YETI Coolers, LLC v. Helene Kristiansen
Claim Number: FA1704001728339
Complainant is YETI Coolers, LLC (“Complainant”), represented by Katherine Laatsch Fink of Banner & Witcoff, Ltd., Illinois, USA. Respondent is Helene Kristiansen (“Respondent”), Norway.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yeticupsshop.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 21, 2017; the Forum received payment on April 21, 2017.
On April 25, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <yeticupsshop.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 April 25, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 15, 2017 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@yeticupsshop.com. Also on April 25, 2017, 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 May 18, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a manufacturer and distributor of insulated drink and food container products.
Complainant holds a registration for the YETI trademark, on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,203,869, registered January 30, 2007.
Respondent registered the domain name <yeticupsshop.com> on or about February 21, 2017.
The domain name is confusingly similar to Complainant’s YETI mark.
Respondent has not been commonly known by the domain name.
Complainant does not have any relationship or association with Respondent.
Complainant has not granted Respondent a license or other permission to use the YETI mark for any purpose.
Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use.
Rather, Respondent employs the domain name to resolve to a website at which it is selling what appear to be counterfeit YETI branded products.
Respondent does not have rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent employment of the domain name is an attempt, for commercial gain, to attract Internet users to the website resolving from the domain name by creating confusion among such users as to the possibility of Complainant’s sponsorship of, affiliation with or endorsement of the domain name.
Respondent knew of Complainant and its rights in the YETI mark at the time it registered the domain name.
Respondent has registered and uses the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the YETI trademark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum August 4, 2015) (finding that a UDRP complainant’s USPTO registrations for its mark sufficiently demonstrated its rights in the mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Norway). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <yeticupsshop.com> domain name is confusingly similar to Complainant’s YETI trademark. The domain name includes the entirety of the YETI mark in combination with the generic terms “cups” and “shop,” which both singly and together describe an aspect of Complainant’s business, plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015):
Domain name syntax requires TLDs…. Therefore, … adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.
See also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum January 21, 2016) (finding that confusing similarity existed where a disputed domain name contained a UDRP complainant’s entire mark and differed only by the addition of a generic or descriptive phrase and top-level domain, the differences thus created between the domain name and its contained trademark being insufficient to differentiate one from the other for purposes of the Policy).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <yeticupsshop.com> domain name, that Complainant does not have any relationship or association with Respondent, and that Complainant has not authorized Respondent to use the YETI mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Helene Kristiansen,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii). See, for example, Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (finding, on the basis of the relevant WHOIS information and the fact that a UDRP complainant had not authorized a respondent to use its mark in a domain name, that that respondent was not commonly known by the disputed domain name and so failed to show that it had rights to or legitimate interests in it as provided in Policy ¶ 4(c)(ii)).
We next observe that Complainant asserts, without objection from Respondent, that Respondent employs the <yeticupsshop.com> domain name to divert Internet users away from Complainant’s website to a website controlled by Respondent at which it offers for sale counterfeit YETI branded products. This use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii). See Guess? IP Holder L.P. and Guess?, Inc. v. ZheWen Zuo, FA 643080 (Forum
November 20, 2015):
Respondent’s use of the disputed domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Indeed the disputed domain name is being used by Respondent to sell products that are counterfeit versions of Complainant’s own products. Past panels have declined to grant a respondent rights under Policy ¶¶ 4(c)(i) and (iii) where the domain name was used to sell counterfeit goods.
To the same effect, see also Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Forum April 12, 2002).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the challenged <yeticupsshop.com> domain name, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See H-D U.S.A., LLC v. Linchunming, FA1411001589214 (Forum December 22, 2014):
Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent uses the domain name <yeticupsshop.com>, which is confusingly similar to Complainant’s YETI mark, to attempt to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this too is proof of Respondent’s bad faith in registering and using the domain name. See Affliction, Inc. v. Chinasupply, FA 1223521 (Forum October 23, 2008) (finding that a respondent’s attempt to profit by creating confusion as to the possibility of a UDRP complainant’s connection with the website resolving from a domain name that was confusingly similar to that complainant’s mark in order to sell counterfeit products evidenced bad faith registration and use of the domain name as provided in Policy ¶ 4(b)(iv)).
Finally, under this head of the Policy, it is plain from the record that Respondent knew of Complainant and its rights in the YETI mark when it registered the <yeticupsshop.com> domain name. This further demonstrates Respondent’s bad faith in registering the domain name. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum September 5, 2007) (finding, under Policy ¶ 4(a)(iii), that a UDRP respondent registered a domain name in bad faith, having first concluded that that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name.").
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <yeticupsshop.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 19, 2017
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