Sub-Zero, Inc. / Wolf Appliance, Inc. v. Jim K / Dmitriy Kolchin
Claim Number: FA2101001927188
Complainant is Sub-Zero, Inc. / Wolf Appliance, Inc. (“Complainant”), represented by Tricia L. Schulz of Foley & Lardner LLP, Wisconsin, USA. Respondent is Jim K / Dmitriy Kolchin (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <subzerocares.com>, <subzero-care.com>, and <wolf-care.com>, registered with GoDaddy.com, LLC; Wild West Domains, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 5, 2021; the Forum received payment on January 5, 2021.
On January 6, 2021, GoDaddy.com, LLC; Wild West Domains, LLC confirmed by e-mail to the Forum that the <subzerocares.com>, <subzero-care.com>, and <wolf-care.com> domain names are registered with GoDaddy.com, LLC; Wild West Domains, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC; Wild West Domains, LLC has verified that Respondent is bound by the GoDaddy.com, LLC; Wild West Domains, 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 January 11, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 1, 2021 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@subzerocares.com, postmaster@subzero-care.com, postmaster@wolf-care.com. Also on January 11, 2021, 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 February 3, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
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.”
There are two Complainants in this matter: Sub-Zero Inc. and Wolf Appliance Inc.
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.”).
Complainant shows that the Complainants in this case are both wholly owned subsidiaries of Sub-Zero Group Inc. The Panel finds that this is sufficient to establish a nexus between Complainants, and will collectively refer to them as “Complainant.”
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
There are also two Respondents in this case. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant alleges that the disputed domain names are effectively controlled by the same person, operating under several aliases. Complainant shows that the disputed domain names share a similar format and very similar content, were all registered using the same privacy shield company, and the WHOIS information lists very similar servers for all three domain names. The Panel accepts Complainant’s arguments that the disputed domain names are jointly controlled and will refer to Respondents as “Respondent.”
A. Complainant
1. Respondent’s <subzerocares.com>, <subzero-care.com>, and <wolf-care.com> domain name are confusingly similar to Complainant’s SUB-ZERO and WOLF marks.
2. Respondent does not have any rights or legitimate interests in the <subzerocares.com>, <subzero-care.com>, and <wolf-care.com> domain names.
3. Respondent registered and uses the <subzerocares.com>, <subzero-care.com>, and <wolf-care.com> domain names in bad faith.
B. Respondent did not file a Response.
Complainant, Sub-Zero Inc. and Wolf Appliance Inc., offers residential kitchen appliances and services. Complainant has rights in the SUB-ZERO and WOLF marks based upon the registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,543,399, registered June 3, 1989, and Reg. No. 2,698,313, registered Mar. 18, 2003).
Respondent registered the <subzero-care.com> domain name on September 29, 2015, the <wolf-care.com> domain name on August 13, 2018, and the <subzerocares.com> domain name on April 3, 2020, and uses them to claim affiliation with and compete with 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 Panel finds that Complainant has rights in the SUB-ZERO and WOLF marks based upon the registration with the USPTO. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <subzerocares.com>, <subzero-care.com>, and <wolf-care.com> domain names each contain one of Complainant’s marks and adds a generic term and the “.com” gTLD. The addition of a generic term and a gTLD does not distinguish a domain name from a mark under Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). The removal of the hyphen in Complainant’s SUB-ZERO mark is irrelevant to determining confusing similarity. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). Thus, the Panel finds that Respondent’s <subzerocares.com>, <subzero-care.com>, and <wolf-care.com> domain names are confusingly similar to Complainant’s SUB-ZERO and WOLF marks.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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”).
Complainant claims that Respondent does not have rights or legitimate interests in the <subzerocares.com>, <subzero-care.com>, and <wolf-care.com> domain names because Respondent is not commonly known by the disputed domain names and is not authorized to use Complainant’s SUB-ZERO or WOLF marks. The WHOIS information of record lists “Jim K” and “Dmitriy Kolchin” as the registrants of the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names, and thus has no rights under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Complainant argues that Respondent doesn’t use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use but instead claims affiliation with Complainant and offers competing services. Using of a disputed domain name to offer competing goods and/or services under a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the websites resolving from the disputed domain names, demonstrating the prominent use of Complainant’s marks to offer repair services in direct competition with Complainant. The Panel finds that this use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the <subzerocares.com>, <subzero-care.com>, and <wolf-care.com> domain names in bad faith because Respondent poses as Complainant for commercial gain by offering competing services under Complainant’s mark. The use of a disputed domain name to pass off as a complainant and offer competing goods or services evinces bad faith under Policy ¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)). Accordingly, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iii) and/or (iv).
Complainant also argues that Respondent had actual knowledge of Complainant’s rights in the SUB-ZERO and WOLF marks. Actual knowledge of a complainant’s rights in a mark demonstrates bad faith under Policy ¶ 4(a)(iii) and may be shown by the entirety of circumstances surrounding registration and use of the domain name. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 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”); see also eBay, Inc v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith pursuant to Policy ¶ 4(b)(iv) where the respondent capitalized on the fame associated with the complainant’s EBAY mark and profited from it by diverting users seeking the complainant to the respondent’s website). Complainant claims that it is inconceivable that Respondent didn’t have actual knowledge of Complainant’s marks when it registered the disputed domain names, based upon the notoriety of the marks and Respondent’s specific reference to Complainant’s products at the resolving webpages. The Panel agrees and finds bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <subzerocares.com>, <subzero-care.com>, and <wolf-care.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 4, 2021
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