YETI COOLERS, LLC v. ELISA MAREK / ETCH WORKZ
Claim Number: FA1604001672835
Complainant is YETI COOLERS, LLC (“Complainant”), represented by Maurine L. Knutsson of Banner & Witcoff, Ltd., Illinois, USA. Respondent is ELISA MAREK / ETCH WORKZ (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name is <youryeti.com>, registered with FastDomain Inc.
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.
Fernando Triana, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 29, 2016; the Forum received payment on April 29, 2016.
On May 2, 2016, FastDomain Inc. confirmed by e-mail to the Forum that the disputed domain name <youryeti.com> is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain 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 May 3, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 27, 2016 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@youryeti.com. Also on May 3, 2016, 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 May 27, 2016.
On June 3, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Fernando Triana, Esq., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns the trademark YETI in several jurisdictions as shown below:
Country Trademark Reg. No. Reg. Date
USA YETI 3203869 1/30/2007
USA YETI TANK 4818317 9/22/2015
USA YETI COLSTER 4833419 10/13/2015
USA YETI RAMBER 4871725 12/15/2015
COLSTER
Australia YETI 1348156 1/10/2011
Canada YETI 1387081 1/13/2010
European YETI 008920167 8/27/2010
Community
Japan YETI 5341884 7/30/2010
Mexico YETI 1491488 10/31/2014
Philippines YETI COOLERS 4–2011–008554 6/7/2012
South Africa YETI 2010/03803 3/11/2013
Complainant also owns the domain names <yeticoolers.com> since 2006 and <yeti.com> since 2015.
Respondent’s disputed domain name <youryeti.com> is confusingly similar to Complainant’s trademarks as it merely adds the generic term “your” and the generic top-level domain (“gTLD”) “.com”.
Respondent has no rights or legitimate interests in or to the disputed domain name <youryeti.com>.
Complainant does not have any relationship or association with Respondent and has not authorized Respondent to use its trademarks or to register any domain names incorporating the trademark YETI.
Respondent is not commonly known by the disputed domain name.
Respondent has not used and is not using the disputed domain name in connection with a bona fide offering of goods or services and has not made and is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Since in 2015 the disputed domain name resolved to a website offering for sale beverage-ware directly competing with Complainant’s products and currently the disputed domain name resolves to an inactive website displaying the message, “Sorry, this shop is currently unavailable,” which constitutes inactive holding.
Respondent registered and used the disputed domain in bad faith.
Respondent’s failure to make active use of the disputed domain name is evidence that Respondent registered and is using it in bad faith.
Respondent refused to transfer the disputed domain name to Complainant.
B. Respondent
The disputed domain name was created to offer personalization services to customers who own YETI drink-ware, to differentiate their YETI from any other; hence the website slogan: “A YETI is just a YETI, unless it is YOUR YETI”.
Complainant offers personalization services by means of the website rambleron.com and has a registered mark for RAMBLER ON.
Complainant does not own a mark for YOUR YETI.
Complainant could have registered the disputed domain name <youryeti.com> instead of the domain name <rambleron.com>.
In the website to which the disputed domain name resolves to, Responded offered personalization and customization services for YETI drink-ware, from November 2015 until January 22, 2016, when Respondent received a letter from Complainant threatening legal action if the use did not cease and the disputed domain name was not transferred.
Respondent requested to become a YETI dealer, to which Complainant responded that their dealers are not allowed to maintain a website or business in connection with Complainant’s trademarks.
A search of the Internet found multiple third parties sites using the trademark RAMBLER, thus, Complainant’s action against Respondent regarding the disputed domain name is an attempt to harass Respondent.
The disputed domain name is inactive due to the legal threats from Complainant, upon favorable outcome of this proceeding, Respondent fully intends to resume use of the disputed domain name.
1. Complainant owns the trademark YETI in the United States of America and several other jurisdictions, since before the disputed domain name was registered by Respondent.
2. Respondent was aware of the Complainant’s rights in the trademark YETI, yet it incorporated it in the disputed domain name.
3. Respondent has never been commonly known by the disputed domain name or the trademark YETI.
4. Respondent is not affiliated with Complainant in any way: Complainant has never authorized, contracted, licensed or otherwise permitted Respondent to use the trademark YETI, nor is Respondent an authorized vender, supplier or distributor of Complainant’s goods and services.
5. Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services.
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.
Complainant contends to be the owner of the trademark YETI in the United States of America and several other jurisdictions to goods within international class 21.
i) Existence of a trademark or service mark in which Complainant has rights
Firstly, it is important to point out that paragraph 4(a) of the Policy requires the existence of trademark rights. As a matter of general principle, industrial property rights are typically acquired by registration before a competent office.
The generally accepted definition of a trademark, involves the concept of a distinctive force as the most relevant element. It is this “distinctiveness” that gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a sign is registered as a trademark, it is surrounded by a presumption of sufficient distinctive force and the owner is granted with an exclusive right over the trademark, which entitles him or her to prevent any third party from using the registered sign or any other sign confusingly similar to it.
However, the UDRP does not discriminate between registered and unregistered trademarks[1] and thus, it is well established that a complainant is not required to own a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce.
In this case, Complainant has proven its rights in the trademark YETI (Exhibit 4 to the Complaint).
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademark and the exclusive right to use it in connection with the stated goods. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive.
Therefore, the Panel concludes that Complainant has demonstrated rights in the trademark YETI for purposes of Paragraph 4(a)(i) of the Policy.
ii) Identity or confusing similarity between the disputed domain name and Complainant’s trademark
Complainant alleges that the disputed domain name is confusingly similar with Complainant’s trademark YETI.
In the first place, before establishing whether or not the disputed domain name <youryeti.com> is confusingly similar to Complainant’s trademark YETI, the Panel wants to point out that the addition of generic top-level domains (gTLDs), e.g., “.com,” “.biz,” “.edu,” or “.org”, may be disregarded when determining if the disputed domain name is identical or confusingly similar to the registered trademark[2].
UDRP Panels have unanimously accepted that the inclusion of the “.com” gTLD in a disputed domain name may be disregarded in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks and Walmart Puerto Rico, D2000-0477 (WIPO July 25, 2000), the panel stated:
The addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services.
Furthermore, the Panel believes that the disputed domain name <youryeti.com> is confusingly similar to the trademark YETI as per the typical UDRP criteria. The Panel considers that the reproduction of the trademark YETI, by the disputed domain name <youryeti.com>, is sufficient grounds to establish that the disputed domain name is confusingly similar to the trademark[3]. Especially since the disputed domain name reproduces entirely Complainant’s trademark without any other distinctive elements. Consequently, consumers will assume that the owner of the disputed domain name is the manufacturer of YETI beverage-ware.
In addition, the Panel agrees with Complainant on the conclusion that including the term “your” as a prefix of the disputed domain name is not sufficient to make the disputed domain name different from the trademark YETI.
In fact, the expression “your”, according to the Merriam Webster Dictionary is an adjective, that means, “[R]elating to or belonging to you: made or done by you,”[4] which simply emphasizes the trademark YETI as “your” directly relates to whatever comes next, thus, the YETI is yours. Consequently, the expression “your” is generic.[5] Hence, consumers are likely to expect the disputed domain name to be related to YETI products. Thus, the disputed domain name is confusingly similar to Complainant’s trademark.
Respondent merely adds a generic expression “your” to the distinctive trademark YETI. This addition rather than distinguishing the disputed domain names from Complainant’s trademarks makes it confusingly similar to them[6]. Hence, the disputed domain name should be deemed as confusingly similar to Complainant’s registered trademark[7].
In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain name <youryeti.com> is confusingly similar to Complainant’s trademark YETI and thus, the requirement set forth in paragraph 4(a)(i) of the Policy is duly complied with.
a) Prima Facie Case.
Regarding this second element of Paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring the Complainant to prove the lack of rights or legitimate interests of the Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the Respondent[8].
In Julian Barnes v. Old Barn Studios Ltd., D2001-0121 (WIPO Mar. 30, 2001), the Panel stated that:
“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head”.
Therefore, a Complainant is required to make a prima facie case that Respondent lacks of rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of production shifts to Respondent, who must come forward with concrete evidence of its rights or legitimate interests[9]. If Respondent fails to do so, Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name <youryeti.com> because of the following: i) Respondent has no rights or legitimate interests in or to the disputed domain name <youryeti.com>; ii) Complainant does not have any relationship or association with Respondent; iii) Complainant has not authorized Respondent to use its trademarks or to register any domain names incorporating the trademark YETI; iv) Respondent is not commonly known by the disputed domain name; v) Respondent has not used and is not using the disputed domain name in connection with a bona fide offering of goods or services; and vi) Respondent has not made and is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of production to Respondent.
b) Respondent’s rights or legitimate interests in the disputed Domain Name.
Paragraph 4(c) of the Policy includes a nonexclusive listing of circumstances that prove a respondent’s rights or legitimate interests in a domain name:
(i) Before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent states that Complainant offers personalization services by means of the website rambleron.com and has a registered mark for RAMBLER ON and that Complainant does not own a mark for YOUR YETI. Furthermore, that Complainant could have registered the disputed domain name <youryeti.com> instead of the domain name <rambleron.com>.
Moreover, Respondent asserts to have found multiple third parties sites using the trademark RAMBLER, thus, Complainant’s action against Respondent regarding the disputed domain name is an attempt to harass Respondent.
Finally, that the disputed domain name is inactive due to the legal threats from Complainant, upon favorable outcome of this proceeding, Respondent fully intends to resume use of the disputed domain name.
The Panel notes that Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. In particular, Respondent has failed to make submissions to demonstrate that it has rights or legitimate interests to the disputed domain name.
Respondent had the opportunity to dismiss Complainant’s arguments one by one but chose not to do so. Respondent simply stated facts involving third parties to justify its actions. However, the fact that Complainant offers personalization services with a different domain name than Respondent’s disputed domain name, does not grant Respondent any rights regarding <youryeti.com>. The fact that there are other parties possibly violating Complainant rights does not legitimize Respondent’s infringement. The fact that YOUR YETI is not registered as a trademark, does not allow Respondent to use Complainant’s trademark YETI in its domain name.
Moreover, based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
There has been no evidence produced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of legitimate use of the disputed domain name or reasons to justify the choice of the trademark YETI in its business operation.
There has been no evidence filed to show that Complainant has licensed or otherwise permitted Respondent to use the trademark YETI or to apply for or use any domain name incorporating the trademark YETI.
There has been no evidence attached to show that Respondent has been commonly known by the disputed domain name.
There has been no evidence to show that Respondent has any registered trademark rights with respect to the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s trademark YETI.
There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The plan to use the disputed domain name once this proceeding is finalized is not demonstrable preparation to use the domain name in connection with a bona fide offering of goods or services.
Therefore, the requirement set forth in paragraph 4(a)(ii) of the Policy is duly complied with as Respondent lacks of any right or legitimate interest in the disputed domain name.
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(1) Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(3) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.
Respondent claimed that in the website to which the disputed domain name resolves to, Responded offered personalization and customization services for YETI drink-ware, from November 2015 until January 22, 2016, when Respondent received a letter from Complainant threatening legal action if the use did not cease and the disputed domain name was not transferred.
Furthermore, as per evidence filed by Complainant and confirmation from Respondent, the disputed domain name has not been used since January 22, 2016.
As stated by the panel in State Farm Mut. Auto. Ins. Co.[10], the requirement of use in bad faith does not require that it prove in every instance that a respondent is taking positive action.
The mere failure to make an active use of the disputed domain name is indicative of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)[11].
Thus, the Panel considers that Respondent obtained, is using and refused to transfer to Complainant the disputed domain name, primarily for the purpose of disrupting the business of a competitor, attracting Internet users by creating confusion and preventing the owner of the trademark from reflecting its sign in the disputed domain name.
Hence, the Panel concludes that such use of the disputed domain name by Respondent constitutes bad faith usage under paragraph 4(b) of the Policy.
Consequently, the three elements of the Policy, paragraph 4(a) are satisfied in the present case in respect to 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 disputed domain name <youryeti.com> be TRANSFERRED from Respondent to Complainant.
Fernando Triana, Esq., Panelist
Dated: June 9, 2016
[1] See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000); see also The British Broadcasting Corporation v. Jamie Renteria, D2000-0050 (WIPO Mar. 27, 2000).
[2] See Altec Industries, Inc. v. I 80 Equipment, FA 1437753 (Forum May 18, 2012).
[3] See ER Marks, Inc. and QVC, Inc. v. Hansmann,FA 1381755 (Forum May 6, 2011); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2011).
[4] http://www.merriam-webster.com/dictionary/your
[5] See Qwest Communications International Inc. v. Quest Business Strategies Corporation, FA 206342 (Forum Nov. 4, 2003) (“Respondent’s <yourqwest.com> domain name is confusingly similar to Complainant’s QWEST mark. It entirely incorporates Complainant’s fanciful QWEST mark with the addition of the personal possessive pronoun ‘your,’ which does nothing to dispell[sic] the confusing similarity that the domain name has with Complainant’s mark.”); see also Oki Data, supra note 3 (stating, “[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied.”).
[6] See LEGO Juris A/S v. Wyntergreen.ca, D2010-2101 (WIPO Feb. 1, 2011) (“The disputed domain name <legodeal.com> is confusingly similar to the LEGO trademark in that Complainant adds only the generic term ‘deal’ as a suffix. The addition of ‘deal’ does not mitigate any possible confusion, rather contributes to the likelihood that consumers will believe that the website is related to Complainant.”). Prior cases have held that the incorporation of the term ‘deal(s)’ into a domain name is non-distinctive and does not avoid confusing similarity. See, e.g., Red Bull GmbH v. Euinet Corporation, D2007-0771 (WIPO July 24, 2007) (finding that the domain name <redbulldeals.com> is confusingly similar to the RED BULL trademark because ‘deals’ ‘refers to a commercial activity’ and refers specifically to “redbull”, suggesting a commercial activity relating to “redbull”, thereby confirming the trademark function of the “redbull” element of the disputed domain name’); see also QVC Inc. and ER Marks Inc. v. Unique Boutique, LLC / Domains by Proxy, Inc., D2009-0135 (WIPO May 6, 2009) (finding that the ‘deals’ portion of the disputed domain name <qvcdeals.com> ‘may tend, if anything, to increase the likelihood of confusion, because the word indicates endorsement of the domain name by Complainant’, owner of the QVC mark.”)
[7] See Forest Laboratories, Inc. v. candrug, D2008-0382 (WIPO Apr. 24, 2008) (“[W]hen a respondent merely adds generic or descriptive terms to a distinctive trademark, the domain name should be considered confusingly similar to the registered trademark”); see also Bayer Aktiengesellschaft v. H. Monseen, D2003-0275 (WIPO May 30, 2003).
[8] See Arla Foods amba v. Bel Arbor / Domain Admin, PrivacyProtect.org, D2012-0875 (WIPO June 7, 2012); see also F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Servs., D2012-0474 (WIPO Apr. 24, 2012).
[9] See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 1, 2000).
[10] See State Farm Mut. Auto. Ins. Co. v. Sotelo d/b/a Toltec, FA1008269 (Forum July 17, 2007).
[11] See State Farm, supra note 10; see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Forum May 18, 2000).
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