Sub-Zero, Inc. v. Bertblanc Ruiz
Claim Number: FA1507001628842
Complainant is Sub-Zero, Inc. (“Complainant”), represented by Tricia L. Schulz of Foley & Lardner LLP, Wisconsin, USA. Respondent is Bertblanc Ruiz (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <subzerorepairservices.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 14, 2015; the Forum received payment on July 16, 2015.
On July 14, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <subzerorepairservices.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 July 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 2015 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@subzerorepairservices.com. Also on July 20, 2015, 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 August 12, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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
1. Policy ¶ 4(a)(i) - Complainant uses the SUB-ZERO mark in conjunction with its business operations, including the sale, installation, repair, and maintenance of kitchen appliances. 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). See Compl., at Attached Annex B-3. Respondent’s <subzerorepairservices.com> is confusingly similar to the SUB-ZERO mark because it contains the entire words of the mark, removing only the hyphen, and adding only the generic or descriptive words “repair” and “services” along with the generic top-level domain (“gTLD”) “.com.”
2. Policy ¶ 4(a)(ii) - Respondent is not commonly known by the <subzerorepairservices.com> domain name because the available WHOIS information lists “Bertblanc Ruiz” as Registrant. Respondent is also not a licensee of Complainant. In addition, Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because it uses the resolving website in an attempt to offer repair services for Complainant’s products, which directly competes with Complainant’s business offerings.
3. Policy ¶ 4(a)(iii) - Respondent uses the disputed domain name in bad faith because it uses the <subzerorepairservices.com> domain name in order to confuse Internet users into believing that the website is associated with Complainant, in order to profit commercially. Respondent registered the <subzerorepairservices.com> domain name in bad faith because it did so with constructive or actual knowledge of Complainant’s rights in the SUB-ZERO mark.
B. Respondent
1. Respondent has failed to submit a formal Response.
1. Respondent’s <subzerorepairservices.com> domain name is confusingly similar to Complainant’s SUB-ZERO mark.
2. Respondent does not have any rights or legitimate interests in the <subzerorepairservices.com> domain name.
3. Respondent registered or used the <subzerorepairservices.com> domain name in bad faith.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant alleges that it has rights in the SUB-ZERO mark through its registration with the USPTO (e.g. Reg. No. 1,543,399, registered June 13, 1989). Complainant has provided documentation of this registration in Annex B-3. Past panels have found that registration with the USPTO suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has rights in the SUB-ZERO mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <subzerorepairservices.com> domain name is confusingly similar to Complainant’s SUB-ZERO mark because it contains the entire mark, removing only the hyphen, and adding only the words “ repair” and “services” along with the gTLD “.com.” Past panels have found both changes related to hyphens and the inclusion of “.com” irrelevant to Policy ¶ 4(a)(i) analysis. See nnomed 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). Complainant argues that the words “repair” and “services” are either generic and therefore irrelevant, or otherwise descriptive of Complainant’s business, and therefore increase the degree of confusing similarity between the domain and the SUB-ZERO mark. Past panels have agreed with similar arguments. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Accordingly, the Panel finds that Respondent’s <subzerorepairservices.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 is not commonly known by the disputed domain name. The Panel notes that the WHOIS information lists “Bertblanc Ruiz” as Registrant and that Respondent has failed to provide further evidence to indicate being commonly known by the domain name. Past panels have found such a lack of evidence sufficient to show that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). As such, the Panel finds that Respondent is not commonly known by the <subzerorepairservices.com> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent fails to use the resolving website to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the resolving website in an attempt to mislead Internet users with respect to the relationship between Complainant and the <subzerorepairservices.com> domain name. Complainant contends that Respondent uses the resolving website to offer repair services for products sold by Complainant, and that Respondent does so by displaying Complainant’s SUB-ZERO mark in Complainant’s stylized “bow-tie” logo. Dunlap Aff. ¶¶ 11-12. See Complainant’s Attached Exhibit A-2 for an example of Respondent’s resolving page, which seems to appropriate Complainant’s logo and photographs. Complainant has provided documentation of its own services and use of the logo in Annex A-7 through A-29. Past panels have found similar circumstances to show a lack of bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. 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). The Panel finds Complainant’s evidence sufficient to show Respondent attempts to misrepresent the relationship between Complainant and Respondent, and finds Respondent fails to provide bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant alleges that Respondent uses its resolving website to attract Internet users for financial gain by using the <subzerorepairservices.com> domain name to misrepresent the relationship between Complainant and the website in order to profit commercially. Complainant argues that Respondent does this by purporting to offer repair services for products sold by Complainant on a website displaying Complainant’s SUB-ZERO mark and stylized logo, while claiming to employ technicians who are certified by Complainant. Complainant has provided documentation of Respondent’s use in Annex A-2, as well as evidence of its own services and use of the logo in Annex A-7 through A-29, displaying substantially similar websites that are owned and operated by Complainant. Past panels have found similar circumstances sufficient to show bad faith use pursuant to Policy ¶ 4(b)(iv). See Tower Labs. Ltd. v. Seltzer, FA 791325 (Nat. Arb. Forum Oct. 16, 2006) (concluding that the respondent registered and was using the <bromoseltzer.com> domain name in bad faith because it displayed a logo similar to the complainant’s BROMO SELTZER mark, which was likely to confuse the public as to the source of the material exhibited at the respondent’s website); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”). The Panel finds such behavior by Respondent here, and finds that Respondent uses the <subzerorepairservices.com> domain in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant alleges that Respondent registered the disputed domain name with actual or constructive knowledge of Complainant’s rights in the SUB-ZERO mark. Complainant contends that Respondent has been placed on constructive notice through Complainant’s registration with the USPTO. Past panels have found, however, that constructive knowledge does not support a finding of bad faith registration. See Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that the respondent’s constructive notice of the complainant’s registered mark was insufficient to support a finding of bad faith registration). Complainant argues, in the alternative, that Respondent had actual knowledge of Complainant’s rights, which is evidenced by Respondent’s use of the website, described above, including displaying Complainant’s stylized logo. Past panels have found that when respondents have actual knowledge of a complainant’s rights in a mark, the registration of a confusingly similar domain name is done in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the SUB-ZERO mark at the time of registration, and finds that Respondent registered the <subzerorepairservices.com> domain in bad faith under 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 <subzerorepairservices.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 26, 2015
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