DECISION

 

Sub-Zero, Inc. v. Daniil Kliuiev

Claim Number: FA2407002106380

PARTIES

Complainant is Sub-Zero, Inc. ("Complainant"), represented by Bianca L. Ascolese of Foley & Lardner LLP, Wisconsin, USA. Respondent is Daniil Kliuiev ("Respondent"), Ukraine.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <seasonalsubzerorepair.com>, registered with Squarespace Domains II 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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on July 15, 2024; Forum received payment on July 15, 2024.

 

On July 15, 2024, Squarespace Domains II LLC confirmed by e-mail to Forum that the <seasonalsubzerorepair.com> domain name is registered with Squarespace Domains II LLC and that Respondent is the current registrant of the name. Squarespace Domains II LLC has verified that Respondent is bound by the Squarespace Domains II 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 July 18, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 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@seasonalsubzerorepair.com. Also on July 18, 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 response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On August 8, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

i) Complainant offers various high-end residential kitchen appliances and related repair, installation, and maintenance services. Complainant has rights in the SUB-ZERO mark through its registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,543,399, registered June 13, 1989). The disputed domain name is confusingly similar to Complainant's SUB-ZERO mark. It incorporates the mark in its entirety, omits the hyphen, and adds the generic or descriptive term "repair," a third-party name or mark such as "SEASONAL," and the ".com" gTLD.

 

ii) Respondent lacks rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the SUB-ZERO mark in any way. Respondent fails to make bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent has passed itself off as Complainant while offering competing repair services.

 

iii) Respondent's use of the confusingly similar disputed domain name to operate a webpage, attempting to pass itself off as Complainant, as affiliated with Complainant, or as officially sponsored, authorized by, or connected with Complainant, and to offer directly competing products for commercial gain, is likely to cause customer confusion, disrupt Complainant's business, and demonstrates Respondent's bad faith registration and use. The evidence and overall circumstances surrounding the disputed domain name clearly establish that Respondent had actual knowledge of Complainant and the SUB-ZERO marks before registering the disputed domain name. The incorporation of other well-known trademarks into a disputed domain name further indicates bad faith. At the very least, Respondent was on constructive notice of Complainant's exclusive rights to the SUB-ZERO marks.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on September 5, 2023.

 

2. Complainant has established rights in the SUB-ZERO mark through its registration with the USPTO (e.g., Reg. No. 1,543,399, registered June 13, 1989).

 

3. The website associated with the disputed domain name displays the phrases "Seasonal Subzero Appliance Repair" and "SubZero Service Houston," along with the sentence "We are the SubZero specialist," in connection with offering repair services for Complainant's or a third party's products.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant claims to have rights in the SUB-ZERO mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark per policy ¶ 4(a)(i). Complainant provides copies of its USPTO registrations for the SUB-ZERO mark (e.g., Reg. No. 1,543,399, registered June 13, 1989). Therefore, the Panel finds Complainant has established rights in the mark per Policy ¶ 4(a)(i).

 

Complainant contends the disputed domain name <seasonalsubzerorepair.com> is confusingly similar to Complainant's mark as it fully incorporates the SUB-ZERO mark, merely removing the hyphen and adding the generic or descriptive term like "repair," a third-party name or mark like "SEASONAL" and the ".com" gTLD. Removing a hyphen and adding a generic and/or descriptive term, a third-party name or mark, and a gTLD to Complainant's mark do not sufficiently differentiate a disputed domain name from the mark under Policy ¶ 4(a)(i). 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)."); see also MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) ("The disputed domain name is confusingly similar to Complainant's mark as it wholly incorporates the CUB CADET mark before appending the generic terms 'genuine' and 'parts' as well as the '.com' gTLD."); see also Robert Half Inc. v. Ksenia Mihailovna, FA 2083142 (Forum Mar. 17, 2024) (finding the domain name <calendly-roberthalf.com> confusingly similar to the complainant's ROBERT HALF mark despite the addition of a hyphen, the third-party mark CALENDLY, and the top-level domain extension ".com"). The Panel thus finds that the disputed domain name is confusingly similar to the SUB-ZERO mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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 Section 2.1, WIPO Jurisprudential Overview 3.0 ("Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.").

 

Complainant argues Respondent lacks rights or legitimate interest in the disputed 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 mark or register domain names using Complainant's mark. 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). The WHOIS information for the disputed domain name lists the registrant as "Daniil Kliuiev" and there is no other evidence to suggest that Respondent was authorized to use the SUB-ZERO mark or was commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

Complainant further asserts that Respondent is not using the disputed domain name to make a bona fide offering of goods and services under Policy ¶ 4(c)(i), or using it to make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant argues that Respondent is using Complainant's marks on the disputed domain name's resolving website to pass itself off as Complainant, and to directly compete with Complainant's repair business.

 

Previous panels have held that a respondent attempting to pass itself off as a complainant is neither a bona fide offering of goods or services, nor an example of legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii).) See Crow v. LOVEARTH.net, FA 203208 (Forum Nov. 28, 2003) ("It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . ."). Panels 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. See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). 

 

Complainant provides a screenshot of the website associated with the disputed domain name. The Panel notes that the website associated with the disputed domain name displays the phrases "Seasonal Subzero Appliance Repair" and "SubZero Service Houston," along with the sentence "We are the SubZero specialist." The Panel finds that Respondent's use of the disputed domain name is likely to cause confusion among Internet users, leading them to believe that the repair services offered on the website are provided by Complainant or, at the very least, by a company affiliated with Complainant or authorized by Complainant to offer repair services for Complainant's products. Therefore, the Panel concludes that Respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because Respondent used the disputed domain name to divert Internet users to a website that offered services that competed with those offered by Complainant under its marks under Policy ¶¶ 4(c)(i) & (iii).

 

The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant argues Respondent registered and uses the disputed domain name in bad faith by disrupting Complainant's business and attracting users for commercial gain while offering competing repair services. Under Policy ¶¶ 4(b)(iii) and (iv), offering counterfeit or competing items in disruption of a complainant's business while attracting users for commercial gain is evidence of bad faith registration and use. See Guess? IP Holding L.P. and Guess?, Inc. v. Linan / linanbangongshi and hu sugor / sugorguoguo, FA 1587466 (Forum Dec. 13, 2014) ("The Panel finds that Respondent's use of the disputed domain names to compete with Complainant by offering counterfeit products and thereby misdirecting Internet users constitutes disruption to Complainant's business which demonstrates bad faith registration and use under Policy ¶ 4(b)(iii)."); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant's connection with the website by selling counterfeit products). 

 

The Panel notes that Complainant provides a screenshot of the disputed domain name's resolving website. The Panel specifically notes that the website associated with the disputed domain name displays the phrases "Seasonal Subzero Appliance Repair" and "SubZero Service Houston," along with the sentence "We are the SubZero specialist." Respondent's use of the disputed domain name is likely to cause confusion among Internet users, leading them to believe that the repair services offered on the website are provided by Complainant or, at the very least, by a company affiliated with Complainant or authorized by Complainant to offer repair services for Complainant's products. Therefore, the Panel finds that Respondent's actions disrupt Complainant's business and constitute bad faith registration and use. As a result, the Panel concludes that Respondent registered and used the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).

 

Complainant further contends that Respondent had actual notice of its rights in the SUB-ZERO mark when it registered the disputed domain name, and that such notice constitutes bad faith under Policy ¶ 4(a)(iii). Complainant substantiates its argument by stating that Complainant has continuously and exclusively used the SUB-ZERO marks throughout the U.S. and the world since at least 1945 and since that time, the respective marks have become well-known and have established notoriety and goodwill in the residential kitchen appliance marketplace; and the disputed domain name was registered well over seventy (70) years after the first use of the SUB-ZERO marks.

 

Although UDRP jurisprudence does not recognize constructive notice as sufficient grounds to find bad faith under Policy ¶ 4(a)(iii), the Panel may infer actual knowledge from the manner in which the disputed domain name is used. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) ("This Panel makes that inference; Respondent has actual knowledge of Complainant's mark at the time of domain name registration based on the fame of Complainant's GOOGLE mark and Respondent's use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant."); see also O Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name"). Given the notoriety of Complainant's mark and the manner in which the disputed domain name is used, the Panel finds that there is a legal presumption that Respondent had actual knowledge of Complainant's rights in the SUB-ZERO mark when it registered the disputed domain name, and that this registration was in bad faith pursuant to Policy ¶ 4(a)(iii).

 

WITHOUT PREJUDICE DECISION

Complainant has established all three elements required under the ICANN Policy. However, an issue arises regarding the appropriate form of relief to be ordered by the Panel, as the disputed domain name incorporates a third-party mark, "SEASONAL." The Panel notes the jurisprudence addressing proper relief in such cases, specifically Section 1.12 of the WIPO Jurisprudential Overview 3.0:

 

The complaint may include evidence of the third-party mark holder's consent to file the case and request that any transfer order be issued in favor of the filing complainant only. In the absence of such consent (and, where deemed appropriate, after failing to reach the concerned third party via Procedural Order through the complainant), some panels have ordered the transfer of the domain name without prejudice to the rights of the concerned third party. In certain highly exceptional circumstances, panels have ordered the cancellation of the disputed domain name.

For reasons of practicality and in keeping with the spirit of the UDRP as a quick and cost-effective procedure, the Panel favors ordering the transfer of the disputed domain name <seasonalsubzerorepair.com> without prejudice to the rights of the concerned third party. See Snap Inc. v. Sol Ayal / Southern telecom, FA 1942258 (Forum June 1, 2021) (finding in a UDRP proceeding that involved domain names incorporating both the complainant's trademark and the trademark of a third-party, the Panel favored ordering transfer of the domain name to the complainant without prejudice for the third-party's rights "for reasons of both practicality and harmony with the spirit of the UDRP as a quick and cost-effective procedure").

 

Accordingly, it is Ordered that the <seasonalsubzerorepair.com> domain name be TRANSFERRED from Respondent to Complainant without prejudice to the rights of the third-party owner of the SEASONAL mark.

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: August 9, 2024