Sub-Zero, Inc. v. Joseph DelMaestro / Aaron's Refrigeration
Claim Number: FA2104001940115
Complainant is Sub-Zero, Inc. (“Complainant”), represented by Tricia L. Schulz of Foley & Lardner LLP, Wisconsin, USA. Respondent is Joseph DelMaestro / Aaron's Refrigeration (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <subzerospecialists.com> and <subzerospecialist.com>, registered with Google LLC, and <subzerobrooklyn.com>, registered with 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.
Carol Stoner, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 2, 2021; the Forum received payment on April 2, 2021.
On April 5, 2021; April 6, 2021, Google LLC; Wild West Domains, LLC confirmed by e-mail to the Forum that the <subzerospecialists.com> and <subzerospecialist.com> are registered with Google LLC and <subzerobrooklyn.com> is registered with Wild West Domains, LLC and that Respondent is the current registrant of the names. Google LLC and Wild West Domains, LLC have verified that Respondent is bound by the Google LLC and Wild West Domains, LLC registration agreements and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 12, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 3, 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@subzerospecialists.com, postmaster@subzerospecialist.com, postmaster@subzerobrooklyn.com. Also on April 12, 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.
A timely Response was received and determined to be complete on April 29, 2021.
Complainant submitted Additional Submissions on May 10, 2021 and May 14, 2021. Respondent submitted Additional Submission and Annexes on May 13, 2021. Panel considers the abovementioned submissions to be in compliance with Supplemental Rule 7.
On May 4, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Carol Stoner, Esq., 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.
Complainant requests that the domain names <subzerospecialists.com>, <subzerospecialist.com>, and <subzerobrooklyn.com> be transferred from Respondent to Complainant.
Respondent requests that relief as to the transfer to Complainant of domain names <subzerospecialists.com> and <subzerospecialist.com> be denied.
However, Respondent stipulates as to the transfer of <subzerobrooklyn.com> to the Complainant and Complainant concurs.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
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.”
Here, Complainant contends that the domain names in dispute are all owned by the same holder despite the <subzerobrooklyn.com> domain name being owned by “Joseph DelMaestro” of “Aaron’s Refrigeration” and the <subzerospecialists.com> and <subzerospecialist.com> domain names being owned by the entity “Aaron’s Refrigeration” with no individual registrant name listed. Respondent does not challenge that it is the owner of all three domain names at issue. Rather, Respondent expressly acknowledged ownership of the Subject Domain Names in the Response (e.g., “The domains in questions in this Complaint were established by me . . . .”).
Panel therefore, rules that Complainant has submitted compelling evidence that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases.
PRELIMINARY ISSUE: CONSENT TO TRANSFER
Respondent argues, in its Response at 3., that it has “in good faith abandoned the <subzerobrooklyn.com> domain name.” The Panel finds that this willful abandonment means that Respondent consents to transfer the <subzerobrooklyn.com> domain name to Complainant.
Moreover, Complainant in its Additional Submission, respectfully submits that, in totality, this should be viewed as Respondent consenting to the transfer of <subzerobrooklyn.com> and requests that the Panel rule accordingly.
However, after the initiation of this proceeding, Registrar, Google LLC, placed a hold on Respondent’s account and therefore Respondent cannot transfer the <subzerobrooklyn.com> domain name while this proceeding is still pending.
The Panel finds, that in a circumstance such as this, where Respondent has not contested the transfer of the <subzerobrooklyn.com> domain name but instead agrees to transfer the <subzerobrooklyn.com> domain name in question to Complainant, that the Panel will forego the traditional UDRP analysis and order an immediate transfer of the <subzerobrooklyn.com> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Here, this Panel will also respect the mutual request of the Parties and will make no finding of fact or of compliance (or not) with the Policy, of <subzerobrooklyn.com> but will summarily order the transfer of the subject name to the Complainant.
A. Complainant
Complainant, Sub-Zero, Inc., is an industry leader in the sale of high-end residential kitchen appliances, including refrigerators, freezers, wine storage systems, etc., which are marketed and sold throughout the United States. Complainant registered its SUB-ZERO mark with the United States Patent and Trademark Office (USPTO). See Compl. Ex. 3. The disputed domain names, <subzerospecialists.com> and <subzerospecialist.com> are identical or confusingly similar to Complainant’s SUB-ZERO mark because they wholly incorporate Complainant’s SUB-ZERO mark while adding the terms “specialist” and “specialists”, however, removing the hyphen between “sub” and “zero”, and adding the “.com” generic top-level domain (“gTLD”) to form a domain name.
Respondent does not have any rights or legitimate interests in the <subzerospecialists.com> and <subzerospecialist.com> domain names because Respondent is not commonly known by the <subzerospecialists.com> and <subzerospecialist.com>, and domain names, nor has it received authorization to use Complainant’s SUB-ZERO mark.
Respondent does not use the <subzerospecialists.com> and <subzerospecialist.com> domain names in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Rather, Respondent uses Complainant’s SUB-ZERO mark to offer repair and maintenance services for not only SUB-ZERO-branded appliances, but also for appliances of competitors; which is an overt attempt to divert users away from Complainant’s website. Respondent’s use of a disclaimer on SUB-ZERO websites, neither legitimizes, nor confers rights or interests in, the two contested domain names of <subzerospecialists.com> and <subzerospecialist.com>.
Respondent registered or uses the <subzerospecialists.com> and <subzerospecialist.com>, domain names in bad faith because Respondent created a likelihood of confusion as an attraction for commercial gain through Respondent’s use of Complainant’s SUB-ZERO mark. Respondent is also acting in bad faith because Respondent is using the <subzerospecialists.com> and <subzerospecialist.com> domain names as an attraction for commercial gain. Respondent also uses Complainant’s SUB-ZERO mark to advertise competing brands to Complainant.
Respondent acted with actual knowledge of Complainant’s rights in the SUB-ZERO mark.
B. Respondent
Respondent, Joseph DelMaestro, a/k/a Aaron Beth, is the owner of Aaron’s Refrigeration Service Co., that provides installation, repair, and maintenance services for refrigerators, freezers and other kitchen appliances. Respondent registered the business entity SUB-ZERO REFRIGERATION SERVICE with the State of New Jersey in 1993 and operated under that name since that time. Respondent states that his businesses have been commonly known by his customers, for the past 30 years, as SUB-ZERO SPECIALIST and SUB-ZERO REFRIGERATION SERVICE. Respondent states that he relied upon these business names, to maintain contact with his customers. Respondent has been known by these names on websites such as Yelp, Google, and Angie’s List.
Respondent argues that Complainant has not sufficiently established rights in the SUB-ZERO mark because the terms are both descriptive and generic, and therefore, form a weak trademark. In addition to Complainant’s business, the term SUB-ZERO has also been used to describe temperature, a character from Mortal Kombat, and a race horse. Respondent also contends that it has been authorized to display the SUB-ZERO mark, as a result of receiving the required certification to repair Complainant’s products.
The Panel notes the following registration dates of Respondent’s domain names:
<subzerospecialists.com> was registered on October 26, 1998;
<subzerospecialist.com> was registered on December 2, 2004; and
<subzerobrooklyn.com> was registered on March 16, 2018. See Compl. Ex. 1.
C. Additional Submissions
The following Additional Submissions are accepted by Arbitrator under the Forum’s Supplemental Rule 7.
Complainant’s First Additional Submission
Complainant alleges that, the Response does not comply with the Rules or the Supplemental Rules and thus should not be considered by the Panel. Nonetheless, the Response attaches various exhibits and makes various assertions and arguments that Respondent contends purportedly supports Respondent’s position. However, the Response and assertions and arguments contained therein, a large portion of which are irrelevant to this proceeding, fail to support Respondent’s legitimate ownership or use of any of the Subject Domain Names (as defined in the Complaint). Accordingly, Complainant respectfully requests that the Panel issue a decision transferring the Subject Domain Names to Complainant.
The updated UDRP Complaint contains a section arguing that the Subject Domain Names are all owned by the same holder, either outright or through multiple aliases. Complainant renews that request in its Additional Submission, particularly as Respondent has seemingly abandoned his ownership of <subzerobrooklyn.com> by consent.
Complainant also alleges as follows:
Complainant re-iterates its positions that Respondent’s marks are confusingly similar to the marks of Complainant; that the Respondent has no rights in the marks; and that Respondent registered and used the marks in bad faith.
Complainant alleges that Respondent’s disclaimer and non-affiliation language on one website are not sufficient to legitimize Respondent’s use and registration of the subject domain names.
Complainant is not claiming that Respondent cannot use “Sub-Zero” to refer to Respondent’s own services under all circumstances.
Complainant’s Second Additional Submission
Complainant alleges as follows.
Complainant re-iterates its arguments that Respondent’s marks are identical or confusingly similar to Complainants’ marks; that Respondent has no rights or interests in disputed marks; and that Respondent had both registered and used Complainant’s marks in bad faith.
Respondent does not own any rights in the SUB-ZERO Marks and the same are not weak or descriptive.
Equitable defenses generally are not applicable in UDRP cases.
Complainant also has not uncovered any documentation or information that would confirm that Complainant hired or paid Respondent or a company operating as “Subzero Specialist” or “Subzero Specialists” in the past.
Respondent’s Additional Submission
Respondent alleges as follows:
I am not a “bad” actor, but rather an accomplished businessperson, with a long and reputable career in the appliance business, starting in 1966. I also served my country both in the US Army and in the US Marine Corp., and obtained an honorable discharge.
I am merely using Complainant’s registered marks in a fair use method, not sponging- off of their goodwill. I have always posted non-affiliation disclaimers in all of my advertising and websites, with regards to Sub-Zero.
SZ has been aware of my presence because I have performed work for them. And at SZ’s request, I complied with restrictions re: the use of their logos.
I own two trademarks and two patents on the National Register. My use of “weak” and “non-descriptive” trademark language comes from the USPTO portal.
To show that I am well-known and well established within the Sub-Zero service industry, I am attaching information from every service call since 1993.
SZ has provided no proof that I am infringing upon their sales, as I operate primarily in the service business and only in one territory.
The locking of my domain names has eroded my customer’s access and goodwill and my business is down by 43%.
A. Panel concurs with Respondent’s willful abandonment of <subzerobrooklyn.com> thereby constituting, in fact, a Stipulation of Consent of Transfer of said mark to Complainant, as well as Complainant’s concurrence of same. Panel will not, therefore, rule upon the merits of Complainant’s arguments in these regards for this domain name.
B. Regarding the disposition of <subzerospecialists.com> and <subzerospecialist.com>, Panel finds that
(1) the domain names <subzerospecialists.com> and <subzerospecialist.com> registered by Respondent are 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 names <subzerospecialists.com> and <subzerospecialist.com>; and
(3) the domain names <subzerospecialists.com> and <subzerospecialist.com>, have been registered and are being used in bad faith.
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.
Complainant claims rights in the SUB-ZERO mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to show that Complainant has rights in that mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. mmanuel mmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides evidence that it has registered its SUB-ZERO mark with the USPTO (e.g. Reg. No. 1,543,399. Registered on Jun. 13, 1989). See Compl. Ex. 3. The Panel therefore, finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the <subzerospecialists.com>, and <subzerospecialist.com>, domain names are identical or confusingly similar because they wholly incorporate Complainant’s SUB-ZERO mark while adding an additional word to a gTLD to form a domain name. A domain name is found to be confusingly similar to a complainant’s mark, under Policy ¶ 4(a)(i), where a domain name incorporates a complainant’s mark despite the addition or subtraction of words, geographic terms, and punctuation. See See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); See also 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”). Here, each of the two domain names in the dispute incorporate Complainant’s SUB-ZERO mark, but remove the hyphen in between “sub” and “zero”.
The <subzerospecialists.com> and <subzerospecialist.com> incorporate “specialist” or “specialists”. Despite the addition of these terms, the Panel finds that the <subzerospecialists.com> and <subzerospecialist.com>, domain names are identical or confusingly similar under Policy ¶ 4(a)(i).
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”).
Panel rules that Respondent does not have any rights or legitimate interests in the <subzerospecialists.com> and <subzerospecialist.com>, domain names because Respondent is not commonly known by the <subzerospecialists.com> and <subzerospecialist.com> domain names, nor has Respondent received authorization to use Complainant’s SUB-ZERO mark. A Respondent is not found to be commonly known by a domain name, under ¶ 4(c)(ii), where the identifying WHOIS information is unrelated to the domain name and where Respondent has not received authorization to use the Complainant’s mark.
See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and was not licensed or authorized to use the ALASKA AIRLINES mark). The WHOIS information provided by Complainant lists “Aaron’s Refrigeration” as the registrant for the <subzerospecialists.com> and <subzerospecialist.com> domain names. See Compl. Ex. 1. Complainant also asserts that it has not provided Respondent authorization to use the SUB-ZERO marks, or logos. Therefore, the Panel finds that Respondent is not commonly known by the <subzerospecialists.com> and <subzerospecialist.com> domain names. See Compl. Ex. 1.
Panel’s review of the pleadings, including Additional Submissions, leads Panel to conclude that Respondent is not using the <subzerospecialists.com> and <subzerospecialist.com> domain names in connection with a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. This is because Panel’s review of Respondent’s websites, shows that Respondent is using the domain names to offer competing services in appliance sales and repair. A domain name is not being used in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use, under Policy ¶¶ 4(c)(i) and (iii), where a Respondent uses a domain name to offer services that compete with Complainant’s business. 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).”).
Each of the resolving websites advertise maintenance repairs for Sub-Zero Refrigeration units. See Compl. Ex. 2. As Respondent is not authorized to use Complainant’s SUB-ZERO marks, Respondent’s repair service advertisements compete with Complainant’s services. Therefore, the Panel finds that Respondent is not using the <subzerospecialists.com> and <subzerospecialist.com> domain names in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Panel has viewed Compl. Ex. 2., wherein Respondent is prominently displaying Complainant’s SUB-ZERO marks and logos, throughout its website.
Here, Respondent is luring internet users away from Complainant’s websites and onto Respondent’s websites, via a look-a-like illusion of party affiliation.
Respondent’s said use of the <subzerospecialists.com> and <subzerospecialist.com> domain names in the cause of such obvious diversionary tactics, cannot be deemed to be in connection with a bona fide offering of goods or services, nor a legitimate non-commercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant further argues that Respondent does not have any rights or legitimate interests in the <subzerospecialists.com> and <subzerospecialist.com> domain names despite the presence of a disclaimer contained in Respondent’s websites. Panel rules that the presence of a disclaimer, particularly, where, as here, it is buried within text, is not sufficient to confer rights and legitimate interests in a domain name.
See Google Inc. v. Domain Admin / Whois Privacy Corp, FA 1726692 (Forum May 16, 2017) (finding that the mere existence of a disclaimer on a webpage is not sufficient to confer rights and legitimate interests in a disputed domain name). Two of the domain names, <subzerospecialists.com> and <subzerospecialist.com> both include a disclaimer that says “Sub Zero Refrigerator Repair is not affiliated with Sub-Zero Freezer Co.” See Compl. Ex. 2. Panel finds that this disclaimer is insufficient to confer the Respondent rights or legitimate interests in the <subzerospecialists.com> and <subzerospecialist.com> domain names.
Complainant has successfully met its burden of making a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). However, Respondent has not successfully shouldered its shifted burden to evidence that it does indeed have rights and legitimate interests in the disputed domain names.
This Panel has found clear and convincing evidence of bad faith registration and use by Respondent in contravention of UDRP Rule 3(b)(ix)(3); and UDRP Policy ¶¶ 4(b)(iii), (iv).
Bad faith registration will be found where Respondent had actual knowledge of Complainant’s rights prior to registering the domain name, which can be proven through the totality of the circumstances. Toshiba Corporation v. MengNi, FA1709001747411 (Forum Oct. 3, 2017); Robert Half Int’l Inc., FA1712001764368 (“Actual knowledge may be proven through a totality of circumstances surrounding the registration of the disputed domain name.”).
Complainant’s Exhibit 3 evidences that its date of first use of the SUB-ZERO mark was in 1945 and that through its massive advertising budget, it has established itself to be well-known for providing high-end appliances to residential units since that time. Complainant received a trademark registration for SUB-ZERO in 1989. Respondent, in the self-same appliance business, did not file its domain name registration until 1998, nearly 10 years later.
It is no leap of logic to say that the totality of the circumstances clearly indicate that Respondent registered the business entity name “Sub-Zero Refrigeration Service,” and then the disputed Domain Names sometime thereafter, with actual knowledge of Complainant and its marks. This is so because Respondent says the same at his Response 1, where he leapt to “fill the vacuum” left by Complainant allegedly closing its offices in the New Jersey area. This constitutes bad faith registration of a domain name, with actual knowledge of Complainant’s rights in the SUB-ZERO mark under the UDRP Policy ¶ 4(b)(iv).
Actual knowledge is also imputed to Respondent, based upon Respondent’s use of Complainant’s well-known mark. Here, Complainant’s mark had a date of first use of 1945, and was the subject of a $20 million dollar annual advertising budget. See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Despite this accumulated knowledge, Respondent disregarded Complainant’s trademark rights and traded on their accumulated goodwill by prominently incorporating the marks into his own business Domain Names and their resolved-to websites, without Complainant’s authorization or approval.
Complainant propounds a compelling argument that Respondent is also using the subzerospecialists.com> and subzerospecialist.com> domain names in bad faith because Respondent is creating confusion as to source, as an attractant for commercial gain. A domain name is found to be used in bad faith when it is so closely associated with a Complainant’s well-known marks that it appears to be derivative of it. That is, that its display of competing products creates a likelihood of confusion as to the true source of the goods. This charging goal of commercial gain calls for a finding of bad faith use of mark under Policy [¶ 4(b)(iv).
See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). See also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Complainant’s provided screenshots of Respondent’s resolving websites, show Complainant’s SUB-ZERO marks prominently displayed, along with pictures of its products. But these websites also feature marks from Complainant’s competitors. See Compl. Ex. 2.
Therefore, this Panel finds that Respondent is using domain names containing Complainant’s marks to “intentionally attempt to attract, for commercial gain, internet users” to Respondent’s website “by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the] web site or location or of a product or service on [the] web site or location” in direct contravention of UDRP Policy ¶ 4(b)(iv).
Panel concurs with Respondent’s Stipulation of Consent and Complainant’s concurrence to transfer the domain name of <subzerobrooklyn.com> to Complainant.
And further, having established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED as to the transfer of the domain names of <subzerospecialists.com> and <subzerospecialist.com>.
Accordingly, it is Ordered that the <subzerospecialists.com>, <subzerospecialist.com> and <subzerobrooklyn.com> domain names be TRANSFERRED from Respondent to Complainant.
Carol Stoner, Esq., Panelist
Dated: May 19, 2021
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