Sub-Zero, Inc. v. ILIAS TSAGKLIS
Claim Number: FA1405001557406
Complainant is Sub-Zero, Inc. (“Complainant”), represented by Tricia L. Schulz of Foley & Lardner LLP, Wisconsin, USA. Respondent is ILIAS TSAGKLIS (“Respondent”), Greece.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <subzerorefrigeratorguide.com>, registered with Enom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Flip Petillion as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 2, 2014; the National Arbitration Forum received payment on May 5, 2014.
On May 5, 2014, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <subzerorefrigeratorguide.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 May 6, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 27, 2014 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@subzerorefrigeratorguide.com. Also on May 6, 2014, 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 27, 2014.
On June 2, 2014, Complainant submitted a timely Additional Submission in accordance with Supplemental Rule 7.
On May 29, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Flip Petillion as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 argues as follows:
a) Complainant is an industry leader in the sale of kitchen appliances, including refrigerators and freezers.
b) Complainant has rights in the SUB-ZERO mark, used in connection with refrigerators and freezers. Complainant owns registrations for the SUB-ZERO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,543,399 registered June 13, 1989).
c) Respondent’s <subzerorefrigeratorguide.com> domain name is confusingly similar to Complainant’s SUB-ZERO mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the generic terms “refrigerator” and “guide,” as well as the generic top-level domain (“gTLD”) “.com.”
d) Respondent does not have any rights or legitimate interests in the <subzerorefrigeratorguide.com> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its SUB-ZERO mark in any way.
b. Respondent is using the <subzerorefrigeratorguide.com> domain name to offer information regarding Complainant’s refrigerators and claims regarding parts, repairs, warranties, prices, and more. Respondent makes prominent use of Complainant’s logo, pictures from Complainant’s websites, and links directly to Complainants own website.
c. Respondent includes a disclaimer in the “About Us” section of its website, but the disclaimer is not sufficiently prominent enough to avoid any finding of likelihood of confusion.
e) Respondent registered and is using the <subzerorefrigeratorguide.com> domain name in bad faith.
a. Respondent is intentionally attempting to attract Internet users to the disputed domain name by creating a likelihood of confusion with Complainant’s SUB-ZERO mark. Respondent is realizing commercial gain via click-through advertisements displayed on the resolving website.
b. Respondent had knowledge of Complainant’s mark prior to registering the <subzerorefrigeratorguide.com> domain name because of Complainant’s exclusive trademark rights in the SUB-ZERO and the resolving website prominently displays Complainant’s mark.
B. Respondent
Respondent replied that:
a) The disputed domain name differs from Complainant’s SUB-ZERO mark by the use of the suffix “guide,” which denotes that the site is for informational purposes only and is not in any way related to the selling of relevant goods.
b) Respondent purchased the <subzerorefrigeratorguide.com> domain name to provide information on refrigerator systems in and honest and sincere way. Respondent is using the <subzerorefrigeratorguide.com> domain name for educational purposes only.
c) Respondent does not claim to be affiliated with Complainant in any way.
d) Respondent is not using the <subzerorefrigeratorguide.com> domain name in bad faith because Respondent’s only intent is to offer guidance and information on these various refrigerators, some of which are Complainant’s products.
e) Respondent is not attempting to sell or otherwise transfer the <subzerorefrigeratorguide.com> domain name, disrupt Complainant’s business, or create any likelihood of confusion with Complainant’s SUB-ZERO mark.
f) Respondent includes a disclaimer on the “About Us” page of the resolving website, which states that “We are not affiliated with Sub Zero or Wolf in any way. We are not compensated for our opinions of the different models available for purchase. These are real reviews that you can count on to be true.”
C. Additional Submissions
In its Additional Submission, Complainant replies to the Respondent’s claim that Respondent is making a fair use of the Disputed Domain Name. Complainant argues that the Respondent is not making a fair use, as it is likely realizing commercial gain with the Disputed Domain Name through advertising sponsored links and promoting products of multiple potential competitors of Complainant.
Complainant also reiterates several arguments of its complaint.
The Respondent did not reply to the Complainant’s Additional Submission.
Complainant is active in the sale of kitchen appliances, including refrigerators and freezers. Complainant has rights in the SUB-ZERO mark, used in connection with refrigerators and freezers. Complainant owns registrations for the SUB-ZERO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,543,399 registered June 13, 1989.)
The Disputed Domain Name was registered on May 19, 2013.
The Disputed Domain Name is used to offer information about the Complainant’s products and contains advertisements for products of potential competitors of the Complainant.
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.
Complainant contends it has rights in the SUB-ZERO mark, used in connection with refrigerators and freezers. Complainant states that it owns registrations for the SUB-ZERO mark with the USPTO (e.g., Reg. No. 1,543,399 registered June 13, 1989). The Panel notes that Respondent resides or operates in a different country than that in which Complainant holds its trademark registrations; however, past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the SUB-ZERO mark within the meaning of Policy ¶ 4(a)(i) because Complainant holds valid registrations for the mark with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <subzerorefrigeratorguide.com> domain name is confusingly similar to Complainant’s SUB-ZERO mark. Complainant observes that the disputed domain name incorporates Complainant’s mark in its entirety while adding the generic terms “refrigerator” and “guide,” as well as the gTLD “.com.” The Panel notes that the disputed domain name also removes the hyphen that exists in Complainant’s mark. First, the Panel finds that the addition of generic terms to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). Next, the Panel finds that neither removing a hyphen nor adding a gTLD negates a finding a confusing similarity. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Therefore, the Panel finds that Respondent’s <subzerorefrigeratorguide.com> domain name is confusingly similar to Complainant’s SUB-ZERO mark pursuant to Policy ¶ 4(a)(i).
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent does not have any rights or legitimate interests in the <subzerorefrigeratorguide.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its SUB-ZERO mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “ILIAS TSAGKLIS” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). Therefore, because Respondent was not authorized by Complainant to use the SUB-ZERO mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that there are no indications showing that Respondent is commonly known by the <subzerorefrigeratorguide.com> domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent is using the <subzerorefrigeratorguide.com> domain name to offer information regarding Complainant’s refrigerators and claims regarding parts, repairs, warranties, prices, and more. Complainant states that Respondent makes prominent use of Complainant’s logo, pictures from Complainant’s websites, and links directly to Complainants own website. The Panel notes that Complainant has not attached a screenshot of the website connected to the disputed domain name. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition records to be a consensus view among WIPO panelists that panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name. The limited research performed by the Panel in visiting the website linked to the Disputed Domain Name supports the Complainant’s contentions. Further, past panels have found that a respondent attempting to pass itself off as a complainant is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”). The Panel finds that Respondent is attempting to pass itself off as Complainant based on sufficient evidence of Respondent’s use of Complainant’s logo, mark, and color scheme on the website connected to the <subzerorefrigeratorguide.com> domain name. This also supports a finding that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Additionally, past panels have also held that a general intent to divert Internet users to a confusingly similar domain name does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel finds that Respondent is not making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because the Respondent is intending to divert Internet users away from Complainant through the use of a confusingly similar domain name.
Complainant observes that Respondent includes a disclaimer in the “About Us” section of its website, but the disclaimer is not sufficiently prominent enough to avoid any finding of likelihood of confusion. Past panels have found that a disclaimer on a disputed domain name does not mitigate any initial confusion Internet users may experience when the first interact with the disputed domain name. See AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”). Therefore, the Panel finds that Respondent’s disclaimer does not mitigate any confusion and considers that the <subzerorefrigeratorguide.com> domain name is not afforded Policy ¶ 4(a)(ii) rights merely by virtue of the disclaimer.
As a result, the Panel considers that the Respondent does not show that it has made any fair use of the Domain Names. Therefore, it is established that the Respondent has no rights or legitimate interests in the Domain Names.
Complainant contends that Respondent registered and is using the <subzerorefrigeratorguide.com> domain name in bad faith. Complainant asserts that Respondent is intentionally attempting to attract Internet users to the disputed domain name by creating a likelihood of confusion with Complainant’s SUB-ZERO mark. Complainant believes that Respondent is realizing commercial gain via click-through advertisements displayed on the resolving website. This is supported by the content of the website that is linked to the Disputed Domain Name. Past panels have found that using a confusingly similar domain for the purpose of obtaining click-through revenue demonstrates bad faith via attraction for commercial gain under Policy ¶ 4(b)(iv). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Therefore, the Panel finds that Respondent registered and is using the <subzerorefrigeratorguide.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent is obtaining click-through revenue from various links displayed on the resolving website.
The choice of the domain name and the content of the website also shows that the Respondent must have been well aware of Complainant’s mark at the time Respondent registered the disputed domain name. Therefore, the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
Respondent asserts that it includes a disclaimer on the “About Us” page of the resolving website, which states that “We are not affiliated with Sub Zero or Wolf in any way. We are not compensated for our opinions of the different models available for purchase. These are real reviews that you can count on to be true.” Past panels have found that a disclaimer does not mitigate findings of bad faith because it does not negate any initial confusion on the part of Internet users. See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”). Therefore, the Panel finds that the disclaimer on the resolving website does not mitigate any bad faith findings made by the Panel pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <subzerorefrigeratorguide.com> domain name be TRANSFERRED from Respondent to Complainant.
Flip Petillion, Panelist
Dated: June 12, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page