DECISION

 

Sub-Zero, Inc. v. Michael C Riley / MCR Services

Claim Number: FA1704001728627

 

PARTIES

Complainant is Sub-Zero, Inc. (“Complainant”), represented by Tricia L. Schulz of Foley & Lardner LLP, Wisconsin, United States.  Respondent is Michael C Riley / MCR Services (“Respondent”), Florida, United States.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <subzeropartreplacements.com>, registered with Tucows Domains Inc.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on April 24, 2017; the Forum received payment on April 26, 2017.

 

On April 25, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <subzeropartreplacements.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name.  Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 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@subzeropartreplacements.com.  Also on May 8, 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 June 2, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant uses the SUB-ZERO marks in connection with its interstate sale and distribution of kitchen appliances. Complainant registered the SUB-ZERO marks with the United States Patent and Trademark Office

(“USPTO”) (e.g., Reg. No. 1,625,853, registered on Dec. 4, 1990), which demonstrate its rights in the marks. See Compl., at Attached Ex. 3. Respondent’s <subzeropartreplacements.com> is confusingly similar to Complainant’s marks because it simply removes a hyphen, and adds the generic terms “part” and “replacements” along with a generic top-level domain (“gTLD”) “.com.” None of these alterations meaningfully distinguish the domain name from Complainant’s registered marks.

2.    Respondent has no rights or legitimate interests in <subzeropartreplacements.com>. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use its mark for any purpose. Further, Respondent does not use the disputed domain name in connection with any bona fide offering of goods or services, nor does it engage in legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to offer replacement parts for Complainant’s appliances, erroneously leading consumers to believe that Respondent is somehow affiliated with or authorized by Complainant. Similarly, Respondent uses the disputed domain name to offer products and services in direct competition with Complainant. See Compl., at Attached Ex. 2.

3.    Respondent registered and continues to use <subzeropartreplacements.com> in bad faith. Respondent uses the disputed domain name to attract Internet users by creating a likelihood of confusion with Complainant’s mark to indicate an affiliation between Respondent and Complainant that does not exist. Respondent uses this presumed affiliation to offer competing products for commercial gain, pursuant to Policy ¶ 4(b)(iv), resulting in a disruption of Complainant’s business within the meaning of Policy ¶ 4(b)(iii). Further, Respondent had both actual—by way of the widespread notoriety of Complainant’s marks—and constructive—by way of Complainant’s USPTO registrations—notice of Complainant’s rights in the SUB-ZERO marks, both of which may denote bad faith on the part of Respondent.

 

B.   Respondent

1.    Respondent did not submit a Response in this proceeding.

 

FINDINGS

1.    Respondent’s <subzeropartreplacements.com> domain name is confusingly similar to Complainant’s SUB-ZERO mark.

2.    Respondent does not have any rights or legitimate interests in the <subzeropartreplacements.com> domain name.

3.    Respondent registered or used the <subzeropartreplacements.com> domain name in bad faith.

           

 

DISCUSSION

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.”).

 

 

Identical and/or Confusingly Similar

Complainant claims to have registered various versions of the the SUB-ZERO marks with the USPTO (e.g., Reg. No. 1,625,853, registered on Aug. 21, 1989), which it contends demonstrates its rights in the mark. See Compl., at Ex. 3. Registration of a mark with the USPTO sufficiently establishes an entity’s rights in a trademark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Accordingly, the Panel concludes that Complainant has sufficiently represented its rights in the SUB-ZERO marks under Policy ¶ 4(a)(i).

 

The second component of Policy ¶ 4(a)(i) requires complainants to demonstrate that a domain name is identical or confusingly similar to the disputed domain name. Here, Complainant argues that the disputed domain name is confusingly similar to its SUB-ZERO marks because, although it manifests some changes, none are meaningful. First, Respondent adds two generic terms: “part” and “replacements.” Complainant asserts that the addition of these terms fail to meaningfully distinguish <subzeropartreplacements.com> from the SUB-ZERO marks, and in fact enhance confusion because the terms relate to Complainant’s refrigeration business. Similar changes have failed to sufficiently distinguish domain names from registered marks. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).). Similarly, the addition of a gTLD is irrelevant for an analysis under Policy ¶ 4(a)(i). See 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). Finally, Respondent’s domain name removes the hyphen—a change that fails to sufficiently distinguish a mark so as to preclude a finding of confusing similarity. 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). Therefore, this Panel finds that the changes made in the disputed domain name do not adequately differentiate it from the SUB-ZERO marks, rendering the domain confusingly similar under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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 (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 argues that Respondent has no rights or legitimate interests in the <subzeropartreplacements.com> domain name. In addition to asserting that it has not authorized or licensed Respondent to use the SUB-ZERO marks, Complainant contends that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). When a respondent fails to submit a response, Panels may look to the WHOIS records to establish this lack of affiliation between a registrant and a domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Here, the Panel sees that the WHOIS information concerning <subzeropartreplacements.com> identifies “Michael C. Riley” as the registrant, which Complainant argues provides no evidence that Respondent is commonly known by the domain name. See Compl., at Attached Ex. 1. As such, the Panel concludes that Respondent lacks rights and legitimate interest in  <subzeropartreplacements.com> pursuant to Policy ¶ 4(c)(ii).

 

Additionally, Complainant argues that Respondent fails to make either a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the <subzeropartreplacements.com> domain name through its use of the domain name’s resolving site as a platform for competing products and services. See Compl., at Attached Ex. 2. Panels have found this sort of attempted affiliation insufficient to constitute a bona fide offering of goods and services. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”). Complainant contends that Respondent uses the site to offer replacement parts and repair services for Complainant’s appliances, making inaccurate statements that indicate an affiliation exists between the parties when, in fact, Respondent offers competing parts. Further, Complainant argues, Respondent’s use of <subzeropartreplacements.com> cannot be considered noncommercial or fair use because Respondent’s use of the site is for profit. See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a legitimate noncommercial or fair use). Therefore, this Panel agrees that Complainant sufficiently made its prima facie showing against Respondent under Policy ¶ 4(c)(i) and (iii).

 

Registration and Use in Bad Faith

Complainant makes two assertions that fall within the provisions of Policy ¶ 4(b). Firstly, pursuant to Policy ¶ 4(b)(iv), Complainant argues that Respondent registered and uses <subzeropartreplacements.com> in an attempt to attract Internet users for commercial gain based on the SUB-ZERO marks’ widespread notoriety. Using the disputed domain name, Respondent offers replacement parts and repair services for Complainant’s appliances, thereby commercially profiting from enhanced Internet traffic caused by a misrepresented association with Complainant’s SUB-ZERO marks. Using a confusingly similar domain name to attract Internet users to a commercial website can provide evidence of bad faith registration and use of a disputed domain name on the part of a respondent. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website). The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).

 

Further, since the disputed domain name offers products and services that compete with those offered by Complainant, Complainant contends that Respondent unfairly disrupts Complainant’s business within the meaning of Policy ¶ 4(b)(iii). Such use of a confusingly similar domain name can sufficiently evidence bad faith registration and use. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Complainant claims that, in addition to its sale of kitchen appliances, Complainant offers the same replacement parts and repair services that Respondent purports to offer on the resolving webpage for the disputed domain name. See Compl., at Attached Ex. 2 & 5-27. As such, this Panel concludes that Respondent’s use of <subzeropartreplacements.com> satisfies Policy ¶ 4(b)(iv).

 

Finally, Complainant argues that Respondent registered the disputed domain name despite both actual and constructive notice is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Although Panels have held that constructive notice alone is not sufficient for a finding of bad faith, this Panel finds that Complainant’s evidence of actual notice sufficiently constitutes bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith). Complainant argues that the SUB-ZERO marks’ widespread notoriety—and, more so, Respondent’s specific references to Complainant’s products on  <subzeropartreplacements.com>-- evidences actual notice to Respondent of Complainant’s rights in the marks, as well as that Complainant’s extensive registration of the marks with the USPTO constitutes constructive notice of its rights therein. Therefore, the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the SUB-ZERO marks and registered the disputed domain name in bad faith.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

 

Accordingly, it is Ordered that the <subzeropartreplacements.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  June 15, 2017