DECISION

 

Sub-Zero, Inc. v. Oleksandr Kliuiev / Henryslist.com

Claim Number: FA2407002108459

 

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <landjsubzerorepair.com>, (the "Domain Name") registered with Cloudflare, Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Dawn Osborne as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on July 29, 2024; Forum received payment on July 29, 2024.

 

On July 31, 2024, Cloudflare, Inc. confirmed by e-mail to Forum that the <landjsubzerorepair.com> Domain Name is registered with Cloudflare, Inc. and that Respondent is the current registrant of the name. Cloudflare, Inc. has verified that Respondent is bound by the Cloudflare, Inc. 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 August 2, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 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@landjsubzerorepair.com. Also on August 2, 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 23, 2024 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.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant's contentions can be summarised as follows:

 

The Complainant is the owner of the trade mark SUB-ZERO registered, inter alia, in the USA for refrigerators and related services, first in time for refrigerators in 1989, with first use recorded as 1945.

 

The Domain Name registered in 2024 is confusingly similar to the Complainant's mark incorporating that mark without its hyphen, and adding the generic word 'repair', the name of the Complainant's official provider of authorised repairer and maintenance services 'L and J' in New York and the gTLD .com which does not distinguish the Domain Name from the Complainant's mark.

 

Respondent is not commonly known by the Domain Name and has no permission from the Complainant to use the Complainant's mark or the name of its authorised repairer. The Domain Name has been used for a site purporting to offer repair and maintenance services competing to those of the Complainant using the Complainant's trade mark and the name of the Complainant's authorised repair and maintenance services provider in its masthead and the confusing wording "We are the Sub Zero specialist". This is designed to confuse Internet users into believing the Respondent's site is associated with the Complainant and cannot be a bona fide offering of goods and services or a non commercial legitimate fair use. The Respondent has no rights or legitimate interests in the Domain Name.

 

The Respondent registered the Domain Name to direct it to a site which uses the Complainant's mark and the name of the Complainant's authorised repairer incorporated in its masthead and confusing wording to confuse Internet users into believing the web site and the Domain Name are associated with the Complainant. The Domain Name has been registered and used in bad faith to confuse Internet users and disrupt the Complainant's business.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant is the owner of the trade mark SUB-ZERO registered, inter alia, in the USA for refrigerators and related services, first in time for refrigerators in 1989 with first use recorded as 1945.

 

The Domain Name registered in 2024 has been used for a site purporting to offer repair and maintenance services competing to those of the Complainant using the Complainant's trade mark and the name of the Complainant's authorised repair and maintenance services provider in its masthead and confusing wording to suggest and affiliation with the Complainant.

 

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

The Domain Name consist of the Complainant's SUB-ZERO mark (registered in the USA for refrigerators and related repair and maintenance services with first registration for refrigerators in 1989 and first use recorded as 1945), without its hyphen with the addition of the generic term 'repair', the name of the Complainant's authorised repairer in New York 'L and J' and the gTLD .com.

 

The deletion of a hyphen, the addition of a generic term like 'repair', the addition of the name of one of the Complainant's authorised repairers the addition of a gTLD does not prevent confusing similarity between the Domain Name and the Complainant's trade mark pursuant to the Policy. 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 FXCM Global Services, LLC v. HEIN MAC, Case No. D2023-1879 (WIPO June 16, 2023) (finding "The existence of another mark does not avoid a finding of confusing similarity to

Complainant's mark under the first element.") 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 the Complainant's registered mark.

 

As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.

 

Rights or Legitimate Interests

The Complainant has not authorised the use of its mark. There is no evidence or reason apart from the web site attached to the Domain Name to suggest the Respondent is 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 is commercial so it cannot be legitimate non commercial fair use.

 

The web site attached to the Domain Name purports to offer competing services to the Complainant using the Complainant's mark without its hyphen and the name of the Complainant's authorised repairer in New York in its masthead and confusing wording to suggest it is affiliated with the Complainant. It does not make it clear that there is no connection with the Complainant. The Panel finds this use is confusing. (See Am. Intl Group Inc v Benjamin FA 944242 (Forum May 11, 2007) finding that the Respondent's use of a confusingly similar domain name to advertise services which competed with the Complainant's business did not constitute a bona fide use of goods and services.)

 

The Respondent has not answered this Complaint or rebutted the prima facie case evidenced by the Complainant herein.

 

As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

In the opinion of the Panel, the use made of the Domain Name in relation to the Respondent's site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it uses the Complainant's mark and the name of the Complainant's authorised repairer in New York in its masthead and confusing wording to suggest it is affiliated to the Complainant when it is not and it is offering competing services. The Panel is entitled to draw adverse inferences from the lack of response from the Respondent. The reference to the Complainant's brand of refrigerators on the web site and the Complainant's name of its authorised repair shows that the Respondent was aware of the Complainant and its rights, business, products and services.

 

Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site and services offered on it under Policy 4(b)(iv) likely to disrupt the business of the Complainant under Policy 4(b)(iii). See Allianz of AM. Corp v Bond, FA 680624 (Forum June 2, 2006)(finding bad faith registration and use where the respondent was diverting Internet users searching for the complainant to its own website).

 

As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iii) and (iv).

 

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 <landjsubzerorepair.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Dawn Osborne, Panelist

Dated: August 26, 2024