Sub-Zero, Inc. v. Jim K
Claim Number: FA2005001895351
Complainant is Sub-Zero, Inc. (“Complainant”), represented by Tricia L. Schulz of Foley & Lardner LLP, United States. Respondent is Jim K (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <subzero-dc.com>, registered with GoDaddy.com, LLC (the “Disputed Domain Name”).
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.
Kendall C. Reed as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 7, 2020; the Forum received payment on May 7, 2020.
On May 8, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <subzero-dc.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 May 18, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 8, 2020 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-dc.com. Also on May 18, 2020, 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 May 19, 2020. This has been accepted and considered by the Panel subject to the caveat noted below.
Complainant filed an additional submission on May 22, 2020, which has been accepted and considered by the Panel.
Respondent filed an additional submission on May 22, 2020, which has been accepted and considered by the Panel.
On May 27, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kendall C. Reed as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is an industry leader in the United States and throughout the world in the manufacture and sale of high-end residential kitchen appliances, including such products as refrigerators, freezers, wine storage systems, etc. Complainant also offers related repair, installation, and maintenance services.
Complainant is the owner of several trademarks for the SUB-ZERO Mark, including US registration number 3,507,324 for “Installation, repair and maintenance of kitchen appliances”, with a date of first use in 1945 (“Complainant’s Mark”).[i] Complainant’s use of Complainant’s Mark has been continuous and supported by extensive marketing efforts.
The Disputed Domain Name, registered By Respondent on or about April 5, 2018, is nearly identical to Complainant’s Mark because the Disputed Domain Name merely removes the hyphen from the Complainant’s Mark, SUB-ZERO, adds a hyphen after the expression “subzero” and before the letters “dc”, and appends the top-level domain “.com”. The addition of the letters “dc” do not create a meaningful distinction because these letters are commonly used and are widely known as an abbreviation for the “District of Columbia,” where Complainant operates, among many other areas.
Respondent has no rights or legitimate interest in respect of the Disputed Domain Name because Complainant has not authorized Respondent to use the SUB-Zero trademark. Respondent has no rights or legitimate interest in respect of the Disputed Domain Name because Respondent is not commonly known by the Disputed Domain Name; the WHOIS record shows Respondent to be one “Jim K”.[ii] Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because Respondent’s is not using the Disputed Domain Name in connection with a bona fide offering of goods and services; Respondent’s use of the Disputed Domain Name is in bad faith. And Respondent has no rights or legitimate interest in respect of the Disputed Domain Name because Respondent’s use of the Disputed Domain Name is not protected as a fair use; Respondent’s use of the Disputed Domain Name is in connection with a for-profit business.
Respondent’s use of the Disputed Domain Name is in bad faith because the Disputed Domain Name is being used by him to resolve to a website on which is offered directly competing parts and services for Sub-Zero kitchen appliances, all while displaying the SUB-ZERO marks without authorization.
B. Respondent
Respondent does not use any of the Complainant’s trademarked logos or fonts.
The use of the name [Sub-Zero] is unavoidable given that respondent specializes in repairing Sub-Zero products, and this is allowed under the 9th Circuit case of Volkswagenwerk Aktiengesellschaft v. Church.
In this Volkswagenwerk case, the court recognizes that it would be difficult, if not impossible, to avoid using of a product’s name when one is lawfully engaged in the business of repairing that product. Respondent is therefore allowed to use the name Sub-Zero so long as he does not suggest that he is affiliated with or authorized by Complainant, which Respondent does not do.
Respondent’s use of the Disputed Domain Name, <subzero-dc.com>, does not suggest to his prospective customers that respondent is part of the Sub-Zero Group organization of franchise dealers and repairmen.
In keeping with the court’s holding in the Volkswagenwerk case that use of the word “independent” sufficiently distinguishes an independent repair business from the competing repair business of the manufacture and trademark owner, Respondent has added the word “independent” prominently on the title page of his website, as well as including non-affiliation text at the bottom of that page.
C. Complainant’s Additional Submission
It does not work for Respondent to make changes to his website after this case is initiated. Changes to the content of a website made after a case is initiated are pretextual and unreliable.
Respondent’s use on its website of the term “Independent” in front of the SUB-ZERO Mark and Respondent’s inclusion of non-affiliation or disclaimer language (in very small font to the bottom of the website) are not sufficient to eliminate the infringement and the high probability that Internet users will confuse the Disputed Domain Name, Respondent, and the impression that Respondent’s repair services offered at the website are authorized or approved by Complainant.[iii]
If the changes made by Respondent are relevant at all, they only serve to demonstrate that Respondent’s original use of the Disputed Domain Name was improper under the Policy.
Further, Respondent did not provide any evidence that his claimed changes to his website were actually made, and thus these claims cannot be relied upon.
Respondent’s reliance on Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350 (9th Cir. 1969) is misplaced as the case is distinguishable; further, Respondent mischaracterizes the case. Whereas the court in the Volkswagenwerk case did state that the defendant-appellee could advertise that he specialized in repairing Volkswagen vehicles and in doing so that it would be difficult, if not impossible, to avoid all use of the trademark “Volkswagen,” the court also stated that the defendant-appellee “must not [advertise] in a manner which is likely to suggest to his prospective customers that he is part of Volkswagen’s organization of franchised dealers and repairmen.”
Respondent’s conduct does not meet this standard. Respondent’s use of the Disputed Domain Name still suggests that Respondent and the repair services offered by him on his website emanate from Complainant itself or are otherwise part of Complainant’s organization of authorized and certified repair technicians.
Regardless of Respondent’s claimed changes to his website, the Disputed Domain Name itself prominently incorporates Complainant’s Mark in its entirety without authorization and without the term “Independent,” as is also true with Respondent’s tradename displayed on his website. As such, Respondent’s conduct is not in keeping with the requirements of the Volkswagenwerk case.
Further, Respondent’s use on his website of the expression “certified technicians” is untrue and misleading, as is his claim that repair parts sold by him are “newly manufactured parts directly from subzero.” In fact, these statements only enhance the suggestion and implication that Respondent and his website are officially connected to or part of Complainant’s organization of authorized and certified repair technicians.
D. Respondent’s Additional Submission
The Disputed Domain Name, <subzero-dc.com>, is not using the trademark “Sub-Zero”, but rather “subzero-dc.com”, which domain name Complainant does not own.
The phrase “certified technicians” has been removed per Complainant’s comments, even though the statement is true. The technicians do have special training and associated certificates.
Also per Claimant’s comments, the phrase “newly manufactured parts directly from Sub-Zero” has been removed, even though parts are purchased that way.
These changes will preclude any possible confusion between Respondent and Complainant.
Complainant is attempting to extend its control too far into the marketplace; Complainant is attempting to extend its control into the areas of repair and maintenance, which the Supreme Court has said in Impression Products v Lexmark is not right. After the first sale, the owner of a product is allowed to seek repair and maintenance services from whomever he or she may want, and in order to give this right full extent, those who offer such services are allowed to truthfully say that they offer services with respect to the product, even if in doing so they use the manufacturer’s name.
The Respondent has the right to independently repair Sub-Zero appliances and the right to advertise this to his prospective customers.
Complainant is the owner of several trademarks for the SUB-ZERO Mark, including US registration number 3,507,324 for “Installation, repair and maintenance of kitchen appliances”, with a date of first use in 1945.
Complainant operates within the geographic area in and around Washington DC.
Respondent registered the Disputed Domain Name with GoDaddy.com on or about April 5, 2018.
Respondent’s name is Jim K.
Respondent offers on his website repair services for products manufactured and sold by Complainant, and these services directly compete with those offered by Complainant in the geographic area in and around Washington DC.
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.
Complaint objects to Respondent’s Response on the grounds that it does not comply with Policy Rule 5(C) and the Forum’s Supplemental Rule 5(a) because the Response does not include the following required language:
“(i) the name, postal and email addresses, and the telephone and fax numbers for the respondent or authorized representatives; (ii) specify the preferred method for communications directed toward the respondent; (iii) identify any other legal proceedings that have been commenced or terminated in connection with or related to the disputed domain name; and (iv) conclude with specific language certifying that the information contained in the response is complete and accurate to the best of respondent’s knowledge, that the response is not being submitted for an improper purpose, and that the claims in the response are warranted under the Rules and applicable law.”
These required statements fall into three categories: firstly, those relating to communication with the Respondent; secondly, a statement about other legal proceedings; and thirdly, those consisting of required affirmations.
The failure to provide the required information within the first category is not a sufficient basis to strike a putative response; communication is clearly taking place.
The failure to provide the required information with respect to other legal proceedings is not a sufficient basis to strike a punitive response; the risk to the present administrative proceeding associated with not having this information is low, and the Panel is willing to accept the risk.
The failure to provide the required affirmations could be a sufficient basis to strike a putative response; however, this problem can be resolved. These affirmations are required, and therefore the Panel deems that for purposes of this administrative proceeding Respondent is held to have made them as required. However, since one of these affirmations is in the nature of an oath with respect to the presentation of evidence, Respondent’s statements as to facts will be given less weight than might otherwise have been the case.
A threshold consideration for this first element of the Policy is that the Complainant must have rights in a trademark. One way in which this can be demonstrated is by way of ownership of a registered trademark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides evidence of its registration for the SUB-ZERO mark with the USPTO (e.g., Reg. No. 1,543,399, registered June 13, 1989).
Complainant is the owner of Complainant’s Mark, and as such Complainant has satisfied this threshold requirement.
The question of whether the Disputed Domain Name is identical or confusingly similar to Complainant’s trademark is determined by way of an examination of Complainant’s Mark and the Disputed Domain Name themselves and without reference to anything else, such as the content of Respondent’s website. In making this comparison, the Panel ignores matters that do not create a meaningful distinction, such as spaces, the absence of spaces, hyphens, the lack of hyphens, minor deviations in spelling, generic terms, and top-level domain names. See General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent’s <gm-uzbekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of the geographic term “Uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis), and see Bittrex, Inc. v. HOUSNTA BENSLEM, FA 1760232 (Forum Jan. 3, 2018) (“[S]ince the disputed domain name differs from the trademark only by the addition of the gTLD “.com” the Panel finds the domain name to be legally identical to the trademark.”).
As noted, the Complainant’s Mark is SUB-ZERO, and the Disputed Domain Name is <subzero-dc.com>. The differences between these are minor and non-distinguishing, consisting merely of the hyphen being shifted, the addition of the gTLD “.com”, and the addition of the letters “dc.”
The letter “dc” do not create a meaningful distinction because these letters are reasonably interpreted as making a reference to the geographic area of the District of Columbia, and the Complainant operates in this geographic area.
Complainant argues that the inclusion of the letters “dc” actually enhances the confusion for exactly the same reasons. The panel does not agree, but the inclusion of these letters does not create a meaningful distinction, which is the important point.
The Respondent argues that the Complainant does not own the Disputed Domain Name, presumably meaning that the Disputed Domain Name was opened and available for anyone to register, including Respondent, and as such the Disputed Domain Name cannot be confusing with respect to Complainant’s Mark. To the extent this is Respondent’s meaning, this represents a misunderstanding of the Policy. The Policy prohibits bad faith uses of domain names that are identical or confusingly similar to a trademark in which a complainant has rights and with respect to which a respondent does not have rights, even if the domain name is available for registration. Said another way, every registration of a domain name is subject to the prohibitions of the Policy.
As such, the Complainant has established the first element of the Policy
The Complainant is required to 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 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) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Complainant has established its burden. The Complainant did not authorize Respondent to use Complainant’s Mark, and the Respondent is not commonly known by the name “Sub-Zero”; his name as shown on the records of GoDaddy.com is “Jim K.” See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Further, whereas it is otherwise a legitimate enterprise to repair Sub-Zero’s residential appliances and advertise this fact, a bad faith use of the Disputed Domain Name is incompatible with a finding of rights or legitimate interests under the Policy. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
As noted below, the panel finds that Respondent has used the Disputed Domain Name in bad faith.
As such, the Respondent has not maintained its burden.
As such, the Complainant has established the second element of the Policy.
Complainant argues that by using the Disputed Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website, as is prohibited by Policy ¶ 4b(iv).[iv]
The Panel agrees.
Respondent argues that to the extent his use of the Disputed Domain Name might create confusion with respect to the Complainant, he has made changes to his website that clearly and sufficiently distinguishes him from the Complainant. Most importantly, he now prominently displays the word “independent” on his website. Further, he has removed from his website certain assertions because Complainant pointed to them as being a source of confusion and/or as being untrue; Respondent believes that these assertions are true and not problematic, but he made the changes anyway. In making the argument that these changes are sufficient, he points to the 9th Circuit cases of Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350.
The case of Volkswagenwerk is indeed instructive. In that case the District Court
found that the defendant-appellee’s original advertising was infringing. This advertising consisted of at least using the business name “Modern Volkswagen Porsche Service” on a large road-side sign. At various times thereafter, however, and over the course of a few years, defendant-appellee “…incorporated the word ‘Independent’ into various phases of his advertising, in order to distinguish his business from those of Volkswagen’s authorize or franchised dealers”, including in his telephone directory advertising, on his truck, on his business cards, on his repair orders, and on his ”giveaways,” such as pencils and match books. Eventually, and after the complaint was filed but before trial, the defendant-appellee changed his road-side sign to read “Independent Volkswagen Porsche Service.” The Appellate Court affirmed the District Court’s determination that these changes avoided infringement and unfair competition, saying:
“In this case, on the basis of all the facts and circumstances, we hold that the factual determinations of the District Court were not clearly erroneous. We cannot, therefore, overturn the decision that, in in the light of the particular circumstances, Church’s prominent use of the word “Independent” whenever the terms “Volkswagen” or “VW” appeared in his advertising was sufficient to distinguish his business in the eye of the customer…” id. 352.
The Panel has two problems with Respondent’s argument that his use of the Disputed Domain Name is proper and appropriate because he has made changes to his website the likes of which are suggested by the Volkswagenwerk case, and in particular the use of the word “independent”.
First, and as noted above with respect to the preliminary issue involving Respondent not making certain affirmations required by the Rules, Respondent’s statements of fact are to be given little weight. Further, the Complainant notes that Respondent did not provide any supporting evidence for his claims that he has made changes to his website.
Second, setting aside this evidentiary issue and assuming that Respondent did make these changes to his website, these changes are changes to his website and not to the Disputed Domain Name. In the digital world, a domain name is similar to a business name in the non-digital world with respect to advertising, including the use of a business name on a roadside sign, in telephone directory advertising, and in all manner of print media advertising, all rolled into one. To allow Respondent to use the Disputed Domain Name in its current form because of the changes Respondent made to his website would be equivalent to the Volkswagenwerk court having allowed the defendant-appellee to keep his original roadside sign, his original telephone directory advertising, his original print media advertising, and merely requiring that he install a sign inside his repair shop stating that he was an independent operation. This is not what the Volkswagenwerk case stands for.
The Panel agrees that Respondent may use Complainant’s Mark to truthfully advertise his repair services with respect to Complainant’s products, but he must do so in a way that does not create the impression in the mind of potential customers that he is affiliated with Complaint. Respondent’s use of the Disputed Domain Name creates this impression.
As such, the Complainant has established the third element of Policy.
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-dc.com> domain name be TRNASFERRED from Respondent to Complainant.
Kendall C. Reed, Panelist
Dated: June 10, 2020
[i] Complainant is a sister company to Wolf Appliances, also a manufacturer of high-end residential kitchen appliances. Complainant presumably includes mention of this other company and its trademark with respect to the issue of bad faith. The Panel notes this, but otherwise will not mention these facts as they are not necessary for the Panel to reach its conclusions in this award.
[ii] Complainant provides as an exhibit a copy of the WHOIS record for the Disputed Domain Name that shows the Registrant as being "Registration Private". Complainant also provides a copy of a response from Go Daddy to a verification request from the Dispute Resolution Provider, the Forum, in which the Registrant is identified as "Jim K."
[iii] Complainant provides as an exhibit a copy of the WHOIS record for the Disputed Domain Name that shows the Registrant as being "Registration Private". Complainant also provides a copy of a response from Go Daddy to a verification request from the Dispute Resolution Provider, the Forum, in which the Registrant is identified as "Jim K."
[iv] Complainant also argues that Respondent's use of the Disputed Domain Name constitutes a violation of Policy ¶4(b)(iii). In this the panel disagrees. Actions that constitutes a violation of policy ¶ 4(b)(iv) do not ipso facto constitute a violation of policy ¶4(b(iii).
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