Sub-Zero, Inc. v. Michael C Riley / MCR Services
Claim Number: FA1704001728626
Complainant is Sub-Zero, Inc. (“Complainant”), represented by Tricia L. Schulz of Foley & Lardner LLP, Wisconsin, U.S.A. Respondent is Michael C Riley / MCR Services (“Respondent”), Florida, U.S.A.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <szpartz.com>, registered with Tucows Domains 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 April 24, 2017; the Forum received payment on April 26, 2017.
On April 25, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <szpartz.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 2017 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@szpartz.com. Also on May 8, 2017, 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 June 5, 2017, 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 engages in the business of selling kitchen appliances and also provides replacement parts, installation, repair and maintenance services for its products. Complainant registered the SUB-ZERO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,625,853, registered Dec. 4, 1990). See Compl. at Attached Ex. 3. Respondent’s <szpartz.com> is confusingly similar to Complainant’s SUB-ZERO mark because “sz” is an abbreviation of “sub-zero”, the misspelled “partz” is a term descriptive of Complainants products, and the addition of a generic top-level domain (“gTLD") cannot distinguish a domain name from a registered mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor is Respondent licensed to use the mark in any way. Further, Respondent uses the disputed domain name to pass off as Complainant and to offer replacement parts for Complainant’s products, thus directly competing with Complainant’s business. See Compl., at Attached Ex. 2.
Respondent has registered and is using the disputed domain name in bad faith. Respondent uses the disputed domain name to create a likelihood of confusion as to the affiliation of its website and/or products for the purpose of attracting consumers for commercial gain. Respondent also sells services that directly compete with Complainant. See Compl., at Attached Ex. 2. Finally, Respondent had actual knowledge of Complainant’s rights since Respondent’s website prominently displays Complainant’s SUB-ZERO mark and references Complainant’s products throughout. See Compl., at Attached Ex. 2.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of selling kitchen appliances and providing replacement parts, and installation, repair and maintenance services for its products.
2. Complainant has registered the SUB-ZERO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,625,853, registered Dec. 4, 1990).
3. Respondent registered the disputed domain name on November 21, 2013.
4. Respondent uses the disputed domain name to pass itself off as Complainant and to offer replacement parts for Complainant’s products, thus directly competing with Complainant’s business.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has established rights in the SUB-ZERO mark via registration of the mark with the USPTO. Registration of a mark with the USPTO sufficiently establishes rights in that mark. See See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel finds that Complainant has established rights in the SUB-ZERO mark based on its registration with the USPTO. See Compl. at Attached Ex. 3 (Reg. No. 1,625,853, registered Dec. 4, 1990).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SUB-ZERO mark. Complainant argues that Respondent’s <szpartz.com> is confusingly similar to the SUB-ZERO mark because “sz” is an abbreviation of “sub-zero”, the mispelled “partz” is a term descriptive of Complainants products, and the addition of a generic top-level domain (“gTLD") cannot distinguish a domain name from a mark. Abbreviations and additions of terms descriptive of Complainant’s business along with a gTLD does not sufficiently distinguish a disputed domain name from a mark. See Sterling Jewelers Inc. v. KAY KAY YAN, FA 1542616 (Forum Mar. 17, 2014) (finding that Respondent’s <kisskay.com> domain name is confusingly similar to Complainant’s KAY and EVERY KISS BEGINS WITH KAY marks at it constitutes a mere abbreviation.); Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademarks CATERPILLAR and CATERPILLER DESIGN because “the idea suggested by the disputed domain names and the registered trademarks is that the goods or services offered in association with [the] domain name are manufactured by or sold by the Complainant or one of the Complainants [sic] approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar”); Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel finds that “sz” is an abbreviation of SUB-ZERO. See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated). The Panel therefore finds that Respondent registered and uses a domain name which is confusingly similar to a mark in which Complainant has rights.
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), 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 l lacks rights and egitimate 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SUB-ZERO mark and to use it in its domain name including “sz” as an abbreviation of “sub-zero” and the mispelled “partz” which is a term descriptive of Complainant’s products;
(b) Respondent registered the domain name on November 21, 2013;
(c) Respondent has used the disputed domain name to pass itself off as Complainant and to offer replacement parts for Complainant’s products, thus directly competing with Complainant’s business;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent is not commonly known by the disputed domain name. In lieu of a Response, WHOIS information can substantiate a finding that a respondent is not commonly known by a disputed domain name per Policy ¶ 4(c)(ii); additionally, use of a WHOIS privacy service can further evidence a finding that a respondent is not commonly known by a disputed domain name. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum January 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). Here, the WHOIS information named “Contact Privacy Inc. Customer 0136088631” prior to the start of proceedings; “Michael C Riley” was revealed to be the registrant after commencement of these proceedings. See Compl., at Attached Ex. 1. As such, the Panel finds Respondent is not commonly known by <szpartz.com> per Policy ¶ 4(c)(ii);
(f) Complainant argues Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, <szpartz.com> resolves to a page where Respondent passes itself off as Complainant to offer competing replacement parts for Complainant’s products. See Compl., at Attached Ex. 2. Use of a confusingly similar domain name to create confusion as to the owner of the domain name and to offer goods in competition with a complainant can indicate of a lack of rights and legitimate interests per Policy ¶ 4(c)(i) & (iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (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).”); see also 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).”). Here, Complainant provides a screenshot to evince Respondent passing off as Complainant, and contends that Respondent attempts to trade on the goodwill instilled within Complainant and profit from the confusion created. See Compl., at Attached Ex. 2. As such, the Panel finds Respondent lacks rights and legitimate interests per Policy ¶¶ 4(c)(i) & (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 does not have a right or legitimate interest 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 <szpartz.com> domain name in bad faith as Respondent’s operation of a domain name confusingly similar to Complainant’s mark to sell replacement parts for Complainant’s products creates confusion and disrupts Complainant’s business. Registration and use of a confusingly similar domain name to divert Internet users from Complainant to Respondent is indicative of bad faith per Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Here, Complainant argues that Respondent’s use of the disputed domain name creates confusion for customers seeking Complainant but locating Respondent instead, when Respondent’s website purports to sell competing products. See Compl., at Attached Ex. 2. As such, the Panel finds Respondent’s behavior constitutes bad faith per Policy ¶ 4(b)(iii).
Secondly, Complainant argues Respondent registered <szpartz.com> to attract Internet users for Respondent’s commercial gain intentionally. Use of a disputed domain name to attract internet users for commercial gain evinces a finding of bad faith per Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products). The Panel notes that Respondent’s resolving website contains Complainant’s marks and offers components for Complainant’s products. See Compl., at Attached Ex. 2. The Panel therefore finds Respondent acted in bad faith per Policy ¶ 4(b)(iv).
Thirdly, Complainant contends Respondent had actual notice of Complainant’s rights in the SUB-ZERO mark prior to Respondent’s registration and use of the disputed domain name. Constructive notice is insufficient for a finding of bad faith; however, proof of actual notice is sufficient for a finding per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel notes again that Respondent’s domain name frequently uses Complainant’s mark and posits itself as “the New Source of Part Replacements for SubZero Refrigeration.” See Compl., at Attached Ex. 2. The Panel agrees with Complainant and therefore finds further evidence of Respondent’s bad faith per Policy ¶ 4(a)(iii).
Fourthly, 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 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 <szpartz.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: June 6, 2017
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