DECISION

 

Sub-Zero, Inc. and Wolf Appliance, Inc. v. Tanya Marsicano

Claim Number: FA2406002103685

PARTIES

Complainant is Sub-Zero, Inc. and Wolf Appliance, Inc. ("Complainant"), represented by Stephanie M. Rice of Foley & Lardner LLP, Wisconsin, USA. Respondent is Tanya Marsicano ("Respondent"), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <subzero-wolfoc.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on June 25, 2024; Forum received payment on June 25, 2024.

 

On June 25, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <subzero-wolfoc.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 June 28, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 2024 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-wolfoc.com. Also on June 28, 2024, 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 formal response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On July 19, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons 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 a formal Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Sub-Zero, Inc..

 

PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS

The Complaint lists two complainants. Forum Supplemental Rule 1(e) states that UDRP proceedings may be initiated by "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 Complaint includes a declaratory statement that the named complainants are related sister companies, "both wholy owned subsidiaries of Sub-Zero Group, Inc."  Complainant submits that "both have a claim to the disputed domain name because their respective trademarks are featured within it. Allowing them to proceed jointly under these circumstances is consistent with prior Forum decisions."

 

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0") asks at #1.4 : Does a trademark owner's affiliate or licensee have standing to file a UDRP complaint?  In answer, it is stated that "[a] trademark owner's affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint."

 

Although there is no evidence of those corporate relationships, the Panel accepts that the sworn evidence, made by the one Vice-President of all three companies, is enough to satisfy it that Supplemental Rule1(e) is met and that the proceedings can treat the two named complainants as one. Hereinafter, the Panel will refer to them as "Complainant" unless otherwise stated.

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant asserts trademark rights in SUB-ZERO and in WOLF. Complainant holds national registrations for those trademarks.  Complainant submits that the domain name "is not meaningfully different from the SUB-ZERO or WOLF Marks because, in short, the domain features the essentially identical SUB-ZERO mark and identical WOLF mark, in combination with the top-level domain extension '.com.'".

 

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because it has no trademark rights; is not known by the same name; is not authorized by Complainant to use the trademarks, and the domain name creates a false suggestion of association between Respondent and Complainant.

 

Complainant alleges that Respondent registered the disputed domain name in bad faith being aware of Complainant's business and trademarks, and then used the disputed domain name in bad faith by linking it to a website that offers competing services without Complainant's authorization.

 

B. Respondent

Respondent made an informal submission to the Forum, discussed later.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.       Sub-Zero, Inc. sells and services refrigerators, freezers and wine storage systems by reference to the trademark, SUB-ZERO, which is registered with the United States Patent & Trademark Office ("USPTO") as Reg. No. 1,543,399 from March 21, 1988;

2.       Wolf Appliance, Inc. sells and services kitchen appliances such as ovens, ranges and cooktops, by reference to the trademark, WOLF, which is registered with the USPTO as Reg. No. 2,716,174 from July 20, 2000;

3.       the disputed domain name was registered on February 22, 2022, using a privacy service to shield the name of Respondent; and

4.       the disputed domain name resolves to a website using the trademarks, promoting service of and repairs to products put on the market by Complainant.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).  Complainant therefore has rights since it provides proof of its registration of the trademarks SUB-ZERO and WOLF with the USPTO, a national trademark authority.   

 

Complainant's submission is that the disputed domain name "incorporates the essentially identical SUB-ZERO house mark and the identical WOLF house mark" and is therefore "not meaningfully different [to the trademarks]". That is not the question; the issue is whether the domain name is confusingly similar to the trademark and where there are two trademarks claimed, it can be said that the correct comparison is that of one or other trademark with a term which is essentially a portmanteau of both marks. Tested in that manner, it might be said that the disputed domain name is not confusingly similar to either trademark.

 

Nonetheless, there is a long history of UDRP decisions concerned with domain names of this kind and whilst the logic applied by panels has varied widely, the WIPO Jurisprudential Overview 3.0 asks at #1.12 the analogous question : Is a domain name consisting of the complainant's mark plus a third-party trademark confusingly similar to the complainant's trademark?  It is said that the consensus viewpoint of UDRP panelists is that "[w]here the complainant's trademark is recognizable within the disputed domain name, the addition of other third-party marks (i.e., <mark1+mark2.tld>), is insufficient in itself to avoid a finding of confusing similarity to the complainant's mark under the first element."  Following that logic, it can be said of the disputed domain name that the trademark, SUB-ZERO, is recognizable and so the Panel finds the confusing similarity.

 

The Panel so finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy (see, for example, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018): "Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."; Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as ".com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;  or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;  or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).

 

The name of Respondent does not indicate that Respondent might be commonly known by the domain name (see, for example, Tercent Inc. v. Lee Yi, FA 0139720 (Forum Feb. 10, 2003) stating "nothing in [the respondent's] WHOIS information implies that [the respondent] is 'commonly known by' the disputed domain name" as one factor in determining that Policy ¶ 4(c)(ii) does not apply."). There is no evidence that Respondent has any trademark rights.  Complainant states that there is no association between the parties and that Respondent is not an authorized repairer or service provider to its goods. Complainant provides evidence that the domain name resolves to a website which promises "Factory Authorized Service" by and that its services are provided by "factory authorized technicians."  The Panel accepts Complainant's submission that this is not true and finds that Complainant has made a prima facie case (see, for example, Sub-Zero, Inc. v. Perez, FA1611001702432 (Forum Dec. 12, 2016) stating that  "[p]anels have also held that a respondent using the confusingly similar domain name to compete with the complainant does not confer on the respondent any rights or legitimate interests").

 

The onus shifts to Respondent. Although there is no formal Response, the Panel is entitled to take into account an informal email to the Forum on June 29 after notification of the Complainant wherein a person, not Respondent, wrote stating that "we have no control over immediately removing content on our website as it is done through a third party and we don't have access to it. I have prompted the web design team to take down all Sub-Zero, Wolf and Cove logos from the website."  

 

The Panel does not consider that this offer (even if put into effect) assists Respondent. Not only is there a question of whether future behaviour corrects past behaviour but, regardless of website content, the confusingly similar domain name remains in use. The Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.  

 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established. 

 

The four specified circumstances are:

 

'(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

 

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent's website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the site or location.'

 

The Panel finds that Respondent's use of the domain name falls squarely under paragraph 4(b)(iv) above. The domain name has already been found confusingly similar to the trademark. The resolving website exists for commercial gain. In terms of the Policy, the Panel finds that Respondent intentionally attempted to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of that website.

 

Panel finds that Complainant has satisfied the third and final element of the Policy.

 

DECISION

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-wolfoc.com> domain name be TRANSFERRED from Respondent to Sub-Zero, Inc..

 

 

 

Debrett G. Lyons, Panelist

Dated:  July 20, 2024