Sub-Zero, Inc. / Wolf Appliance, Inc. v. Jim K
Claim Number: FA2009001912294
Complainant is Sub-Zero, Inc. / Wolf Appliance, Inc. (“Complainant”), represented by Tricia L. Schulz of Foley & Lardner LLP, Wisconsin, United States. Respondent is Jim K (“Respondent”), California, United States.
PRELIMINARY ISSUE : CONSENT TO TRANSFER
In this matter, Respondent has communicated to the Forum the view set out below under the Contentions of the parties. This communication may be interpreted as a consent to the transfer of the domain name in which case it is open to the Panel to forego the traditional UDRP analysis and order an immediate transfer of the <subzerowolfrepairmontreal.com> domain name to Complainant.
It remains however in the discretion of the panel whether to decide to follow this course or not. In reaching such a decision, a panel must weigh up all the facts and exercise its discretion judicially. Accordingly, the Panel exercies its discretion in the manner of the decision in Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008), where the panel decided that:
“Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.”
The Panel has reached similar conclusions in the present case. Accordingly, the Panel will proceed with the traditional approach and analyze the evidence in the light of the various elements set out in the Policy.
Preliminary Issue: Multiple Complainants
There are two Complainants in this matter, Sub-Zero, Inc. and Wolf Appliance, Inc. Complainants argue that they are both wholly-owned subsidiaries of Sub-Zero Group, Inc. Complainant’s products are routinely marketed and sold side-by-side and associated with each other.
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
As the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, it will treat them both as a single entity in this proceeding. However, for reasons of convenience the complainants will be referred to as “Complainant” in this decision.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <subzerowolfrepairmontreal.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 14, 2020; the Forum received payment on September 16, 2020.
On September 16, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <subzerowolfrepairmontreal.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 September 28, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 19, 2020 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@subzerowolfrepairmontreal.com. Also on September 28, 2020, 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 October 23, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant is an industry leader in the sale of high-end residential kitchen appliances. Complainant has rights in the SUB-ZERO and WOLF marks through its registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,543,399, registered June 13, 1989, Reg. No. 2,698,313, registered March 18, 2003). See Compl. Ex. 3. Respondent’s <subzerowolfrepairmontreal.com> domain name is confusingly similar to Complainant’s SUB-ZERO and WOLF marks. Respondent incorporates the marks in their entirety and adds the terms “repair” and “Montreal” along with the “.com” generic Top-Level Domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <subzerowolfrepairmontreal.com> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the marks in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to offer unauthorized repair services for Complainant’s products in an attempt to pass off as Complainant.
Respondent registered and used the <subzerowolfrepairmontreal.com> domain name in bad faith as Respondent attempts to create a likelihood of confusion with Complainant by prominently displaying Complainant’s SUB-ZERO and WOLF marks and offering competing services related to those marks. Respondent had actual knowledge of Complainant’s rights in the SUB-ZERO and WOLF marks due to the long-standing use and fame garnered by the marks.
B. Respondent
Respondent did not submit a formal Response , but on September 28, 2020 it send to the Forum the following communication by email: “ we have deactivated this domain, please transfer it away from us asap or delete it, we do NOT need/want this domain anymore.”
1. Complainant is a United States company that is an industry leader in the sale of high-end residential kitchen appliances.
2. Complainant has established its trademark rights in the SUB-ZERO and WOLF marks through its registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,543,399, registered June 13, 1989, Reg. No. 2,698,313, registered March 18, 2003).
3. Respondent registered the <subzerowolfrepairmontreal.com> domain name on June 26, 2018.
4. Respondent uses the disputed domain name to offer unauthorized repair services for Complainant’s products in an attempt 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(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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the SUB-ZERO and WOLF marks through its registration of the marks with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with copies of its USPTO registration for the marks (e.g. SUB-ZERO - Reg. No. 1,543,399, registered June 13, 1989, WOLF - Reg. No. 2,698,313, registered March 18, 2003). See Compl. Ex. 3. Therefore, the Panel finds that Complainant has adequately shown rights in the marks per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SUB-ZERO and WOLF marks. Complainant argues that Respondent’s <subzerowolfrepairmontreal.com> domain name is confusingly similar to Complainant’s SUB-ZERO and WOLF marks. Registration of a domain name that contains a mark in its entirety and adds generic terms and geographic terms along with a gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)), see also Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis.”). Here, Respondent incorporates the marks in their entirety and adds the terms “repair” and geographic term “Montreal” along with the “.com” gTLD. Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark per 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
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 and WOLF trademarks and to use them in its domain name in their entirety, adding the generic word “repair” and the geographic word “Montreal”;
(b) Respondent registered the <subzerowolfrepairmontreal.com> domain name on June 26, 2018;
(c) Respondent uses the disputed domain name to offer unauthorized repair services for Complainant’s products in an attempt to pass itself off as Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent lacks rights or legitimate interest in the <subzerowolfrepairmontreal.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the SUB-ZERO and WOLF marks or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Jim K” and there is no other evidence to suggest that Respondent was authorized to use the SUB-ZERO and WOLF marks or was commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to offer unauthorized repair services for Complainant’s products in an attempt to pass off as Complainant. Use of a disputed domain name to pass off as a complainant and offer unauthorized services related to a complainant’s product is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Here, Complainant provided screenshots of Respondent’s <subzerowolfrepairmontreal.com> domain name’s resolving webpage that shows Respondent using Complainant’s marks and offering similar services related to the marks. See Compl. Ex. 2. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
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 registered and used the <subzerowolfrepairmontreal.com> domain name in bad faith as Respondent attempts to create a likelihood of confusion with Complainant by prominently displaying Complainant’s SUB-ZERO and WOLF marks and offering competing services related to those marks. Use of a disputed domain name to create a likelihood of confusion with a complainant by offering similar services may be evidence of bad faith per Policy ¶ 4(b)(iv). See Ontel Products Corporation v. waweru njoroge, FA 1762229 (Forum Dec. 22, 2017) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iii) and (iv) through the respondent’s registration and use of the infringing domain name to reference the complainant’s products and offer competitive and/or counterfeit products). Here, Complainant provided screenshots of Respondent’s <subzerowolfrepairmontreal.com> domain name’s resolving webpage that shows Respondent using Complainant’s marks and offering similar services related to the marks. See Compl. Ex. 2.Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent had knowledge of Complainant’s rights in the SUB-ZERO and WOLF marks at the time of registering the <subzerowolfrepairmontreal.com> domain name. Panels often disregard arguments of bad faith based on constructive notice as prior UDRP decisions generally decline to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). It is open to the Panel to determine whether Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this submission, Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant to further a fraudulent scam. As such, the Panel finds that Respondent did have actual knowledge of Complainant’s rights in its mark which supports a finding of bad faith under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the SUB-ZERO and WOLF marks and in view of the conduct of Respondent in using the disputed domain name, 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 <subzerowolfrepairmontreal.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 24, 2020
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