Sub-Zero, Inc. v. Marvin Schuster
Claim Number: FA2106001950255
Complainant is Sub-Zero, Inc. (“Complainant”), represented by Tricia L. Schulz of Foley & Lardner LLP, Wisconsin, USA. Respondent is Marvin Schuster (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <subzerorepairservicecenter.com>, registered with Launchpad.com Inc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 8, 2021; the Forum received payment on June 8, 2021.
On June 9, 2021, Launchpad.com Inc. confirmed by e-mail to the Forum that the <subzerorepairservicecenter.com> domain name is registered with Launchpad.com Inc. and that Respondent is the current registrant of the name. Launchpad.com Inc. has verified that Respondent is bound by the Launchpad.com 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 June 11, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 1, 2021 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@subzerorepairservicecenter.com. Also on June 11, 2021, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On July 6, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 made the following contentions.
Complainant is an industry leader in the sale of high-end residential kitchen appliances, including refrigerators, freezers, wine storage systems, etc., that are marketed and sold throughout the United States and the world. Complainant has rights in the SUB-ZERO mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,543,399, registered June 13, 1989). See Compl. Annex B, Exhibit 3. Respondent’s <subzerorepairservicecenter.com> domain name is confusingly similar to Complainant’s SUB-ZERO mark as it contains Complainant’s entire mark and merely removes the hyphen, while adding the generic terms “repair,” “service,” and “center,” and the generic top level domain (“gTLD”) “.com.”
Respondent lacks rights or legitimate interests in the <subzerorepairservicecenter.com> domain name. Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to use the SUB-ZERO mark. Additionally, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses it to pass off as Complainant to offer competing services.
Respondent registered and uses the <subzerorepairservicecenter.com> domain name in bad faith. Respondent uses the disputed domain name to pass off as Complainant to offer competing services. Additionally, Respondent also had constructive and actual knowledge of Complainant’s rights in the SUB-ZERO mark prior to registering the disputed domain name, evidenced by Complainant’s trademark registrations and the famous nature of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is an industry leader in the sale of high-end residential kitchen appliances, including refrigerators, freezers, wine storage systems, etc., that are marketed and sold throughout the United States and the world.
2. Complainant has established its trademark rights in the SUB-ZERO mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,543,399, registered June 13, 1989).
3. Respondent registered the <subzerorepairservicecenter.com> domain name on June 12, 2020.
4. Respondent has used the domain name to pass itself off as Complainant and to offer competing services.
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.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant asserts rights in the SUB-ZERO mark through Complainant’s registration of the mark with the USPTO (e.g., Reg. No. 1,543,399, registered June 13, 1989). See Compl. Annex B, Exhibit 3. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Therefore, the Panel finds Complainant has demonstrated rights in the SUB-ZERO mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SUB-ZERO mark. Complainant argues Respondent’s <subzerorepairservicecenter.com> domain name is confusingly similar to Complainant’s SUB-ZERO mark as it contains Complainant’s entire mark and merely removes the hyphen, while adding the generic terms “repair,” “service,” and “center,” and the gTLD “.com.” Removing a hyphen from a mark and adding generic terms and a gTLD fail to distinguish a disputed domain name sufficiently from a mark per Policy ¶ 4(a)(i). See 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 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”). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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 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”).
(a) Respondent has chosen to take Complainant’s SUB-ZERO trademark and to use it in its domain name, adding the generic words “repair,” “service,” and “center,” which do not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <subzerorepairservicecenter.com> domain name on June 12, 2020;
(c) Respondent has used the domain name to pass itself off as Complainant and to offer competing services;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights or legitimate interests in the <subzerorepairservicecenter.com> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to use the SUB-ZERO mark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS information for the disputed domain name lists the registrant as “Marvin Schuster,” and Complainant argues there is no other evidence to suggest that Respondent was authorized to use the SUB-ZERO mark. See Registrar Verification Email. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <subzerorepairservicecenter.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses it to pass itself off as Complainant to offer competing services. Passing off as a complainant to offer competing services may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See 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.”); see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Here, Complainant provides screenshots showing the resolving website makes prominent and unauthorized use of Complainant’s SUB-ZERO and Snowflake logo on the homepage as well as the SUB-ZERO word mark in combination with the generic or highly descriptive term “repair.” See Compl. Annex B, Exhibit 2. Complainant’s screenshots also show the resolving website makes assertions that reasonably suggest that the repair services offered are provided by Complainant’s trained technicians (e.g., “Since 2000, Sub Zero has provided quality services to clients by providing them with the professional care they deserve. Get in touch today to learn about our Subzero Refrigerator Repair Service.”). See id. Complainant also argues that Respondent uses the disputed domain name to pass itself off as Complainant and to offer and provide directly competing repair services for SUB-ZERO-branded kitchen appliances. Therefore, the Panel finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
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.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends Respondent registered and uses the <subzerorepairservicecenter.com> domain name in bad faith as Respondent uses it to pass itself off as Complainant to offer competing services. Passing off as a complainant to offer competing services can demonstrate bad faith per Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). Here, the Panel recalls Complainant provides screenshots of Respondent’s resolving website that use Complainant’s trademarks while making assertions the competing repair services are provided by Complainant’s trained technicians. See Compl. Annex B, Exhibit 2. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant contends Respondent registered the <subzerorepairservicecenter.com> domain name in bad faith as Respondent had constructive and actual knowledge of Complainant’s rights to the SUB-ZERO mark prior to registration of the disputed domain names based on Complainant’s trademark registrations and the famous nature of the mark. While constructive knowledge is insufficient for a finding of bad faith, worldwide prominence of a mark can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith under Policy ¶ 4(a)(iii). See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."); see also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Here, Complainant argues that Complainant has continuously and exclusively used the SUB-ZERO mark throughout the U.S. and the world since at least as early as 1945, and since that time, Complainant and its various SUB-ZERO marks have become well known and have established notoriety and goodwill in the residential kitchen appliance marketplace. Therefore, the Panel finds Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the SUB-ZERO mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <subzerorepairservicecenter.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 7, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page