Sub-Zero, Inc. v. Corp Service / Subzero
Claim Number: FA1611001702433
Complainant is Sub-Zero, Inc. (“Complainant”), represented by Tricia L. Schulz of Foley & Lardner LLP, Wisconsin, United States. Respondent is Corp Service / Subzero (“Respondent”), Wisconsin, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <subzero-servicio.com>, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 10, 2016; the Forum received payment on November 14, 2016.
On November 11, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <subzero-servicio.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 November 14, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 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@subzero-servicio.com. Also on November 14, 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 December 6, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
Complainant is an industry leader in the sale of kitchen appliances, including refrigerators and freezers, which are marketed and sold throughout the world under its SUB-ZERO brand. Complainant has registered the SUB-ZERO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,625,853, registered Dec. 4, 1990), which demonstrates Complainant’s rights in its mark. The domain name is confusingly similar to Complainant’s mark as it merely removes the hyphen between “sub” and “zero,” adds a hyphen between “subzero” and “servicio,” adds the generic Spanish term “servicio,” which translates to “service” in English, and affixes the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the domain name, and Respondent is not a licensee of Complainant. Further, Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to offer repair and maintenance services for Complainant’s refrigerators, freezers, wine coolers, and other products. In doing so, Respondent makes prominent and unauthorized use of Complainant’s mark; Respondent has simply copied Complainant’s SUB-ZERO bowtie logo and added the term “servicio.”
Respondent registered and is using the domain name in bad faith. First, Respondent uses the domain name to offer competing services. Id. Second, Respondent, through the domain name, attempts to pass itself off as Complainant. Id. Third, Respondent used fraudulent WHOIS information in connection with the registration of the domain name; specifically, “Subzero” is listed as the “Registrant Organization.” Fourth, because of Complainant’s trademark registrations with the USPTO, it is clear that Respondent registered the domain name with at least constructive knowledge of Complainant’s mark and rights therein.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Sub-Zero, Inc. of Madison, WI, USA. Complainant is the owner of domestic and international registrations for the mark SUB-ZERO, which it has used continuously since at least as early as 1945, in connection with its provision of refrigerators, freezers, and related kitchen appliance goods and services. Complainant also owns registrations for numerous domains incorporating its SUB-ZERO mark including <subzero.com>.
Respondent is Corp Service / Subzero of Madison, WI, USA. Respondent’s registrar’s address is unlisted. The Panel notes that the domain name was registered on or about September 24, 2011.
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.”).
Complainant is an industry leader in the sale of kitchen appliances, including refrigerators and freezers, which are marketed and sold throughout the world under its SUB-ZERO brand. Complainant has registered the SUB-ZERO mark with the USPTO (e.g., Reg. No. 1,625,853, registered Dec. 4, 1990), which Complainant contends demonstrates its rights in the mark. Prior panels have found that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). The Panel here finds that Complainant has demonstrated its rights in its mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s domain name is confusingly similar to Complainant’s mark as it merely removes the hyphen between “sub” and “zero,” adds a hyphen between “subzero” and “servicio,” adds the generic Spanish term “servicio,” which translates to “service” in English, and affixes the “.com” gTLD. Past panels have found similar actions fail to distinguish domain names and protected marks. See Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark); see also Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel here finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent makes no contention with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes 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). Complainant has met this burden.
Complainant alleges that Respondent has no rights or legitimate interests in the domain name. According to Complainant, Respondent is not commonly known by the domain name, and Respondent is not a licensee of Complainant. The Panel notes that the WHOIS information lists “Corp Service” as registrant and “Subzero” as registrant organization, and that Respondent has failed to provide any evidence for the Panel’s consideration. As the WHOIS information is inconclusive and Respondent provided no evidence on this point, the Panel finds no basis in the available record to conclude that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
Complainant argues that Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Complainant asserts that Respondent uses the domain name to offer repair and maintenance services for Complainant’s refrigerators, freezers, wine coolers, and other products. In doing so, Complainant claims that Respondent makes prominent and unauthorized use of Complainant’s mark; according to Complainant, Respondent has simply copied Complainant’s SUB-ZERO bowtie logo and added the term “servicio.” Previous panels have decided that neither a respondent’s use of a domain name to offer competing services nor a respondent’s use of a domain name to pass itself off as a complainant constitutes a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because Respondent has not provided a response to this action Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant maintains that Respondent uses the domain name to offer competing services. Past panels have found evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv) when a respondent uses a confusingly similar domain name to offer services that are directly competitive with a complainant’s business. See Spark Networks PLC v. Houlihan, FA 653476 (Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant). The Panel here finds that Respondent’s use of the disputed domain name constitutes bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).
Complainant asserts that Respondent, through the domain name, attempts to pass itself off as Complainant. Prior panels have found that a respondent’s attempt to pass itself off as a complainant is evidence of bad faith. See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Respondent’s use of the disputed domain name to pass itself off as Complainant, supports the conclusion that Respondent registered and is using the domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant alleges that Respondent used fraudulent WHOIS information in connection with the registration of the domain name; Complainant asserts that “Subzero” is listed as the “Registrant Organization.” Previous panels have determined that a respondent’s use of false, misleading, and/or incorrect information in connection with the registration of a domain name constitutes bad faith. See Home Dir., Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith); see also Video Direct Distribs. Inc. v. Video Direct, Inc., FA 94724 (Forum June 5, 2000) (finding that the respondent acted in bad faith by providing incorrect information to the registrar regarding the owner of the registered name). The Panel here finds that Respondent has engaged in bad faith use and registration of the disputed domain.
Complainant has proven this element.
Because Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <subzero-servicio.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: December 20, 2016
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