YETI Coolers, LLC v. Jed Turman
Claim Number: FA1606001677546
Complainant is YETI Coolers, LLC (“Complainant”) of Austin, Texas, USA, represented by Katherine Laatsch Fink of Banner & Witcoff, Ltd., Chicago, Illinois, USA. Respondent is Jed Turman (“Respondent”), represented by Vincent Allen of Carstens & Cahoon, LLP, Dallas, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <customizeyeti.com> (the “Disputed Domain Name”), 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.
Douglas M. Isenberg as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 1, 2016; the Forum received payment on June 1, 2016.
On June 2, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <customizeyeti.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 June 3, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 23, 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@customizeyeti.com. Also on June 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 June 23, 2016.
On June 28, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Douglas M. Isenberg 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 states, and provides evidence to support, that it “sells customized portable coolers, insulated containers, and insulated beverageware” under the trademark YETI (the “YETI Mark”), which is protected by “over 100 active worldwide trademark applications and registrations,” including U.S. Reg. No. 3,203,869 for the mark YETI for use in connection with “portable coolers” (registered Jan. 30, 2007; first used in commerce May 1, 2006). Complainant further states that it “became the registrant of the domain name YETICOOLERS.COM in 2006, and the registrant of the domain name YETI.COM in 2015.”
Complainant states, and provides evidence to support, that Respondent “uses the Disputed Domain Name to resolve to a website… containing hyperlinks which resolve to direct competitors of Complainant and from which Respondent presumably nets pay-per-click profits.”
The Disputed Domain Name was created on January 14, 2016.
Complainant argues the following:
· The Disputed Domain Name is identical or confusingly similar to the YETI Mark because it “includes the entirety of the YETI Mark in combination with the generic terms ‘customize,’ and ‘.com.’” Complainant “offers customized products and customization services to its customers under the YETI Mark. Therefore, the term ‘customize’ in connection with the YETI Mark is generic and describes goods and services that are confusingly similar to [Complainant’s] goods and services.”
· Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because Complainant “does not have any relationship or association with Respondent” and “has not authorized Respondent to use [Complainant’s] YETI Mark, or to register domain names incorporating the YETI Mark”; “when Internet users interested in YETI type the Disputed Domain Name into the address bar of web browsing software, they are unexpectedly directed to Respondent’s Website featuring links to third party suppliers offering products that compete with [Complainant’s] offerings”; and “nothing in the public record (including WHOIS records) suggests that Respondent is commonly known by the Disputed Domain Name.”
· The Disputed Domain Name was registered and is being used in bad faith because “Respondent’s Website offers links to third party suppliers offering products for sale that compete with [Complainant’s] product offerings and accordingly disrupt [Complainant’s] business”; “Respondent capitalizes on visitors’ mistaken belief that they are accessing information and products that [Complainant] offers for sale”; and Complainant’s registrations for the YETI Mark “bestow upon Respondent constructive notice of [Complainant’s] rights in the YETI Mark.”
B. Respondent
Respondent states that “[n]otwithstanding the respective goods or services being offered by the owner of a registered USPTO trademark, the registration alone of a trademark by a company does not necessarily constitute an exclusive ownership for any and all business, promotion, marketing practices or otherwise of said name, especially when said name has already been established in the common vernacular as the name Yeti in English clearly has.”
Respondent further states that “[w]e are aware of at least fourteen (14) other registrants who are currently the owners of a trademark of record with the United States Patent Office bearing the name Yeti in addition to the Complainant” and that “[w]e are aware, and have made phone contact with, owners and operators of other similarly named websites who have not been approached to date by Complainant, but who are themselves offering for sale Complainant’s manufactured goods. In contrast to these, [Respondent] has never conducted any such activity on the domain in question, yet inexplicably, has been contacted and hence these proceedings.”
Respondent further states that it “has at no time in the past nor does he intend in the future to prevent Complainant from entering into its established business practices under the its registered Yeti name” and that Respondent “has not in the past nor does he in the future intend to register and operate domains that are directly adverse or disruptive to the business undertaken by Complainant. This is evidenced by the current and previously existing state of the www.customizeyeti.com webpage which is a default holder page put in place by the registering broker, Go Daddy, Inc. of Arizona. This default webpage has remained essentially unaltered from the day of its registration by [Respondent]. No effort has ever been made on behalf of [Respondent] or his associates to represent that they act on behalf of Complainant or represent Complainant’s manufactured goods or otherwise.” Finally, Respondent states that it “has in no way made efforts to conduct commerce, promotion, distribution, or in any way act under the Yeti name, which is a registered trademark not only of Complainant, but also of numerous other business entities as well.”
The Panel finds that the Disputed Domain Name is identical or confusingly similar to a trademark in which Complainant has rights; that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and that Respondent registered and is using the Disputed Domain Name in bad faith.
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.
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the YETI Mark.
As to whether the Disputed Domain Name is identical or confusingly similar to the YETI Mark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “customizeyeti”), as it is well-established that the top-level domain (i.e., “.com”) may be disregarded for this purpose. See WIPO Overview 2.0, paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
Given that the second-level portion of each of the Disputed Domain Name contains the YETI Mark, the Panel is initially inclined to find that it is confusingly similar to the YETI Mark. The addition of the word “customize” does not alleviate any confusing similarity, especially because, as Complainant states, Complainant “sells customized portable coolers, insulated containers, and insulated beverageware under the YETI Mark” and “has continuously sold customized portable coolers since at least as early as April 2014” (emphasis added). Accordingly, inclusion of the word “customize” in the Disputed Domain Name may in fact “exacerbate[ ] the confusing similarity between the [Complainant’s] trademark and the Domain Name and increase[ ] the risk of confusion between the Domain Name and the…trademarks.” Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Kenneth Terrill, WIPO Case No. D2010-2124 (citing Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561 (citing Yellow Corporation v. MIC, WIPO Case No. D2003-0748 (“when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity”))).
The fact that, as Respondent notes, the word “Yeti” “has already been established in the common vernacular” and that other parties own trademarks that contain the word “Yeti” is irrelevant to an analysis of whether the Disputed Domain Name is confusingly similar to the YETI Mark.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because Complainant “does not have any relationship or association with Respondent” and “has not authorized Respondent to use [Complainant’s] YETI Mark, or to register domain names incorporating the YETI Mark”; “when Internet users interested in YETI type the Disputed Domain Name into the address bar of web browsing software, they are unexpectedly directed to Respondent’s Website featuring links to third party suppliers offering products that compete with [Complainant’s] offerings”; and “nothing in the public record (including WHOIS records) suggests that Respondent is commonly known by the Disputed Domain Name.”
Under the UDRP, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1. Here, although Respondent has submitted a response, it does not rebut any of Complainant’s submissions and offers no “appropriate allegations or evidence.” Indeed, an annex provided by Respondent shows the Disputed Domain Name used in connection with a parked web page with a pay-per-click link that includes an advertisement containing the text “YETI Coolers.” Although this may be, as Respondent says, “a default holder page put in place by” the Registrar, ultimately “a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content – for example, in the case of advertising links appearing on an ‘automatically’ generated basis.” WIPO Overview 2.0, para. 3.8.
Further, while not all pay-per-click pages are in violation of the UDRP, where a page contains advertisements that relate to the relevant trademark, a respondent cannot establish rights or legitimate interests:
Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services"… or from "legitimate noncommercial or fair use" of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.
WIPO Overview 2.0, para. 2.6
Accordingly, the Panel is satisfied that Complainant has proven the second element of the UDRP.
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the UDRP:
(i) circumstances indicating that the respondent has registered or the respondent 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
In this case, Complainant appears to argue that bad faith exists pursuant to paragraph 4(b)(iv), for the reasons set forth above.
Numerous panels have found the use of a domain name containing a complainant’s trademark in connection with a pay-per-click web page that contains advertisements related to the trademark to constitute bad faith pursuant to paragraph 4(b)(iv) of the Policy. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850; Columbia Pictures Industries, Inc. v. North West Enterprise, Inc., WIPO Case No. D2006-0951; and Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753. This is true even if, as stated above, a respondent has not exercised direct control over the content on the web page, because the respondent nevertheless is responsible for such content and could, in fact, take steps to prevent it.
Accordingly, the Panel finds that Complainant has proven the third element 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 <customizeyeti.com> domain name be TRANSFERRED from Respondent to Complainant.
Douglas M. Isenberg, Panelist
Dated: July 1, 2016
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