Sub-Zero, Inc. v. armando perez / grupo servi-tec
Claim Number: FA1611001702432
Complainant is Sub-Zero, Inc. (“Complainant”), represented by Tricia L. Schulz of Foley & Lardner LLP, Wisconsin, USA. Respondent is armando perez / grupo servi-tec (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <serviciosubzeromexico.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 10, 2016; the Forum received payment on November 14, 2016.
On November 12, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <serviciosubzeromexico.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 November 14, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 2016 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@serviciosubzeromexico.com. Also on November 14, 2016, 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 December 7, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant has registered its SUB-ZERO mark with the United States Patent and Trademark Organization (“USPTO”) (e.g., Reg. No.1,625,853, registered Dec. 4, 1990), and has rights in the mark under Policy ¶ 4(a)(i). Respondent’s <serviciosubzeromexico.com> domain name has merely added the geographic term “Mexico” and the descriptive term “servicio” which is the Spanish translation of “service,” to Complainant’s mark. The omission of a single hyphen in SUB-ZERO and addition of a generic top-level domain (“gTLD”) are also not relevant for distinguishing the domain name from Complainant’s mark.
ii) Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not granted Respondent any sort of permission to use its SUB-ZERO mark, and Respondent is not commonly known as <serviciosubzeromexico.com>. Respondent is attempting to pass itself off as Complainant for commercial gain and prominently displays several of Complainant’s SUB-ZERO marks on its website where Respondent offers competing services. Such use cannot constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
iii) Respondent registered and has been using the disputed domain name in bad faith. Respondent presumably receives revenue for providing repair services to Complainant’s products and is commercially gaining by the confusion as to the source, sponsorship, affiliation, or endorsement of the resolving page of the disputed domain name. Further, Respondent had actual notice of the famous SUB-ZERO mark when it registered the <serviciosubzeromexico.com> domain name. Respondent is taking advantage of the SUB-ZERO mark in a bad faith attempt to compete with Complainant’s repair services.
B. Respondent
Respondent registered the <serviciosubzeromexico.com> domain name on July 31, 2014, and has not submitted a Response to this Complaint.
Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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(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 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 (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 contends it has registered its SUB-ZERO mark with the USPTO (e.g., Reg. No.1,625,853, registered Dec. 4, 1990), and that it has rights in the mark under Policy ¶ 4(a)(i). Panels have found that USPTO registration confers rights in a mark, even when the registration is not from the governmental authority of the country that the respondent is operating in. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man). Thus, the Panel finds that Complainant has rights in its SUB-ZERO mark.
Complainant additionally contends that Respondent’s <serviciosubzeromexico.com> domain name is confusingly similar to its SUB-ZERO mark. Complainant asserts that omission of the hyphen in its mark and the addition of a gTLD are irrelevant for confusing similarity analysis, and that Respondent has merely added the geographic term “Mexico” and the descriptive term “servicio” which is the Spanish translation of the English word “service.” Complainant asserts “service” is descriptive of the repair services it provides to the products it sells both in the U.S. and Mexico. Panels have agreed that the omission of a hyphen of a gTLD are not distinctive enough to differentiate a domain name from a mark. See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant's mark). Panels have also found that a geographic term is inconsequential for Policy ¶ 4(a)(i) analysis, and that a descriptive term in any language (especially when it pairs with the geographic term) can still make a domain name confusingly similar to a complainant’s mark. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also EMVCO, LLC c/o Visa Holdings v. Corey Grottola / Prophet Companies, FA 1649199 (Forum Dec. 22, 2015) (Holding that the addition of descriptive terms to a complainant’s mark does not serve to adequately distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).). The Panel finds that Respondent’s domain name is confusingly similar to the SUB-ZERO mark.
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 (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 (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 contends that Respondent has no rights or legitimate interests in the <serviciosubzeromexico.com> domain name. Complainant asserts that it has not licensed or otherwise authorized Respondent to use its SUB-ZERO mark in any fashion, and that Respondent is not commonly known by the disputed domain name or any variation featuring “SUB-ZERO.” The Panel notes that the WHOIS information for the domain name in question lists “armando perez” as the registrant with “grupo servi-tec” organization. Previous panels have inferred that a respondent is not commonly known by a domain name from the WHOIS information and lack of contradicting evidence in the record. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Thus, the Panel finds that Respondent is not commonly known by <serviciosubzeromexico.com>.
Complainant further asserts that Respondent is not using the disputed domain name to make a bona fide offering of goods and services under Policy ¶ 4(c)(i), or using it to make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant argues that Respondent is using Complainant’s marks on the resolving website of <serviciosubzeromexico.com> to pass itself off as the Complainant, and to directly compete with Complainant’s repair business. Complainant has submitted screen shots of Respondent’s website that it contends is not a bona fide offering of goods and services or a legitimate noncommercial or fair use of the domain name. Panels have held that a respondent attempting to pass itself off as a complaint does violate Policy ¶ 4(c)(i) and (iii). See Crow v. LOVEARTH.net, FA 203208 (Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”). Panels have also held that a respondent using the confusingly similar domain name to compete with the complainant does not confer on the respondent any rights or legitimate interests. See Coryn Group, Inc. v. Media Insight, FA 198959 (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). As such, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name.
Complainant states that Respondent has registered and is using the <serviciosubzeromexico.com> domain name in bad faith. Complainant argues that Respondent is purportedly attempting to pass itself off as Complainant in a bad faith attempt to attract Internet users for commercial gain under Policy ¶ 4(b)(iv). Complainant argues that Respondent’s use of their SUB-ZERO mark, in conjunction with the confusingly similar domain name, creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. The Panel notes similarities between the resolving website of <serviciosubzeromexico.com> and the Complainant’s website. Complainant presumes that Respondent is commercially gaining from the competing repair services it offers to Complainant’s customers. As the Panel agrees that Respondent is attempting to pass itself off as Complainant, it finds Respondent in bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). The Panel also holds that Respondent is in bad faith as it sees that it is competing with Complainant on the resolving website of a confusingly similar domain name. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant).
Complainant further contends that Respondent had actual notice of its rights in the SUB-ZERO mark when it registered the <serviciosubzeromexico.com> domain name, and that such notice constitutes bad faith under Policy ¶ 4(a)(iii). Complainant cites the descriptive nature and competing services of the domain name, and the fact that Respondent’s website uses Complainant’s actual marks all as evidence that Respondent had actual notice of their rights in the mark. Although the UDRP does not recognize constructive notice as sufficient grounds to find bad faith under Policy ¶ 4(a)(iii), the Panel infers actual notice from the manner of use of the disputed domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”); see also O Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”). Thus, the Panel finds that Respondent had actual notice of Complainant’s rights in the SUB-ZERO mark when it registered <serviciosubzeromexico.com> domain name, and that this registration was in bad faith 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 <serviciosubzeromexico.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: December 12, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page