> domain names, and the registrants are collectively referred to as “Respondent”.
A. Complainant
Complainant states that it is a retailer of coolers and drinkware. Complainant has rights in the RTIC mark based on its registration of the mark in the United States Patent in 2019. The mark is also registered elsewhere around the world.
Complainant alleges that the disputed domain names are confusingly similar to its RTIC mark because they incorporate Complainant’s entire mark, merely adding descriptive, generic, and/or geographical terms (“sale,” “products,” “overstock,” “cooler,” “coolers,” and “us”), followed by the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent lacks rights and legitimate interests in the disputed domain names as it is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent to use the RTIC mark. Additionally, Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, the disputed domain names resolve to imposter websites that copy Complainant’s RTIC logos, trademark, pictures, and website content, and purport to offer RTIC-branded coolers and drinkware products for sale.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith because Respondent passes itself off as Complainant to divert Internet users to Respondent’s website to offer unauthorized or counterfeit versions of Complainant’s products. Furthermore, Respondent had constructive and/or actual knowledge of Complainant’s rights in the RTIC mark based on Complainant’s prior registration of the RTIC trademark relative to Respondent’s registration of the disputed domain names, and Respondent’s blatant copying of the RTIC mark and the images and content from Complainant’s website across multiple domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark RTIC and uses it to market coolers.
Complainant’s rights in its mark date back to at least 2019.
The disputed domain names were registered in 2021.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving websites of the <rticsale.com>, <rticproducts.com>, <rtic-overstock.com>, <rtic-cooler.com>, and <rticus.com> domain names display Complainant’s mark and logo, images of Complainant’s products, and purport to offer Complainant’s products. The WHOIS information is false.
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 disputed domain name <rcoolers.com> does not incorporate Complainant’s RTIC mark. Complainant does not explain why this domain name is confusingly similar to its mark. Accordingly, the Panel finds that Complainant has failed to satisfy its burden of proof for this element of the Policy and it will not further consider this domain name, which will not be transferred to Complainant.
The disputed domain names <rticsale.com>, <rticproducts.com>, <rtic-overstock.com>, <rtic-cooler.com>, and <rticus.com> incorporate Complainant’s mark in its entirety, merely adding a hyphen, and descriptive, generic, and/or geographical terms (“sale,” “products,” “overstock,” “cooler,” and “us”), followed by the “.com” gTLD. Adding a hyphen and descriptive, generic or geographic terms together with the “.com” gTLD is not sufficient to differentiate between the disputed domain name and the mark. See Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”); see also 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 Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel finds that the <rticsale.com>, <rticproducts.com>, <rtic-overstock.com>, <rtic-cooler.com>, and <rticus.com> domain names are confusingly similar to Complainant’s RTIC mark under Policy ¶ 4(a)(i).
For the reasons given above, the Panel will not discuss the disputed domain name <rcoolers.com> for this element of the Policy.
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the <rticsale.com>, <rticproducts.com>, <rtic-overstock.com>, <rtic-cooler.com>, and <rticus.com> domain names: under Policy ¶ 4(c)(ii), when no response is submitted, relevant WHOIS information may demonstrate that a respondent is not commonly known by a disputed domain name. See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (concluding that the respondent was not commonly known by the <amazondevice.org>, <amazondevices.org> and <buyamazondevices.com> domain names under Policy ¶ 4(c)(ii), as the pertinent WHOIS information identified “Timothy Mays,” “Linda Haley,” and “Edith Barberdi” as registrants of the disputed domain names). Here, the WHOIS information identifies “Thomas A. Cahill,” “neo yao,” “Carmen Keith,” “Echo lee,” “Elmer S. Lipscomb” as the registrant. Thus, the Panel finds that Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii).
The <rticsale.com>, <rticproducts.com>, <rtic-overstock.com>, <rtic-cooler.com>, and <rticus.com> domain names resolve to imposter websites that copy Complainant’s RTIC logos, trademark, pictures, and website content, and purport to offer RTIC-branded coolers for sale. Using a disputed domain name to resolve to a website that copies a complainant’s website and offers a complainant’s product without authorization is not a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii). 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).”); see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business); see additionally Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Thus, the Panel finds that Respondent is not using the <rticsale.com>, <rticproducts.com>, <rtic-overstock.com>, <rtic-cooler.com>, and <rticus.com> domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). And the Panel finds that Respondent does not have rights or legitimate interests in the <rticsale.com>, <rticproducts.com>, <rtic-overstock.com>, <rtic-cooler.com>, and <rticus.com> domain names.
For the reasons given above, the Panel will not discuss the disputed domain name <rcoolers.com> for this element of the Policy.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the <rticsale.com>, <rticproducts.com>, <rtic-overstock.com>, <rtic-cooler.com>, and <rticus.com> domain names.
Indeed, as already noted, Respondent uses the <rticsale.com>, <rticproducts.com>, <rtic-overstock.com>, <rtic-cooler.com>, and <rticus.com> domain names to pass off as Complainant to divert Internet users to Respondent’s website to offer unauthorized or counterfeit versions of Complainant’s products. Specifically, Complainant provides evidence showing that the disputed domain names resolve to websites that copy and prominently feature Complainant’s RTIC logo and trademark, product images, and product descriptions from Complainant’s website. Under Policy ¶¶ 4(b)(iv), mimicking a complainant’s website by making use of the complainant’s logo and copyrighted images and text in order to pass off and sell unauthorized or counterfeit versions of complainant’s products demonstrates bad faith. See American Cheerleader Media, LLC. v. ilir shoshi / cheer, FA 1592319 (Forum Jan. 20, 2015) (“The Panel here finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) as … Respondent utilizes a logo and stylized font identical to Complainant’s own, as well as Complainant’s copyrighted images and text in an attempt to pass itself off as Complainant.”); see additionally Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products). Thus, the Panel finds that Respondent registered and used the <rticsale.com>, <rticproducts.com>, <rtic-overstock.com>, <rtic-cooler.com>, and <rticus.com> domain names in bad faith under Policy ¶¶ 4(b)(iv).
Further, Respondent registered the <rticsale.com>, <rticproducts.com>, <rtic-overstock.com>, <rtic-cooler.com>, and <rticus.com> domain names with actual knowledge of Complainant’s mark: the resolving websites display Complainant’s mark and logo and images of Complainant’s products. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); 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). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain names and that this constitutes bad faith under Policy ¶ 4(a)(iii).
Further, Complainant provides evidence showing that Respondent registered the <rticsale.com>, <rticproducts.com>, <rtic-overstock.com>, <rtic-cooler.com>, and <rticus.com> domain name using false WHOIS contact information, This can evince bad faith registration and use under Policy ¶ 4(a)(iii). See CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1504001614972 (Forum May 29, 2015) (“As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).”); see also ABB Asea Brown Boveri Ltd v. Global Mgr, FA 1702001716963 (Forum Mar. 30, 2017) (“Complainant contends that Respondent provided false contact information while registering the disputed domain. Registering a confusingly similar domain name using false contact information can evince bad faith registration.”); see also j2 Global Canada, Inc. and Landslide Technologies, Inc. v. Vijay S Kumar/Strategic Outsourcing Services Pvt Ltd, FA 1411001647718 (Forum Jan. 4, 2016) (“False or misleading contact information indicates bad faith registration and use.”); see also Chevron Intellectual Property LLC v. Phillip Thomas/Chevron Pacific, FA 1504001615524 (Forum May 29, 2015) (“Complainant’s use of false registration data and its unexplained redirection of the disputed domain name to Complainant’s own website are further indications of such bad faith.”); see also McDonald’s Corp. v. Holy See, FA 0304000155458 (Forum June 27, 2003) (“The Panel finds that Respondent provided false contact information in the registration certificates and that such actions, even though not specifically enumerated in the Policy, may form the basis for a finding of bad faith registration and use.”); see also Mars, Incorporated v. RaveClub Berlin, FA 0106000097361 (Forum July 16, 2001) (providing false registration and contact information for infringing domain names evidenced Respondent’s bad faith). Accordingly, the Panel finds that Respondent registered and is using the <rticsale.com>, <rticproducts.com>, <rtic-overstock.com>, <rtic-cooler.com>, and <rticus.com> domain names in bad faith under Policy ¶ 4(a)(iii).
Finally, Respondent has engaged in a pattern of bad faith registration and use of disputed domain names: as noted above, it registered and used in bad faith five of the six domain names that are the subject of the instant proceedings. Registration of multiple domain names containing a complainant’s mark can substantiate an argument that a respondent registered and uses a disputed domain name in bad faith per Policy ¶ 4(b)(ii). See NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732458 (Forum July 3, 2017) (finding that registration of several infringing domain names in a case satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Caterpillar Inc. v. Angie Arendt / DIAHOST .CO / keith mosley, FA1805001789701 (Forum July 2, 2018) (finding that Respondent engaged in a pattern of bad faith and registration by registering multiple domain names that contain Complainant’s famous CATERPILLAR mark); see also Radisson Hotels Internation, Inc. v. Yue Mei Wang / Wang Yue Mei aka Pei Jun Gan / Gan Pei Jun / Jun Yu He / He Jun Yu / Denliyan, FA1504001615349 (Forum June 1, 2015) (“The Panel agrees that Respondent’s registration of the <radissonbluplazachongqing.com>, <radissonbluchongqingshapingba.com>, <radissonplazahoteltianjin.com>, and <radissonbluhotelshanghai.com> domain names, which all infringe on Complainant’s mark, constitutes bad faith under Policy ¶ 4(b)(ii).”). Thus the Panel finds that Respondent registered the <rticsale.com>, <rticproducts.com>, <rtic-overstock.com>, <rtic-cooler.com>, and <rticus.com> domain names in bad faith per Policy ¶ 4(b)(ii).
Having NOT established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED for the domain name <rcoolers.com>.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED for the domain names <rticsale.com>, <rticproducts.com>, <rtic-overstock.com>, <rtic-cooler.com>, and <rticus.com>.
Accordingly, it is Ordered that the <rticsale.com>, <rticproducts.com>, <rtic-overstock.com>, <rtic-cooler.com>, and <rticus.com> domain names be TRANSFERRED from Respondent to Complainant and that the domain name <rcoolers.com> REMAIN WITH Respondent.
Richard Hill, Panelist
Dated: August 31, 2021
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