Sub-Zero, Inc. v. jose foster / Vanessa Guardia / services
Claim Number: FA2104001943495
Complainant is Sub-Zero, Inc. (“Complainant”), represented by Tricia L. Schulz of Foley & Lardner LLP, Wisconsin, USA. Respondent is jose foster / Vanessa Guardia / services (“Respondent”), represented by jose foster / M. Yesenia Iacona, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <subzerofloridarepair.com> and <subzeroflrepair.com>, registered with GoDaddy.com, LLC; Gandi SAS.
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.
Héctor Ariel Manoff as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 30, 2021; the Forum received payment on April 30, 2021.
On May 3, 2021; May 4, 2021, GoDaddy.com, LLC; Gandi SAS confirmed by e-mail to the Forum that the <subzerofloridarepair.com> and <subzeroflrepair.com> domain names are registered with GoDaddy.com, LLC; Gandi SAS and that Respondent is the current registrant of the names. GoDaddy.com, LLC; Gandi SAS has verified that Respondent is bound by the GoDaddy.com, LLC; Gandi SAS 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 10, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 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@subzerofloridarepair.com, postmaster@subzeroflrepair.com. Also on May 10, 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 from jose foster was received and determined to be complete on May 31, 2021.
Respondent Vanessa Guardia Services submitted a Response, however, it was received late. Thus the Forum does not consider the Response to be in compliance with ICANN Rule 5.
On June 8, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Héctor Ariel Manoff 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 be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant alleges 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. 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 contends that the <subzerofloridarepair.com> and <subzeroflrepair.com> domain names are operated by a single entity since they are similar in format, both incorporating Complainant’s SUBZERO mark and referencing “Florida” and “repair.” Additionally, the website associated with the <subzerofloridarepair.com> domain name contains a Facebook link that resolves to a Facebook page titled “Subzero Appliances Repair” which lists <subzeroflrepair.com> as its website address in the “About” section. See Amend. Compl. Annex B, Exs. 2 & 6.
The Panel finds that Complainant has sufficiently presented evidence demonstrating that the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
PRELIMINARY ISSUE: FOREIGN LANGUAGE RESPONSE
The Panel notes that Respondent, jose foster, files a response in Spanish. Vanessa Guardia Services submitted a Response in English; however, this response was received late. Thus, the Forum does not consider the Response to be in compliance with ICANN Rule 5. Nevertheless, this Panel finds that the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
Complainant requests that the language of this administrative proceeding proceeds in the English language pursuant to UDRP Rule 11(a).
Respondent does not refer to the language issue.
In addition, this Panel notices that WHOIS information establishes Respondent in Florida, United States of America, country which would demonstrate familiarity with the English language.
Respondent has filed a response to the Complaint which shows an understanding of the English language.
Previous panels have decided that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009).
Therefore, pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
A. Complainant
1- The Complainant, Sub-Zero, Inc., of Madison, Wisconsin is a wholly-owned subsidiary of Sub-Zero Group, Inc.
2- Sub-Zero is an industry leader in the sale of high-end residential kitchen appliances that are marketed and sold throughout the United States and the world under various SUB-ZERO marks. Sub-Zero also provides replacement parts and installation, maintenance, and repair services for its refrigerators, freezers, and other products.
3- Continuously and exclusively since at least as early as 1945, Sub-Zero has used SUB-ZERO as a trademark, alone or in combination with other word and/or design elements, in connection with Sub-Zero’s various high-end residential kitchen appliances and related repair, installation, and maintenance services.
4- Sub-Zero owns trademark registrations throughout the world consisting solely of or featuring the respective SUB-ZERO marks, including various U.S. registrations.
5- Registrations predate the filing date of the Subject Domain Names by well over a decade.
6- Respondent has operated the domain name <subzero-wolf.com> since at least as early as 2003, where authorized information and details are provided regarding SUB-ZERO-branded high-end kitchen appliances and the related maintenance, installation, and repair services.
7- Complainant submits that the Subject Domain Names are all, in fact, owned by the same owner/holder, either outright or through aliases, and thus Complainant can bring this single, joint proceeding.
8- Complainant submits that even though the registration agreement for one of the Subject Domain Names may be in Spanish, the circumstances and evidence surrounding the proceeding indicate that the Respondents are familiar with the English language such that the proceeding should be conducted in English.
9- Respondents registered the Subject Domain Names in the years 2017 and 2020.
10- Respondents’ use of the Subject Domain Names is likely to mislead Internet visitors into believing, erroneously, that Respondents and the Subject Domain Names are Complainant, or are affiliated with, sponsored, approved, or certified by, or otherwise officially connected with Complainant and its SUB-ZERO Marks.
12- The Subject Domain Names are highly similar in appearance, sight, sound, and connotation to Complainant’s SUB-ZERO Marks.
12- The Respondent has no rights or legitimate interests to the Subject Domain Names. Respondent is not commonly known by the Subject Domain Names. Respondents’ use of the Subject Domain Names does not constitute a bona fide offering of goods/services, nor does it constitute a non-commercial use or fair use of the Subject Domain Names.
13- The Subject Domain Names were registered and are being used in bad faith.
14- <subzerofloridarepair.com> domain name is used to operate a webpage in an attempt to pass itself of as Complainant, or as officially sponsored by or connected with Complainant, and to offer directly competing services for commercial gain is likely to cause customer confusion, disrupt Complainant’s business.
15- <subzeroflrepair.com> was registered on January 17, 2020 and Respondent has failed to make a legitimate current, active use of it.
B. Respondent
1- Respondent, Jose Foster, argues that he is the owner of the domain name <subzeroflrepair.com>, which has been active for (4) four months approximately.
2- Respondent agrees to transfer the domain name.
3- Respondent argues to have taken the corresponding actions to cancel the domain name from <https://www.gandi.net/en>.
Complainant, Sub-Zero, Inc., is a wholly-owned subsidiary which commercializes high-end residential kitchen appliances under various SUB-ZERO marks and provides replacement parts and installation, maintenance, and repair services. Complainant owns trademark registrations for SUB-ZERO and a domain name <subzero-wolf.com> since at least as early as 2003.
Respondent registered the disputed domain names in the years 2017 and 2020 and used them in an attempt to pass itself of as Complainant, or as officially sponsored by or connected 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.
Identical and/or Confusingly Similar
Complainant asserts rights in the SUB-ZERO mark based on registration of the mark with the USPTO (e.g., Reg. No. 1,543,399, registered June 13, 1989). See Amend. Compl. Annex B., Ex. 3. Registration of a mark with the USPTO is a valid showing of rights in a mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Since Complainant provides evidence of registration of the SUB-ZERO mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <subzerofloridarepair.com> and <subzeroflrepair.com> domain names are confusingly similar to Complainant’s SUB-ZERO mark because they incorporate the entire mark, simply removing the hyphen and adding the terms “repair” and the geographic descriptors “Florida” or “FL,” along with the “.com” gTLD to form the disputed domain name. The removal of a hyphen and the addition of generic, descriptive, and geographic terms to a mark, along with the addition of a gTLD, may be insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). 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"); see also The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”).
Thus, the Panel finds that the disputed domain names are confusingly similar to the SUB-ZERO mark 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”).
Complainant argues Respondent does not have rights or legitimate interests in the <subzerofloridarepair.com> and <subzeroflrepair.com> domain names because Respondent is not commonly known by the disputed domain names and Complainant has not authorized or licensed Respondent to use the SUB-ZERO mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (concluding that the respondent was not commonly known by the <amazondevice.org>, <amazondevices.org> and <buyamazondevices.com> domain names under Policy ¶ 4(c)(ii), as the pertinent WHOIS information identified “Timothy Mays,” “Linda Haley,” and “Edith Barberdi” as registrants of the disputed domain names). Additionally, lack of authorization to use a mark constitutes a further showing that a respondent is not commonly known by a disputed domain name. 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 based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Here, the WHOIS information identifies “jose foster / Vanessa Guardia / services” as the registrant of the domain names and no information suggests Complainant authorized Respondent to use the SUB-ZERO mark in any way. See Amend. Compl. Annex C.
In addition, the Respondent has not argued in its response about its rights or legitimate Interests in the domain names. Respondent has accepted to cancel the domain name, which shows lack of legitimate rights or interest.
Thus, the Panel finds that Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the <subzerofloridarepair.com> domain name to pass off as Complainant and offer competing repair services, and the <subzeroflrepair.com> domain name is inactive. Using a disputed domain name to pass off as a complainant and offer competing goods or services for sale does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under 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); see also Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Furthermore, failing to make active use of a disputed domain name is also not considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Kohler Co. v. xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”).
Complainant provides screenshots showing the <subzerofloridarepair.com> domain name resolves to a website featuring Complainant’s mark and images of Complainant’s SUB-ZERO branded products, in which Respondent offers repair services that compete with those offered by Complainant. See Amend. Compl. Annex B, Ex. 2. Complainant also provides a screenshot showing the <subzeroflrepair.com> domain name is not connected to an active website. See Amend. Compl. Annex B, Ex. 7.
Thus, the Panel agrees with Complainant and finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant argues that Respondent registered and uses the disputed domain names in bad faith because Respondent uses the <subzerofloridarepair.com> domain name to pass off as Complainant and offer competing repair services. Per Policy ¶ 4(b)(iii) and (iv), using a disputed domain name to pass off as a complainant and offer competing goods or services for sale constitutes bad faith. See American Cheerleader Media, LLC. v. ilir shoshi / cheer, FA 1592319 (Forum Jan. 20, 2015) (“The Panel here finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) as … Respondent utilizes a logo and stylized font identical to Complainant’s own, as well as Complainant’s copyrighted images and text in an attempt to pass itself off as Complainant.”); see also Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see additionally CAN Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services).
Complainant provides screenshots showing the <subzerofloridarepair.com> domain name resolves to a website featuring Complainant’s SUB-ZERO mark, branded products, and which offers competing repair services for sale. See Amend. Compl. Annex B, Ex. 2. Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iii) and (iv).
Additionally, Complainant argues that Respondent’s bad faith is evidenced by its failure to make active use of the <subzeroflrepair.com> domain name. Per Policy ¶ 4(a)(iii), failure to make active use of a disputed domain name indicates bad faith registration and use. See CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum Feb. 14, 2018) (“Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.”). The Panel is reminded that Complainant provides a screenshot showing the domain resolves to a page with an error message that the domain is not connected to a website. See Amend. Compl. Annex B, Ex. 7.
Thus, the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).
Furthermore, Complainant contends Respondent had constructive and actual knowledge of Complainant’s rights in the SUB-ZERO mark based on the fame and registration of the marks and Respondent’s use of the mark and images of Complainant’s branded products on the resolving webpages for the domain. While constructive knowledge is insufficient for a finding of bad faith Per Policy ¶ 4(a)(iii), actual knowledge of a Complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the fame of the mark and the use the Respondent makes of the domain name. See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”); see additionally Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Complainant argues Respondent had actual knowledge of Complainant’s rights in the SUB-ZERO mark because the mark is well-known and <subzerofloridarepair.com> domain displays the mark and references to Complainant’s SUB-ZERO branded products. See Amend. Compl. Annex B, Ex. 2. Also, the Facebook page associated with the <subzeroflrepair.com> domain name as displays the SUB-ZERO mark and the snowflake design associated with the mark. See Amend. Compl. Annex B, Ex. 6.
Therefore, since the Respondent had actual knowledge, the Panel finds bad faith per 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 <subzerofloridarepair.com> and <subzeroflrepair.com> domain names be TRANSFERRED from Respondent to Complainant.
Héctor Ariel Manoff, Panelist
Dated: June 21, 2021
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