Sub-Zero, Inc. and Wolf Appliance, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2109001963310
Complainant is Sub-Zero, Inc. and Wolf Appliance, Inc. (“Complainant”), represented by Matthew D. Witsman of Foley & Lardner LLP, Wisconsin, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <subzro-wolf.com>, registered with GoDaddy.com, LLC.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 10, 2021; the Forum received payment on September 10, 2021.
On September 13, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <subzro-wolf.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 15, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 5, 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@subzro-wolf.com. Also on September 15, 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 October 7, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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
There are two Complainants in this matter: Sub-Zero, Inc. and Wolf Appliance, Inc. Both Complainants are wholly-owned subsidiaries of Sub-Zero Group, Inc., and sell related, similar products that are routinely marketed and sold side-by-side and associated with one another.
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.
The Panel accepts that the uncontested evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and will treat them as a single entity in this proceeding. In this decision, the Complainants will be collectively referred to as “Complainant.”
A. Complainant
Complainant is an industry leader in the sale of high-end residential kitchen appliances, including refrigerators, freezers, wine storage, systems, etc.…, and are marketed and sold throughout the United States and the world. Complainant has rights in the SUB-ZERO and WOLF marks through its registration of the marks with the Unite States Patent and Trademark Office (“USPTO”) (SUB-ZERO – Reg. No. 1,543,999, registered June 13, 1989; WOLF – Reg. No. 2,698,313, registered March 18, 2003). Respondent’s <subzro-wolf.com> domain name is confusingly similar to Complainant’s SUB-ZERO and WOLF marks. Respondent incorporates the marks in their entirety adding a hyphen and removing the letter “e” from the SUB-ZERO mark in addition to adding the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <subzro-wolf.com> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the SUB-ZERO and WOLF marks in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent diverts internets users in search of Complainant’s products to various webpages including some that contain malware.
Respondent registered and used the <subzro-wolf.com> domain name in bad faith as Respondent attempts to attract internet users by diverting them away from Complainant’s products and services and instead to various webpages including some that contain malware. Respondent had actual knowledge of Complainant’s rights in the SUB-ZERO and WOLF mark due to the long-standing use and fame of the marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <subzro-wolf.com> domain name.
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”).
Complainant claims to have 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 a 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.”). Complainant has provided the Panel with copies of its USPTO registration for the SUB-ZERO and WOLF marks (SUB-ZERO – Reg. No. 1,543,999, registered June 13, 1989; WOLF – Reg. No. 2,698,313, registered March 18, 2003). The Panel finds that Complainant has established rights in the marks per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <subzro-wolf.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 removes a letter and adds a gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (“The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark. In spite of that omission the compared integers remain visually and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.”), see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). Complainant argues that Respondent incorporates the marks in their entirety adding a hyphen and removing the letter “e” from the SUB-ZERO mark in addition to adding the “.com” gTLD. The Panel finds that Respondent’s domain name is confusingly similar to Complainant’s marks per Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant argues Respondent lacks rights or legitimate interest in the <subzro-wolf.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 marks. 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 “Carolina Rodrigues/Fundacion Comercio Electronico” and there is no evidence to suggest that Respondent was authorized to use the SUB-ZERO and WOLF marks or was commonly known by the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent diverts internets users in search of Complainant’s products to various webpages including some that contain malware. Use of a disputed domain name to divert internet users away from a complainant’s product and services to a webpage that offers unrelated goods including malware, is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See Spike’s Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use… The Panel therefore finds that Respondent’s unrelated use of the <finishnline.com> domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii).”), see also Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Complainant has provided the Panel with screenshots of Respondent’s <subzro-wolf.com> domain name’s resolving webpage that shows products unrelated to Complainant. 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) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues that Respondent registered and used the <subzro-wolf.com> domain name in bad faith as Respondent attempts to attract internet users by diverting them away from Complainant’s products and services and instead to various webpages including some that contain malware. Use of a disputed domain name to divert internet users away from a complainant to various unrelated webpages may be evidence of bad faith registration and use per Policy ¶ 4(b)(iii) and (iv). See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting), see also PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)). Complainant has provided the Panel with screenshots of Respondent’s <subzro-wolf.com> domain name’s resolving webpage that shows products unrelated to Complainant. Complainant further argues that Respondent’s domain name offers malware. This is evidence that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii) and (iv).
Complainant argues that Respondent had knowledge of Complainant’s rights in the SUB-ZERO and WOLF marks at the time of registering the <subzro-wolf.com> domain name. Actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). 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”). To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant to further a fraudulent scam. The Panel finds that Respondent did have actual knowledge of Complainant’s right in its marks, and registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <subzro-wolf.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
October 12, 2021
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