YETI Coolers, LLC v. Chris Chaffins / cc
Claim Number: FA1605001675148
Complainant is YETI Coolers, LLC ("Complainant"), represented by Katherine Laatsch Fink of Banner & Witcoff, Ltd., Illinois, United States. Respondent is Chris Chaffins / cc ("Respondent"), Texas, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yeticoolersbytheriver.com> ('the Domain Name'), registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne of Palmer Biggs Legal as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 16, 2016; the Forum received payment on May 16, 2016.
On May 16, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <yeticoolersbytheriver.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 May 17, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 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@yeticoolersbytheriver.com. Also on May 17, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 10, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal 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's contentions can be summarised as follows:
The Complainant has trade mark registrations for YETI for cooling products, beverage ware, and clothing across the world, including in the USA where the Respondent is based. It owns yeti.com and yeticoolers.com.
The Respondent uses the Domain Name to resolve to a web site containing hyperlinks, which resolve to direct competitors of Complainant, and Complainant has not authorised Respondent to use the YETI Marks.
The Domain Name is confusingly similar to the Complainant's YETI Marks with additional generic terms "coolers" which relates to the Complainant's business and the additional generic terms "by," "the," and "river." The gTLD .com is ignored for the purposes of assessing similarity under the Policy.
Respondent has no rights or legitimate interests in the Domain Name. It has no relationship with the Complainant. It has not used the Domain Name in connection with a bona fide offering of goods and services.
Respondent registered and is using the Domain Name in bad faith. Its use constitutes disruption under ¶ 4(b)(iii) of the Policy. Respondent capitalises on visitors' mistaken beliefs that they are accessing products that the Complainant offers for sale contrary to ¶ 4(b)(iv) of the Policy.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant has trade mark registrations for YETI for cooling products, beverage ware, and clothing across the world, including in the USA where the Respondent is based with first use recorded as 2006.
The Respondent uses the Domain Name, registered in 2016, to resolve to a web site containing hyperlinks which resolve to third party businesses with no connection to the Complainant, including a site offering personalised mugs.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.").
Identical or Confusingly Similar
The Domain Name consists of the Complainant's YETI mark, the generic terms "coolers" which relates to the Complainant's business, the further generic terms "by," "the," and "river," and the gTLD .com.
See Warner Bros Entm't Inc. v Sadler FA 250236 (Nat. Arb. Forum May 19, 2004) (finding that addition of generic terms to Complainant's mark failed to alleviate the confusing similarity between the mark and the domain names).
The gTLD .com does not serve to distinguish the Domain Name from the YETI mark, which is the distinctive component of the Domain Name. See Red Hat Inc v Haecke FA 726010 (Nat Arb Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy to a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Respondent has not responded and given any reasons for its registration and use of the Domain Name. Respondent does not appear to be commonly known by the Domain Name. Complainant has not authorised the use of its mark and the Respondent does not appear to be connected with the Complainant in any way.
The Domain Name has been used to link to a pay-per-click website to other third party commercial web sites including beverage ware. The Panel notes Disney Enters. Inc. v Dot Stop FA 145227 (Nat Arb. Forum Mar 17 2003) where the Panel concluded that the respondent's diversionary use of the complainant's mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites was neither a bona fide offering of goods and services nor a legitimate non-commercial or fair use of the disputed domain names.
The Panel thus concludes that there is no rights or legitimate interests in the Domain Name under Paragraphs 4(c)(i) or (iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yeticoolersbytheriver.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: June 22, 2016
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