YETI Coolers, LLC v. Ryley Lyon / Ditec Solutions LLC
Claim Number: FA1605001675141
The Complainant is YETI Coolers, LLC (“Complainant”) of Austin, Texas, United States of America, represented by Katherine Laatsch Fink of Banner & Witcoff, Ltd., Illinois, United States of America.
The Respondent is Ryley Lyon / Ditec Solutions LLC (“Respondent”) of Soquel, California, United States of America, represented by Rick Ballard of Landrum LLP, California, United States of America.
2. The Domain Name and Registrar
The domain names <yetihandles.net>, <yetihandle.net>, <yeticuphandles.com> and <yeticuphandle.com> (the “Disputed Domain Names”) are registered with Google 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.
David H. Bernstein as Panelist.
The Complainant submitted a Complaint to the Forum electronically on May 16, 2016; the Forum received payment on May 16, 2016.
On May 17, 2016, Google Inc. confirmed by e-mail to the Forum that the <yetihandles.net>, <yetihandle.net>, <yeticuphandles.com>, and <yeticuphandle.com> domain names are registered with Google Inc. and that Respondent is the current registrant of the names. Google Inc. has verified that Respondent is bound by the Google 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 19, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, and email@example.com. Also on May 19, 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 13, 2016.
Complainant filed an Additional Submission pursuant to Forum Supplemental Rule 7 on June 17, 2016.
On June 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, and in the absence of a request by the Respondent to have the dispute decided by a three-member panel, the Forum appointed David H. Bernstein 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 Disputed Domain Names be transferred from Respondent to Complainant.
Complainant asserts that Respondent’s registration and use of the Disputed Domain Names violates Complainant’s rights in the federally-registered trademark “YETI”. Complainant alleges that <yetihandle.net>, <yetihandles.net>, <yeticuphandles.com> and <yeticuphandle.com> are confusingly similar to and incorporate unauthorized uses of the YETI trademark because the Disputed Domain Names consist solely of the YETI mark and the dictionary words “handle/s” or “cup handle/s”.
Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Names because Respondent has no trademark rights in or license to use the YETI mark. Complainant also alleges that Respondent has not used and is not using the Disputed Domain Names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use as the Disputed Domain Names intentionally use the YETI mark for the purpose of misleading customers and diverting web traffic to Respondent’s own webpage on the Amazon.com website for commercial gain.
Complainant also contends that Respondent registered and used the Disputed Domain Names in bad faith. To support this contention, Complainant argues that Respondent disrupted Complainant’s business by using the YETI mark to create initial confusion amongst its consumers in order to attract people to the Respondent’s webpage on Amazon.com where Respondent sells accessories for Complainant’s YETI products..
Respondent argues that the addition of the terms “handle(s)” or “cup handle(s)” is sufficient to distinguish the Disputed Domain Names, which are therefore not identical or confusingly similar to the YETI mark, because the term “handle” or “handles” is a key element of the Disputed Domain Names, and a primary reason consumers are likely to understand that the Disputed Domain Names relate fairly to the cup handles sold by Respondent.
Respondent argues it has a legitimate interest in the Disputed Domain Names because the Disputed Domain Names are all used in connection with a bona fide offering of goods, specifically, the sale of handles that fit Yeti and other brands of cups or tumblers. Respondent also argues that the use of the Disputed Domain Names is not misleading or defamatory due to a disclaimer on their website. Further, Respondent contends that the use of the YETI mark is permitted by the doctrine of nominative fair use, by which a person may use the trademark of another as a reference to describe the other product or compare it to their own.
Respondent also argues that the Disputed Domain Names were not registered in bad faith as they were registered for use in connection with selling handles to fit YETI tumblers. The handles are stated to be a proprietary design, widely known to customers. Respondent also states that Complainant does not itself sell any handles for its cups and tumblers.
C. Additional Submissions
Complainant submitted an additional statement arguing that Respondent had constructive or actual knowledge of the YETI mark and sought to capitalize on the confusion generated by the Disputed Domain Names through increased web traffic. Further, Complainant argued that the Respondent’s unauthorized use of the YETI mark is not a nominative fair use as the use is unnecessary to identify the product and Respondent’s products are not specific to YETI brand drinkware as Respondent states that its products also fit several of YETI’s competitors’ products.
Complainant designs, manufactures and sells a wide variety of products, including containers for various uses, stainless steel drink holders, colsters, portable coolers and others, with over 100 active trademark applications and registrations around the world that encompass “YETI”.
The “YETI” trademark was registered in the United States to YETI Coolers LLC for portable coolers on January 30, 2007, as U.S. Registration No. 3,203,869. YETI became the registrant of the domain name <yeticoolers.com > on March 15, 2006 and of the domain name <yeti.com> on December 10, 2015.
Respondent sells cup handles that fit YETI’s products and also other companies’ products through a dedicated webpage on the Amazon.com website. Respondent registered the Disputed Domain Names on March 8, 2015. All four domain names redirect to the Respondents webpage on the Amazon.com website.
A. Procedural Matters
As an initial matter, the Panel must consider whether to accept the Complainant’s Additional Submission, and if so, whether to give the Respondent an opportunity to respond.
Complainant’s Additional Submission responded to Respondent’s argument that the Disputed Domain Names constitute a nominative fair use. That was an obvious defense on which the Respondent was likely to rely. As such, the Complainant should have anticipated that defense and addressed it in its Complaint. The Additional Submission also responded to the Respondent’s argument that the Disputed Domain Names were not confusingly similar to the YETI trademark. Although the Panel agrees with the Complainant that the Respondent’s argument in that regard was frivolous and without merit, that is an issue that the Panel was able to address based on the arguments already presented in the Complaint. Nothing in the Complainant’s Additional Submission was a new fact or argument that was unavailable to Complainant at the time of the original Complaint. Indeed, the arguments Complainant made in its Additional Submission largely tracked the same arguments the Complainant made about confusing similarity in the Complaint. In sum, the Additional Submission was nothing more than a standard “reply” to the Response; it did not include any new facts or arguments that did not exist at the time of the Complaint or could not have been anticipated.
As explained in Denver Newspaper Agency v. Jobing.com LLC, FA1282148 (Forum Oct. 16, 2009), the Rules (unlike the Forum’s Supplemental Rules) do not provide for the right to submit an Additional Submission; rather, whether to request and or accept an Additional Submission is left to the discretion of the Panel. Rule 12. Here, because the Complainant’s Additional Submission did not address any new legal principles or facts that could not have been anticipated in the Complaint, Panel disregards the Complainant’s Additional Submission. See generally Bar Products.com, Inc. v. RegisterFly.com, FA 829161 (Forum Jan. 9, 2007) (declining to consider Complainant's reply because it adds nothing of substance to the record, and does not address any arguments of Respondent that could not have been anticipated by the Complainant); Eskimo, Inc. v. Phillips, FA 105950 (Forum May 13, 2002) (even though the Forum’s "supplemental rules . . . may permit the filing of such [supplemental] pleadings, they cannot mandate that the Panel consider such submissions"); Parfums Christian Dior S.A. v. Jadore, Case No. D2000-0938 (WIPO Nov. 3, 2000) (no right to file a reply absent exceptional circumstances); Electronic Commerce Media, Inc. v. Taos Mountain, File No. 95344 (Nat. Arb. Forum Oct. 11, 2000) (panel refused to accept supplemental submission, as the Forum’s Supplemental Rules cannot trump ICANN's UDRP Rule 12 which vests the discretion to request and accept supplemental materials solely with the Panel; no new information or arguments were supplied within the supplemental filings; and the Panel had no questions for the parties to address in supplemental materials).
Because the Panel has decided to disregard the Complainant’s Additional Submission, the Panel need not consider whether to give the Respondent an opportunity to file its own additional submission in reply.
The Panel notes that, even if it had considered the Complainant’s Additional Submission, it would not have made any difference on the decision in this case. Indeed, if anything, the Additional Submission would undermine Complainant’s position because, in the Additional Submission, Complainant cites to Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (Nov. 6, 2001), an oft-cited case that lays out the standard for the nominative fair use defense in the context of the UDRP. This citation shows that Complainant was aware of the Oki Data standard, which makes its failure to acknowledge Respondent’s nominative fair use (and its failure to address the Oki Data factors in its Complaint) all the more telling.
B. Analysis of the Complaint
In order to succeed in its claim, Complainant must demonstrate that all of the elements of Paragraph 4(a) of the Policy have been satisfied as to each of the Disputed Domain Names:
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. the Respondent has no rights or legitimate interests with respect to the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs the 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."
The Disputed Domain Names are confusingly similar to Complainant’s federally-registered YETI mark. The fact that the Disputed Domain Names each incorporate the registered YETI mark in its entirety is sufficient to satisfy the identical or confusingly similar standard, despite the presence of additional other words. Dixie Consumer Products LLC v. Private Whois dixiecup.com, FA 1112001419529 (Forum Jan. 27, 2012) (finding the addition of the term “cup” and a gTLD insufficient to avoid confusing similarity between a domain name and a mark); EAuto, L.L.C. v. EAuto Parts, D2000-0096 (WIPO Apr. 9, 2000) (“parts” added to mark EAUTO in <eautoparts.com>); Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, D2000-0662 (WIPO Sept. 19, 2000) (domain name is confusingly similar for purposes of the policy when it wholly incorporates the complainant’s trademark, regardless of the meaning of other words that may be added).
Accordingly, and as noted above, the Panel rejects Respondent’s argument that the terms “handle/s” or “cup handle/s” are sufficiently dominant to avoid actual consumer confusion, as actual consumer confusion is irrelevant to this standing requirement and more properly considered in the bad faith analysis of the claim. Nor does the addition of those dictionary words distinguish the domain names, which wholly incorporate the distinctive YETI trademark.
Complainant has therefore satisfied its burden under the first factor.
One way in which a respondent can demonstrate that it has rights or legitimate interests in a domain name under paragraph 4(c)(i) of the Policy would be to show use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods and services.
Respondent (citing Toyota Motor Sales U.S.A., Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010)) argues that it is making a nominative fair use of the YETI trademark to indicate to consumers that it sells accessories for use with YETI brand cups and tumblers. As noted above, in the context of the UDRP, an oft-cited standard for assessing nominative fair use is the standard articulated in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (Nov. 6, 2001). Although that decision does not reference the trademark law principle of “nominative fair use,” the standards are functionally equivalent, and the four part test articulated in Oki Data is shaped by the same underlying policy concerns. Under that standard, to demonstrate a bona fide interest under paragraph 4(c)(i) of the Policy, Respondent:
i. Must actually be offering the goods or services at issue;
ii. Must use the site to sell only the trademarked goods, otherwise it could be using the trademark to bait Internet users and then switch them to other goods;
iii. Must accurately disclose the relationship between the registrant and the trademark owner; and
iv. Must not try to corner the market in all domain names, thus depriving the owner of the trademark from reflecting its own mark in a domain name.
The Oki Data test was developed in the context of an authorized retailer, and as Complainant points out in its Complaint, Respondent was never authorized to sell Complainant’s products. Nevertheless, the Oki Data standard has repeatedly been applied in the context of unauthorized resellers as well. See, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., D2007-1524 (WIPO Jan. 28, 2008); Volvo Trademark Holding AB v. Peter Lambe, D2001-1292 (WIPO June 8, 2005). Indeed, there is no reason to distinguish between nominative fair use principles whether the user is authorized or unauthorized. Either way, if the use is fair and non-confusing, it should be permitted.
Respondent easily meets both the Oki Data standard as well as the nominative fair use standard articulated by the court in Toyota. First, Respondent does provide the goods and services at issue, namely, handles which fit YETI and other cups. See Exhibit 8, Amended Complaint.
With respect to the second factor, Complainant alleges that Respondent’s handles are not designed exclusively for use on YETI cups, but rather can also be used on other brands of cups (such as Rtic, Sic Cup and more). That, though, does not implicate the policy underlying this factor, which is to avoid “bait and switch” scams. Here, the nature of the handles is that they can be used for other brands of cups and tumblers as well. In that context, Respondent has a legitimate interest in using the term “YETI" in the Disputed Domain Names in order to communicate that the handles can be used as an accessory for YETI (and other brands) cups. Cf. Nikon, Inc. v. Technilab, D2000-1774 (WIPO Feb. 26, 2001) (holding use of Nikon-related domain names to sell Nikon and competitors’ cameras was not a legitimate use). Complainant has not established that Respondent’s use of the Disputed Domain Names constitutes a bait and switch or that it otherwise increases the probability that, having been drawn to the Disputed Domain Names at issue by the Complainant’s trademark, consumers will be deceived into purchasing alternative competing products or services.
Third, Respondent’s website accurately describes the relationship between the Respondent and the Complainant. The website (a copy of which was submitted by the Complainant with its Complaint) features a disclaimer, under the heading “Important Information,” that states that “YETI . . . [is a] registered trademark of YETI Coolers LLC” and that “Thermik is not endorsed or sponsored by YETI Coolers, LLC.” More importantly, on the Amazon.com webpage at issue, it is clear from the context that the seller of the handles is THERMIK, not YETI. The headline states “Thermik Handle for Yeti Rambler 30 oz. Tumblers Rtic, Sic Cup, more.” That instantly communicates that the seller is Thermik, not Yeti. Underneath that headline, Amazon includes the name of the vendor; here it states “by Thermik,” further confirming the source of these goods. If there were any remaining doubt, the image of the handle advertised on the website prominently features the mark THERMIK. In context, it is clear that this is a third party handle being sold for use on YETI and other brands of cups and tumblers.
The one factor that gives the Panel pause is the fourth, which prohibits the Respondent from trying to corner the market in all reasonably good domain names containing the mark by registering so many domain names that it deprives the owner of the trademark from reflecting its own mark in a domain name. The policy underlying this fourth factor is to ensure that the Complainant and other retailers also have the ability to use domain names containing the trademark at issue. Back in 2001, when the Oki Data decision was written, that was a legitimate concern because there was only one viable commercial gTLD (.com), and two other potential gTLDs (.net and .org). Thus, registering several of the best domain names in the .com gTLD could interfere with the trademark owner’s ability to reflect the mark in a domain name.
That concern is greatly reduced in the modern domain name era, where there are hundreds of new gTLDs and ccTLDs. Registering a series of domain names in the .com space may still be reflective of an absence of legitimate interests in some cases, but on this record, the Complainant has failed to show that the Respondent’s registration of these four domain names vitiates Respondent’s strong nominative fair use rights. Cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., D2000-1525 (WIPO, Jan. 29, 2001) (registration of fourteen domain names constituted “cornering the market”); Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, D2004-0481 (WIPO Aug. 20, 2004) (registration of three to five domain names, used for selling bona fide goods for which the domain names are descriptive, is not cornering the market); Estate of Paul Flato v. Newcal Galleries Ltd., D2014-1945 (WIPO Jan. 12, 2015) (availability of other relevant domain names suggested no intention to “corner the market”).
For these reasons, the Panel holds that Complainant has failed to establish that Respondent has no rights or legitimate interests in the Disputed Domain Names.
In light of the above finding, it is unnecessary for the Panel to evaluate in detail the Complainant’s assertion that the Respondent registered and used the Disputed Domain Names in bad faith. Briefly, the same facts that support Respondent’s claim of legitimate interests also show that Respondent’s registration and use of the Disputed Domain Names was not in bad faith.
Complainant has failed to establish that the Respondent has no rights to or legitimate interest in the <yetihandles.net>, <yetihandle.net>, <yeticuphandles.com>, and <yeticuphandle.com> Domain Names. Accordingly, the Complainant’s request that the Domain Names be transferred is DENIED.
Accordingly, it is Ordered that the <yetihandles.net>, <yetihandle.net>, <yeticuphandles.com>, and <yeticuphandle.com> Domain Names REMAIN WITH Respondent.
David Bernstein, Panelist
Dated: July 11, 2016
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