Sub-Zero, Inc. v. George Secher
Claim Number: FA1411001592213
Complainant is Sub-Zero, Inc. (“Complainant”), represented by Tricia L. Schulz of Foley & Lardner LLP, Wisconsin, USA. Respondent is George Secher (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <subzerorepairchicago.net>, registered with Name.com, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 25, 2014; the National Arbitration Forum received payment on November 28, 2014.
On November 26, 2014, Name.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <subzerorepairchicago.net> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 December 2, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 22, 2014 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@subzerorepairchicago.net. Also on December 2, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 29, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 made the following contentions.
i. Complainant owns the SUB-ZERO mark through its many trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1543399, registered June 13, 1989).
ii. Complainant uses the SUB-ZERO mark in connection with its business as a retailer of kitchen appliances. Complainant offers additional services such as installation, repair, and maintenance.
iii. Complainant operates online through numerous domain names, including <subzero.com>, which has been in use since at least 1996.
i. Policy ¶ 4(a)(i)
1. The <subzerorepairchicago.net> domain name is confusingly similar to Complainant’s SUB-ZERO mark, because Respondent has simply added the terms “repair” and “chicago” to the mark.
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights or legitimate interests in the disputed domain name.
2. Respondent is not commonly known by the <subzerorepairchicago.net> domain name. Complainant has not licensed or authorized Respondent to use the SUB-ZERO mark.
3. Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name.
4. Respondent uses the disputed domain name to offer repair services that compete with Complainant.
5. Additionally, Respondent uses the disputed domain name in a way that so imitates Complainant that Respondent is attempting to pass itself off as Complainant.
iii. Policy ¶ 4(a)(iii)
1. Respondent uses the disputed domain name to intentionally divert Internet users to its own website for commercial gain by creating a likelihood of confusion as to its affiliation with Complainant.
2. Respondent had constructive and actual knowledge of Complainant’s rights in the SUB-ZERO mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant is a United States company engaged in the business of providing goods and services as a retailer of kitchen appliances.
2.Complainant owns the SUB-ZERO mark through its many trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1543399, registered June 13, 1989).
3. Respondent registered the disputed domain name on December 8, 2011.
4. Respondent uses the disputed domain name to offer repair
services that compete with Complainant and to so imitate Complainant that it is attempting to pass itself off as Complainant.
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(e), 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 (Nat. Arb. 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 first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the SUB-ZERO mark in connection with its business as a retailer of kitchen appliances. Additionally, Complainant uses the SUB-ZERO mark in connection with its installation, repair and maintenance services. Complainant claims to own the SUB-ZERO mark through its numerous trademark registrations with the USPTO (e.g., Reg. No. 1543399, registered June 13, 1989). Complainant argues that such registrations are sufficient to establish rights in its mark pursuant to Policy ¶ 4(a)(i) requirements. Previous panels have supported this argument. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). As such, the Panel finds that Complainant’s USPTO registrations satisfy the requirements of Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SUB-ZERO mark. Complainant argues that the <subzerorepairchicago.net> domain name is confusingly similar to Complainant’s SUB-ZERO mark, because Respondent has simply added the descriptive and geographical terms “repair” and “chicago”. The Panel also notes that the disputed domain name differs from the mark given the affixation of the generic top-level domain (“gTLD”) “.net” and the omission of the hyphen between the words of the mark. Previous panels have generally found that a domain name differing from a mark by only the addition of a couple of terms does not escape a finding of confusing similarity that is otherwise present on the evidence, and that the affixation of a gTLD and the omission of punctuation are irrelevant to the Policy ¶ 4(a)(i) analysis. See Am. Online, Inc. v. Oxford Univ., FA 114654 (Nat. Arb. Forum Aug. 21, 2002) (“Neither the addition of an ordinary descriptive word nor a geographic qualifier transform Respondent’s domain name into separate and distinct marks for the purpose of a Policy ¶ 4(a)(i) analysis.”); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (finding that the domain name, <tippex.com> is confusingly similar to the complainant’s mark, TIPP-EX and that use of a hyphen does not negate likelihood of confusion). Accordingly, the Panel finds that the <subzerorepairchicago.net> domain name is confusingly similar to Complainant’s SUB-ZERO mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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 (Nat. Arb. 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 (Nat. Arb. 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a)Respondent has chosen to take Complainant’s SUB-ZERO mark and to use it in its domain name and has simply added the generic word “repair” and the geographic indicator “Chicago” which does not detract from the confusing similarity that is clearly present but suggests that the domain name is referring to the repair of Complainant’s products in Chicago;
(b)Respondent registered the disputed domain name on December 8, 2011;
(c)Respondent has, without the permission or authority of Complainant, used the disputed domain name to offer repair services that compete with Complainant and to so imitate Complainant that it is attempting to pass itself off as Complainant;
(d) Complainant alleges that Respondent is not commonly known by the <subzerorepairchicago.net> domain name. The Panel notes that the WHOIS information identifies “George Secher” as the registrant of the disputed domain name. Further, Complainant urges that Respondent is neither licensed nor authorized to use the SUB-ZERO mark. Respondent has failed to submit a response to refute any of Complainant’s contentions. With this information, the Panel finds that Respondent is not commonly known by the <subzerorepairchicago.net> domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record);
(e)Complainant also argues that Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Complainant believes that Respondent uses the disputed domain name to offer competing repair services for Complainant’s products to that of Complainant. See Complainant’s Ex. 2. Generally, panels have held that a respondent offering competing services to that of a complainant does not qualify as a bona fide offering of goods or services, or a legitimate noncommercial or fair use of a disputed domain name. See Am. Tool & Machining, Inc. v. EZ Hitch Inc., FA 113961 (Nat. Arb. Forum July 16, 2002) (holding that Respondent lacks rights and legitimate interests in the domain name because “Respondent is competing in the same industry as Complainant, selling a product that is arguably identical to Complainant's product and under the same name”). Consequently, the Panel finds that Respondent’s competing services do not qualify as 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 Policy ¶ 4(c)(iii);
(f)Additionally, Complainant argues that Respondent uses the disputed domain name in a way that so closely imitates Complainant that it is as if Respondent is attempting to pass itself off as Complainant. Complainant believes Respondent is attempting to pass itself off as Complainant, because Respondent uses the SUB-ZERO marks on numerous occasions throughout its website and it offers similar services to that of Complainant. Previous panels have refused to find any evidence of rights and legitimate interests when a respondent attempts to pass itself off as the complainant. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). As the Panel concludes that the circumstances demonstrate that Respondent is attempting to pass itself off as Complainant, the Panel holds that Respondent’s behavior signifies that it lacks rights or legitimate interests in the <subzerorepairchicago.net> domain name under Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) as Respondent uses the disputed domain name to divert Internet users to its own website for commercial gain. Complainant alleges that Respondent accomplishes this by creating a likelihood of confusion of an affiliation between Complainant and Respondent. Previous panels have not hesitated to find that such behavior constitutes bad faith under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site). Therefore, the Panel finds that Respondent is acting in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent had actual or constructive knowledge of Complainant’s rights in the SUB-ZERO mark when it registered the disputed domain name. Complainant believes Respondent had this knowledge, because Respondent so closely imitated Complainant’s own website and prominently displayed some of Complainant’s marks and logos on its website. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel also finds on the evidence that Respondent has used the disputed domain name to so imitate Complainant that it is attempting to pass itself off as Complainant. That is clearly bad faith use and enables the Panel to draw the inference that the registration of the domain name had also been in bad faith.
Finally, having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration and use of the disputed domain name using the SUB-ZERO mark, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <subzerorepairchicago.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 2, 2015
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