Sub-Zero, Inc. and Wolf Appliance, Inc. v. Sukhrob Nurullaev
Claim Number: FA2105001945225
Complainant is Sub-Zero, Inc. and Wolf Appliance, Inc. (“Complainant”), represented by AJ Schumacher of Foley & Lardner LLP, Wisconsin, USA. Respondent is Sukhrob Nurullaev (“Respondent”), represented by Farrukh Nuridinov, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <subzero-wolf-service.com>, registered with Google 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.
Sebastian M W Hughes as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 16, 2021; the Forum received payment on May 16, 2021.
On May 17, 2021, Google LLC confirmed by e-mail to the Forum that the <subzero-wolf-service.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 May 24, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 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@subzero-wolf-service.com. Also on May 24, 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 June 14, 2021.
Timely Additional Submissions were received from Respondent on January 9, 2021.
On June 17, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sebastian M W Hughes as Panelist.
On July 1, 2021, the Forum notified the parties of the extension of the decision due date until July 7, 2021.
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 name be transferred from Respondent to Complainant Sub-Zero, Inc.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny 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.”
Complainants are both wholly-owned subsidiaries of Sub-Zero Group, Inc. The domain name contains Trademarks owned by each of Complainants. The Panel accordingly finds there is sufficient nexus between Complainants for them to be treated as a single person or entity for the purposes of these proceedings. Complainants shall be referred to in the plural or singular henceforth in this decision.
A. Complainant
Complainants manufacture and sell refrigerators under the trademark SUBZERO and kitchen appliances under the trademark WOLF (the “Trademarks”) and are the owners of numerous Federal trademark registrations in respect of the Trademarks, including in respect of installation, service and repair services.
Respondent promotes its refrigerator and kitchen appliance repair services on the website to which the domain name is resolved, featuring prominently the Trademarks and related logos of Complainants (the “Website”).
Respondent has not been authorized to use Complainants’ Trademarks in this manner and is holding itself out as an authorized repairer of Complainants’ goods, contrary to the fact.
Respondent has accordingly no rights or legitimate interests in respect of the domain name; and has registered and used the domain name in bad faith.
B. Respondent
Respondent challenges all three elements under paragraph 4(a) of the Policy.
Respondent submits in particular as follows:
“The company offers repair services to the wide ranging products among which sub-zero products and wolf appliances feature prominently. At the same time, company’s operations are not limited exclusively to subzero-wolf appliances. Company’s operations include any mechanical repairs of kitchen appliances.”
C. Additional Submissions
Complainants clearly satisfied all three elements under paragraph 4(a) of the Policy.
Complainant has established all the elements entitling it to transfer of the domain names.
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 possesses rights in its Trademarks through registration and use. The domain name is confusingly similar to Complainant’s Trademarks. Complainant’s Trademarks, SUBZERO and WOLF, are reproduced in their entirety in the domain name, together with the non-distinctive word “service” which is directly descriptive of the services offered by Respondent and the services in respect of which the Trademarks have been registered.
Complainant has not authorized, licensed, or permitted Respondent to register or use the domain name or to use the Trademarks. The Panel finds on the record that there is therefore a prima facie case that Respondent has no rights or legitimate interests in the domain name, and the burden is thus on Respondent to produce evidence to rebut this presumption.
As a provider of service and repair services relating to the Trademarks, Respondent must satisfy each of the following cumulative requirements in order to establish rights or legitimate interests in the disputed domain name under the Policy:
(1) Respondent must be actually offering Complainant’s goods or services at issue;
(2) Respondent must be using the Website to provide only Complainant’s trademarked goods or services;
(3) The Website must accurately and prominently disclose Respondent’s relationship with Complainant; and
(4) Respondent must not try to “corner the market” in domain names that reflect the Trademarks.
The Panel accepts that Respondent offers legitimate refrigerator and kitchen applicant repair services, including in particular repair services relating to Complainant’s goods marketed and sold under the Trademarks. Although Respondent is not a licensed or authorized repairer of Complainant’s vehicles, the Panel accepts that it is commonplace in the refrigerator and kitchen applicant repair industry for businesses to offer repair services in respect of several different brands; that it is not uncommon for such repair services not to be licensed or authorized by the relevant brand owners; and that in certain circumstances such conduct might amount to a fair use of the relevant trademarks.
The Panel also accepts that Respondent has been accredited and certified by various industry bodies in respect of its refrigerator and kitchen appliance repair services.
The Panel considers that, although Respondent is not licensed or authorized by Complainant to provide repair services in respect of Complainant’s goods, Respondent likely meets the first requirement listed above, in providing repair services relating to Complainant’s goods. There is also no evidence before the Panel to suggest that Respondent is trying to corner the market in domain names that reflect the Trademarks.
However, in providing, and promoting on the Website, repair services relating not just to Complainant’s goods, but also in relation to competitors of Complainant, the Panel finds that Respondent has not met the second requirement listed above.
Furthermore, the Website does not accurately and prominently disclose Respondent’s relationship with Complainant. Accordingly, the Panel finds that Respondent has also not met the third requirement listed above.
There has been no evidence adduced to show that Respondent has been commonly known by the domain name; and there has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the domain name.
For the foregoing reasons, the Panel finds that Respondent has failed to rebut Complainant’s prima facie case that Respondent lacks rights or legitimate interests in the domain name.
In light of the evidence of Respondent’s clearly commercial and unauthorized use of the Website in the manner described above, in order to promote repair services relating not just to Complainant’s goods, but also relating to competing brands, the Panel finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that the domain name has been registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <subzero-wolf-service.com> domain name be TRANSFERRED from Respondent to Complainant Sub-Zero, Inc.
Sebastian M W Hughes, Panelist
Dated: July 7, 2021
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