Sub-Zero, Inc. v. Viljami Ylönen / INTL Enterprises
Claim Number: FA2109001965059
Complainant is Sub-Zero, Inc. (“Complainant”), represented by Matthew D. Witsman of Foley & Lardner LLP, District of Columbia, USA. Respondent is Viljami Ylönen / INTL Enterprises (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <subzero.app>, registered with Dynadot, 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.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 24, 2021; the Forum received payment on September 24, 2021.
On September 26, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <subzero.app> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 28, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 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.app. Also on September 28, 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 October 18, 2021.
On October 22, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David P. Miranda, Esq., as Panelist.
On October 27, 2021, Complainant’s additional submission was received and considered.
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.
A. Complainant
Complainant, Sub-Zero Inc., is in the business of high-end residential kitchen appliances. Complainant has rights in the SUB-ZERO mark based upon multiple registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,543,399, registered June 3, 1989, with claimed date of first use of 1945). See Compl. Annex B. Respondent’s <subzero.app> domain name is confusingly similar to Complainant’s SUB-ZERO mark because it merely removes the hyphen from the mark and appends the “.app” generic top-level domain (“gTLD”).
Complainant contends Respondent does not have rights or legitimate interests in the <subzero.app> domain name, is not licensed or authorized to use Complainant’s SUB-ZERO mark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent redirects Internet traffic to a site offering the disputed domain name for sale.
Respondent registered and uses the <subzero.app> domain name in bad faith. Respondent offers the domain name for sale in excess of initial registration costs. Respondent also engaged in typosquatting through registration of the domain name. Additionally, Respondent had actual or constructive knowledge of Complainant’s rights in the SUB-ZERO mark.
B. Respondent
The <subzero.app> domain name is not confusingly similar to Complainant’s SUB-ZERO mark because the “.app” TLD in the disputed domain name has a specific meaning that distinguishes the domain name from Complainant and its mark.
Respondent registered the <subzero.app> domain name with a fully legitimate interest unrelated to Complainant’s business and now offers the domain name for sale for a reasonable price.
The disputed domain name was registered on April 7, 2021. See Compl. Annex B1. Respondent did not register or use the <subzero.app> domain name in bad faith. Respondent’s purchase of the domain name was for a legitimate purpose and its offer to sell the disputed domain name is reasonable. Respondent claims no knowledge of Complainant or its mark when it registered the disputed domain name.
Complainant has established each of the elements required under paragraph 4(a) of the Policy, and as such the domain name at issue shall be transferred from Respondent to the 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.
Complainant asserts rights in the SUB-ZERO mark based upon multiple trademark registrations with the USPTO (e.g., Reg. No. 1,543,399, registered June 3, 1989). See Compl. Annex B. Registration of a mark with the USPTO is generally sufficient to establish rights in the mark under Policy¶ 4(a)(i). 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).”). Since Complainant provides evidence of registration of the SUB-ZERO mark with the USPTO, Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <subzero.app> domain name is confusingly similar to Complainant’s SUB-ZERO mark because it merely removes the hyphen from the mark and appends the “.app” gTLD. Removal of punctuation and addition of a gTLD does not negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Thus, the Panel finds that the disputed domain names are identical or confusingly similar to the SUB-ZERO marks 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 claims that Respondent does not have rights or legitimate interests in the <subzero.app> domain name since Respondent is not licensed or authorized to use Complainant’s SUB-ZERO mark and is not commonly known by the disputed domain name. Whois information, along with a Respondent’s contentions, may be used to determine whether a Respondent is commonly known by a disputed domain name per 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.”). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See 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). The WHOIS information of record lists “Viljami Ylonen / INTL Enterprises” as the registrants of the domain names and no other information suggests that Respondent is known by the domain name or authorized to use the SUB-ZERO mark. See Compl. Annex B1. Thus, Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent doesn’t use the <subzero.app> domain for any bona fide offering of goods or services or legitimate noncommercial or fair use and instead redirects Internet traffic to a site offering the disputed domain name for sale. Redirecting Internet users to a domain name sale page is not considered 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 Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use). Complainant provides a screenshot of the website at the disputed domain, which offers the disputed domain name for sale for USD $1,800. See Compl. Annex B2.
Respondent claims that it originally registered the disputed domain name to use it in connection with crypto walled management software being developed. Respondent provides no evidence of preparations to use the domain for such a purpose. Respondent now advertises the domain name for sale rather than allowing the domain registration to expire, seemingly having abandoned its purported planned use. Therefore, Respondent lacks rights and legitimate interests in the disputed domain name per Policy ¶ 4(c)(i) and (iii).
Complainant contends that Respondent registered and uses the <subzero.app> domain name in bad faith because Respondent offers the domain name for sale in excess of initial registration costs. An offer to sell a disputed domain name in excess of out-of-pocket costs may evidence bad faith under Policy ¶ 4(b)(i). See loanDepot.com, LLC v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1786281 (Forum June 8, 2018) (“Complainant shows that Respondent offers the disputed domain name for sale for $950, no doubt above its out-of-pocket costs. The Panel finds that this constitutes bad faith under Policy ¶ 4(b)(i).”). Complainant provides a screenshot of the website at the disputed domain, which offers the disputed domain name for sale for USD $1,800. See Compl. Annex B2. Thus, the Panel may find bad faith pursuant to Policy ¶ 4(b)(i).
Complainant also argues that Respondent engaged in typosquatting in bad faith by registering a domain name that only slightly alters Complainant’s mark. Typosquatting may act as independent evidence of bad faith per Policy ¶ 4(a)(iii). See Finish Line, Inc. and its subsidiary Spike’s Holdings, Inc. v. XU SHUAI WEI / XUSHUAIWEI, FA1409001577968 (Forum Oct. 9, 2014) (“The <finishlne.com> domain name is a typosquatted version of the FINISH LINE mark, which further supports a finding of bad faith under Policy ¶ 4(a)(iii).”). Complainant argues that Respondent’s mere removal of the hyphen from Complainant’s mark for use in the <subzero.app> domain name evidences typosquatting. The Panel finds bad faith under 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 <subzero.app> domain name be TRANSFERRED from Respondent to Complainant.
David P. Miranda, Esq., Panelist
Dated: November 5, 2021
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