Sub-Zero, Inc. v. Ross Lavnikevich / iGenii Inc
Claim Number: FA2210002014879
Complainant is Sub-Zero, Inc. (“Complainant”), represented by Matthew D. Witsman of Foley & Lardner LLP, Wisconsin, USA. Respondent is Ross Lavnikevich / iGenii Inc (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sub-zerorepairexpert.com>, registered with GoDaddy.com, LLC.
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.
Mrs. Nathalie Dreyfus as Panelist.
Complainant submitted a Complaint to Forum electronically on October 5, 2022; Forum received payment on October 5, 2022.
On October 07, 2022, GoDaddy.com, LLC confirmed by e-mail to Forum that the <sub-zerorepairexpert.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 October 10, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 31, 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@sub-zerorepairexpert.com. Also, on October 10, 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.
A timely Response was received and determined to be complete on October 24, 2022.
An Additional Submission of Complainant was received on October 26, 2022.
On November 04, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nathalie Dreyfus 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.
A. Complainant
Complainant manufactures and provides kitchen appliances and related installation, maintenance and repair services. Complainant asserts that it has rights in the Sub-Zero mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”):
- US Trademark “SUB-ZERO” Reg. No. 1543399 dated March 21, 1988 for goods in class 11;
- US Trademark “SUB-ZERO” Reg. No. 3507324 dated August 27, 2007 for services in class 37;
- US Trademark “SUB-ZERO + device” Reg. No. 4564796 dated August 14, 2012 for goods and services in classes 11 and 37.
Complainant claims that Respondent’s <sub-zerorepairexpert.com> domain (hereinafter referred as to the “Disputed Domain Name”), is identical or confusingly similar to Complainant’s mark as it incorporates the SUB-ZERO mark in its entirety with the adjunction of the descriptive terms “repair” and “expert” as well as the gTLD “.com”.
Complainant argues that Respondent does not hold rights and legitimate interests in the Disputed Domain Name. Complainant asserts that Respondent is not commonly known by the Disputed Domain Name and that Complainant has not authorized or licensed Respondent to use the Disputed Domain Name. In addition, Complainant asserts that Respondent does not use the Disputed Domain Name for any bona fide offering of goods and services, or legitimate noncommercial or fair use. Instead, the disputed domain name is used to offer competing goods and services.
Finally, Complainant underlines that Respondent registered and uses the Disputed Domain Name in bad faith. Respondent registered the Disputed Domain Name with actual knowledge of Complainant’s trademark rights to the SUB-ZERO mark. Complainant considers that Respondent uses the confusing similarity between the Disputed Domain Name and Complainant’s mark to attract users to Respondent’s website, offering competing services as of those of Complainant.
B. Respondent
Respondent registered the Disputed Domain Name on August 29, 2019 (See Cmpl. Annex B, Ex. 1) and uses said Domain to offer repair services of cooling/ temperature-controlled kitchen appliances.
Respondent argues that the Disputed Domain Name is not identical or confusingly similar and contends that the SUB-ZERO mark is descriptive of the products for which it offers repair services, i.e. cooling/temperature-controlled kitchen appliances, and that the terms “repair” and “expert” illustrates Respondent’s business.
Respondent also claims that it has legitimate interests in the Disputed Domain Name and has been commonly known as doing business under this Domain in the state of New York since November 18, 2019. Respondent emphasized that the Disputed Domain Name is used in the course of a bona fide offering of goods or services with a disclaimer that it is not associated with Complainant.
Respondent disagrees that the Disputed Domain Name was registered and is used in bad faith nor used with intention to disrupt Complainant’s business or attract internet users for commercial purpose. A disclaimer is also displayed on the webpage. Respondent considers that Complainant is engaged in reverse domain name hijacking.
C. Additional Submissions
Complainant addresses that Respondent’s Response does not comply with the UDRP Rules 5(c) and the Forum’s Supplemental Rules 5(a).
Complainant claims that Respondent misrepresented the SUB-ZERO mark as a descriptive term, which allegedly coexists in the crowded field without evidence provided. Complainant argues that it has used the SUB-ZERO mark since December 31, 1945.
Complainant emphasizes that Respondent failed to provide evidence proving that Respondent is commonly known by the Disputed Domain Name. Complainant also contends that Respondent used the Disputed Domain Name with a clear prior knowledge of Complainant and its rights in the SUB-ZERO mark.
Complainant also considers that Respondent’s disclaimer and non-affiliation language on its webpage are not sufficient to legitimize Respondent’s use and registration of the Disputed Domain Name. It is highlighted that the disclaimer and non-affiliation language do not negate internet users’ initial expectation that the Disputed Domain Name holds an official connection with or authorization of Complainant.
Complainant has rights in the SUB-ZERO mark through the following US trademark registrations:
- US Trademark “SUB-ZERO” Reg. No. 1543399 dated March 21, 1988, duly renewed, for goods in class 11;
- US Trademark “SUB-ZERO” Reg. No. 3507324 dated August 27, 2007, duly renewed, for services in class 37;
- US Trademark “SUB-ZERO + device” Reg. No. 4564796 dated August 14, 2012, duly renewed, for goods and services in classes 11 and 37.
The Disputed Domain Name has been registered on August 29, 2019 by Respondent.
Respondent uses the Disputed Domain Name to reflect the purpose of its business, i.e. providing repair services of Complainants’ products.
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.
Registration of a mark with the USPTO is a valid showing of rights in a mark. 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, the Panel finds that Complainant has rights in the mark under Policy 4(a)(i).
Complainant argues that the Disputed Domain Name is identical or confusingly similar to its SUB-ZERO mark as it fully incorporates this mark in its entirety. Addition of the generic or descriptive terms “repair” and “expert”, which arguably reflect Complainant’s own expert repair service, fails to sufficiently distinguish a domain name from a registered mark. See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”). Moreover, the insertion of the “.com” gTLD is irrelevant when determining the identicality or confusing similarity between the Disputed Domain Name and the protected SUB-ZERO mark. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant).
Respondent argues that the Disputed Domain Name is not identical or confusingly similar to Complainant’s SUB-ZERO marks because they are descriptive and non-distinctive (meaning “characterized by or suitable for subzero temperatures”), and “repair” and “expert” are terms descriptive of Respondent’s business. Past panels have found that the Disputed Domain Name is sufficiently differentiated from a non-distinctive mark by descriptive terms. See Webvan Group, Inc. v. Atwood, D2000-1512 (WIPO Feb. 20, 2001) (“[W]hen a mark is a relatively weak non-distinctive term, courts have found that the scope of protection may be limited to the identical term and that the addition of other descriptive matter may avoid confusion”).
As demonstrated by Complainant in longstanding UDRP case, the Panel has found that “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy” (Oki Data Americas, Inc. v. Asdinc.com, WIPO Case No. D2001-0903). Furthermore, “the addition of the gTLD “.com” is also insufficient to differentiate a disputed domain name from a mark” (Bank of America Corporation v. norman Daphne Gonzalez / Stefan Gomes, FA 2105001948936 (Forum June 30, 2021).
Thus, the Panel considers, in light of the above, that the Disputed Domain Name <sub-zerorepairexpert.com> is confusingly similar to Complainant’s prior mark and therefore Complainant satisfies Policy 4(a)(i).
Under Policy paragraph 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the disputed domain name. The burden, in effect, then 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).
Complainant contends that Respondent lacks rights or legitimate interests in the Disputed Domain Name since Respondent is not commonly known by the Disputed Domain Name, nor has Complainant authorized or licensed to Respondent any rights in the SUB-ZERO mark. Moreover, the Respondent’s name, which is materially different from the Disputed Domain Name, may demonstrate Respondent is not commonly known by the Disputed Domain Name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). See also 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).
Complainant also argues that Respondent does not use the Disputed Domain Name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use since the Disputed Domain Name resolves towards a website that reproduces Complainant’s mark and purports to offer competing refrigerator repair services under Complainant’s mark. To impersonate Complainant, Respondent claims the repair services offered at the website are provided by Complainant’s trained technicians (e.g., “We offers [sic] the Best Repair Authorized Service and restoration for appliances in Dallas.”). See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). 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.”).
Respondent asserts that it is commonly known by the Disputed Domain Name, under which it has been doing business. Respondent also contends that it uses the Disputed Domain Name in connection with a bona fide offering of goods or services because the Disputed Domain Name is used in conjunction with Respondent’s legitimate and unrelated business. Respondent considers that it has rights or legitimate interests due to the inclusion of a disclaimer on the resolving website.
However, the Panel finds that Respondent failed to produce the conclusive evidence to support its arguments. Respondent thus did not produce any evidence showing that it is known by the Disputed Domain Name. The services offered by Respondent are related to Complainant’s products and also competitor products to those of Complainant. The disclaimer on the resolving website is not eye-catching in order to distinguish Respondent’s services from those of Complainant and its products and erase the internet users’ impression that the resolving website is Complainant’s services.
Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) and does not use the Disputed Domain Name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(i) and (iii).
Thus, the Panel finds Respondent lacks of rights and legitimate interest in the Disputed Domain Name.
To fulfill the third requirement of the Policy, Complainant must prove that the disputed domain name was registered and is being used in bad faith.
Complainant argues that Respondent’s registration and use of the Disputed Domain Name, which is obviously connected to Complainant’s SUB-ZERO mark, to offer competing services and thus attract Internet Users, indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Previous Panels held that the obvious use of Complainant’s mark in the Domain Name indicates bad faith. See 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). See also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Additionally, use of a Disputed Domain Name in order to impersonate a Complainant may support a finding of bad faith under Policy ¶ 4(b)(iv). See Indeed, Inc. v. Zhiteng Sun, FA 1751940 (Forum Nov. 1, 2017) (finding that the respondent's use of <lndeed.net> to misrepresent itself as the complainant by imitating the complainant’s website design supported a finding of bad faith).
Further, it should be noted that under Section 2 of the ICANN Policy, it is established that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. It is thus Respondent’s duty to verify that the registration of the disputed domain name would not infringe the rights of any third party before registering said domain name. In the present case, the Disputed Domain Name reproduces entirely Complainant’s trademark “SUB-ZERO”. Respondent claims that this mark is descriptive, and thus that it has rights to register the Disputed Domain Name. It should be noted that the registrations of the “SUB-ZERO” mark have been accepted by the USPTO and are valid. Thus, as these registrations covered the following services “Installation, repair and maintenance of kitchen appliances”, the Disputed Domain Name cannot be considered as descriptive of Respondent’s services as it provides the same services. In addition, Respondent, in its Response, does not provide any evidences of its claims.
Additionally, Respondent uses of Disputed Domain Name to divert unsuspecting users to its own webpage, displaying Complainant’s mark and logo and offering competing repair services. Thus, Respondent attracts Internet users with a false impression of association with Complainant. Such use constitutes bad faith under Policy ¶ 4(b)(iv). See Indeed, Inc. v. Zhiteng Sun, FA 1751940 (Forum Nov. 1, 2017) (finding that the respondent's use of <lndeed.net> to misrepresent itself as the complainant by imitating the complainant’s website design supported a finding of bad faith).
Respondent claims that it uses the website configured on the Disputed Domain Name only for its repair services in Dallas of Complainant’s appliances. However, other services are provided on said website for Complainant’s competitors appliances. Thus Respondent is using the website to attract Internet users for its large repair services.
Complainant also contends that Respondent’s use of a disclaimer does not mitigate a finding of bad faith since the resolving website located at the Disputed Domain Name still falsely suggests an official connection to, or authorization by, Complainant while such connection or authorization does not exist. See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.” It should be noted that the disclaimer is not visible on the screenshots of the website provided by Complainant and dated September 23, 2022. Thus, it is likely that the disclaimer has been added by Respondent after the beginning of the present proceeding. In addition, said disclaimer is not clearly identified nor visible on Respondent’s website as it appears in the middle of the webpage and is not visible at first sight. On the contrary, the first element that the Internet users can see once arrived on the website in the reproduction of Complainant’s trademark “SUB-ZERO” on the top left-hand corner.
The Panel therefore finds that Respondent’s disclaimer on the Disputed Domain Name’s resolving webpage does not mitigate evidence of bad faith registration and use and that Respondent had actual knowledge of Complainant’s rights in the SUB-ZERO mark. He also fails to prove that the Disputed Domain Name was registered prior to Complainant’s rights to its SUB-ZERO mark.
Therefore, the Panel concludes that the Disputed Domain Name was registered and is being used by Respondent in bad faith under Policy ¶ 4(a)(iii).
Since Complainant has satisfied all three elements required by Paragraph 4(a) of the Policy, the reverse domain name hijacking is not founded. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Hence, the Panel finds that Complainant is not engaged in reverse domain name hijacking.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sub-zerorepairexpert.com> domain name be TRANSFERRED from Respondent to Complainant.
Nathalie Dreyfus, Panelist
Dated: November 14, 2022
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