YETI Coolers, LLC v. Kevin Dargie
Claim Number: FA1606001677551
Complainant is YETI Coolers, LLC (“Complainant”), represented by Katherine Laatsch Fink of Banner & Witcoff, Ltd., Illinois, USA. Respondent is Kevin Dargie (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mycustomyeti.com>, 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.
Sandra J. Franklin 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 <mycustomyeti.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 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 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@mycustomyeti.com. Also on June 6, 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 29, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <mycustomyeti.com> domain name is confusingly similar to Complainant’s YETI mark.
2. Respondent does not have any rights or legitimate interests in the <mycustomyeti.com> domain name.
3. Respondent registered and uses the <mycustomyeti.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant holds a registration for its YETI mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,203,869, registered Jan. 30, 2007). Complainant uses the mark in connection with selling coolers.
Respondent registered the <mycustomyeti.com> domain name on November 4, 2015, and uses it to direct Internet users to a website hosting links to products that compete with Complainant’s products.
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.”).
The Panel finds that Complainant has rights in the YETI mark based on its registration of the mark with the USPTO. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Respondent’s <mycustomyeti.com> domain name includes the YETI mark, the generic terms “my” and “custom,” and the gTLD “.com.” Panels have routinely found that the presence of the gTLD “.com” is irrelevant to an analysis of confusing similarity. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Similarly, generic terms are not distinguishing features when added to a mark in a domain name. See Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <mycustomyeti.com> domain name is confusingly similar to Complainant’s YETI mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims that Respondent is not commonly known by the disputed domain name, and is not authorized to use its YETI mark. The WHOIS associated with the disputed domain name identifies Respondent as, “Kevin Dargie.” The Panel finds that the WHOIS information, and the lack of contradictory information in the record, indicate that Respondent is not commonly known by the disputed domain name per policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant contends that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Respondent’s domain, <mycustomyeti.com>, resolves to a website that displays links to websites that sell products that compete with Complainant’s products. Prior panels have held that a respondent’s use of a confusingly similar domain to host links to products that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Provide Commerce, Inc. v. e on Craze, FA1506001626318 (Forum Aug. 11, 2015) (holding that the respondent was not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii) where the respondent was using the disputed domain name to host generic links to third-party websites, some of which directly competed with the complainant’s business). Thus, the Panel finds that Respondent’s use does not fall within Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s domain resolves to a website which hosts a link titled “Personalized Tumblers,” which redirects to a website offering personalized mugs for sale, including bottles and tumblers described as “Personalized YETI Water Bottles” or “Personalized YETI Tumblers & Colsters.” Previous panels have held that a respondent’s use of a confusingly similar domain name for the purpose of promoting products that compete directly with a complainant’s business constitutes bad faith competition and disruption under Policy ¶ 4(b)(iii). See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Aizhenhua / Aizhenhua, FA140700157872 (Forum Sept. 17, 2014) (finding that because the complainant operated in the field of automobile parts and services and the respondent was using the disputed domain name to display hyperlinks to companies that operate in the same field, the respondent was disrupting the complainant’s business, demonstrating bad faith according to Policy ¶ 4(b)(iii)). Accordingly, this Panel finds that Respondent is using the <mycustomyeti.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Respondent is using the disputed domain name resolves to a website featuring links to products similar to those offered by Complainant, presumably for click-through fees. Prior panels have found similar use to constitute bad faith pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites with services similar to the complainant’s services and merely took advantage of Internet user mistakes). Accordingly, the Panel finds that Respondent has demonstrated bad faith under Policy ¶ 4(b)(iv).
Finally, because of Complainant’s numerous trademark registrations of the YETI mark, Complainant argues that Respondent registered the disputed domain name with at least constructive knowledge of the YETI mark and Complainant’s rights therein. The Panel agrees and finds that Respondent had actual knowledge of the mark and Complainant’s rights, and notes the use of the disputed domain name to directly compete with Complainant. See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware of the complainant’s YAHOO! Mark at the time of registration”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mycustomyeti.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 1, 2016
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