Sub-Zero, Inc. and Wolf Appliance, Inc. v. Zhi Chao Yang
Claim Number: FA2210002014878
Complainant is Sub-Zero, Inc. and Wolf Appliance, Inc. (“Complainant”), represented by Matthew D. Witsman of Foley & Lardner LLP, Wisconsin, USA. Respondent is Zhi Chao Yang (“Respondent”), CN.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <subzerowol.com>, (‘the Domain Name’) registered with Chengdu West Dimension Digital Technology Co., Ltd..
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to Forum electronically on October 5, 2022; Forum received payment on October 5, 2022.
On Oct 07, 2022, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to Forum that the <subzerowol.com> Domain Name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the names. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd. 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 October 13, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 2, 2022 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@subzerowol.com. Also on October 13, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On November 9, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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: LANGUAGE OF PROCEEDING
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.
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.” The named Complainants in this proceeding are Sub-Zero, Inc. (“Sub-Zero”) and its sister and related company, Wolf Appliance, Inc., (“Wolf”), who are both wholly-owned subsidiaries of Sub-Zero Group Inc. Sub-Zero and Wolf have both successfully obtained numerous trademark registrations throughout the world consisting solely of or featuring the respective SUB-ZERO and WOLF marks, including various U.S. registrations. Sub-Zero has continuously and exclusively owned and Complainants have operated, among others, the domain name <subzero-wolf.com> since at least as early as 2003, where authorized information and details are provided regarding both SUB-ZERO and WOLF-branded high-end kitchen appliances and the related maintenance, installation, and repair services, including official and authorized services. The Panel holds that Sub-Zero and Wolf have a sufficient nexus and can each claim to have rights to the domain name listed in the Complaint allowing them to be joint Complainants in these Proceedings within the Rules.
A. Complainant
Sub-Zero is an industry leader in the sale of high-end residential kitchen appliances, including refrigerators, freezers, wine storage systems, etc., 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. Similarly, Wolf is also an industry leader in the sale of high-end residential kitchen appliances, like ovens, ranges, cooktops, etc., and related services that are marketed and sold throughout the United States and the world under various WOLF marks. Sub-Zero’s and Wolf’s products and services are routinely marketed and sold side-by-side and are highly associated with each other.
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. In addition, continuously and exclusively since at least as early as 2001, Wolf has used WOLF as a trademark, alone or in combination with other word and/or design elements, in connection with Wolf’s various high-end residential kitchen appliances and related repair, installation, and maintenance services. During these same time periods, Sub-Zero and Wolf have both successfully obtained numerous trademark registrations throughout the world consisting solely of or featuring the respective SUB-ZERO and WOLF marks, including various U.S. registrations. Sub-Zero has continuously and exclusively owned and Complainants have operated, among others, the domain name <subzero-wolf.com> since at least as early as 2003, where authorized information and details are provided regarding both SUB-ZERO and WOLF-branded high-end kitchen appliances and the related maintenance, installation, and repair services, including official and authorized services.
The Domain Name is confusingly similar to the Complainants’ SUB-ZERO and WOLF marks, merely removing the hyphen in SUB-ZERO, omitting the letter ‘f’ from WOLF and adding the “.com” gTLD. It is well-settled that combining two different trademarks in disputed domain names and/or misspelling a mark is insufficient to negate a finding that the disputed domain name is confusingly similar to either trademark, even where different entities own the respective trademarks. As is adding a gTLD or removing a hyphen which is punctuation.
The Respondent is not authorized by the Complainants or commonly known by the Domain Name. The use of the Domain Name is commercial and so is not legitimate noncommercial fair use.
The Domain Name has not been used for a bona fide offering of goods or services being used for pay per click links. It is registration and use in bad faith in actual knowledge of the Complainants’ rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Sub-Zero is the owner of the trade mark SUB-ZERO registered, inter alia, in the USA for refrigerators and related repair and maintenance services with first use recorded as 1945. Wolf is the owner of the trade mark WOLF registered, inter alia, in the USA for cooking appliances and related services with first use recorded as 2001.
The Domain Name registered in 2022 has been used for commercial pay per click links.
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”).
The Domain Name consist of Sub-Zero’s SUB-ZERO mark (registered in the USA for refrigerators and related repair and maintenance services with first use recorded as 1945) without its hyphen, Wolf’s WOLF mark (registered in the USA for cooking appliances and related services with first use recorded as 2001) omitting its letter ‘f’ and the gTLD .com.
The Panel agrees that misspellings such as the omission of a letter from a mark does not prevent confusing similarity between the Domain Name and Wolf’s WOLF trade mark pursuant to the Policy. See Am. Online, Inc. v David, FA 104980 (Forum Apr 10, 2002) (‘The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain name’).
Combining two marks of the Complainants and adding a gTLD does not prevent confusing similarity between each of those marks and the Domain Name. Wyndham Hotels and Resorts, LLC, and Wyndham Vacation Resorts, Inc. v. James VanBuren, FA 1624028 (Forum July 10, 2015) (“The disputed domain name combines two of Complainant's registered trademarks, WYNDHAM and EXTRA VACATIONS, omitting the space and adding the ".com" top-level domain name. These alterations do not diminish the similarity between the domain name and Complainant's marks.”).
The deletion of a hyphen from Sub Zero's SUB-ZERO trade mark does not prevent confusing similarity between the Domain Name and that trade mark pursuant to the Policy. See MTD Products Inc v ICS Inc, FA 1721505 (Forum Apr. 18, 2017) (holding that “[t]he removal of the hyphen [from complainant’s TROY-BILT mark in the disputed domain name] is, like most all embedded punctuation, insignificant”).
Accordingly, the Panel holds that the Domain Name is confusingly similar to each of the Complainants’ registered marks.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainants have not authorized the use of their marks. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 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).The use of the Domain Name is commercial so it is not legitimate noncommercial fair use.
The Respondent has used the site attached to the Domain Name to link to third party businesses. It does not make it clear that there is no commercial connection with the Complainants. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services or a legitimate noncommercial or fair use. See Ashley Furniture Industries Inc v domain admin /private registrations aitken Gesellschaft, FA 1506001626253 (Forum July 29, 2015)(linking to pay per click links does not amount to a bona fide offering of goods and services or a legitimate noncommercial fair use).
The Domain Name appears to be a typosquatting registration. Typosquatting is also indicative of a lack of rights or legitimate interests. See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”).
The Respondent has not answered this Complaint or provided any explanation to counter the prima facie case put forward by the Complainants as set out herein.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainants have satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Domain Name seeks to take advantage of the situation where Internet users may make a typographical error. Typosquatting itself is evidence of relevant bad faith registration and use and disruption of the Complainants’ business. See Diners Club int'l Ltd. v Domain Admin ****** It's all in the name ******, FA 156839 (Forum June 23, 2003) (registering a domain name in the hope that Internet users will mistype the Complainant’s mark and be taken to the Respondent’s site is registration and use in bad faith). Typosquatting also indicates the Respondent had knowledge of the Complainant and its rights. See InfoSpace, Inc. v. Greiner, FA 227653 (Forum Mar. 8, 2004) (“Respondent’s domain name is a simple and popular variation of a trademark commonly used by typosquatters …Such a domain name evidences actual knowledge of the underlying mark prior to the registration of the domain name, and as Respondent failed to submit any evidence to counter this inference [sic], Respondent’s actions evidence bad faith registration of the disputed domain name.”).
The Domain Name has been used for commercial pay per click links which has commonly been led to be bad faith in typosquatting circumstances. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of the web site or products or services offered on it likely to disrupt the business of the Complainants. See Health Republic Insurance Company v Above.comLegal, FA 1506001622088, (Forum July 10, 2015) re diversion to pay per click links.
As such, the Panel holds that the Complainants have made out their case that the Domain Name was registered and used in bad faith and have satisfied the third limb of the Policy under Policy 4 (b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <subzerowol.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: November 10, 2022
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