Sub-Zero, Inc. v. Adrian Loughlin / Factor Appliance
Claim Number: FA2101001927129
Complainant is Sub-Zero, Inc. (“Complainant”), represented by AJ Schumacher of Foley & Lardner LLP, Wisconsin, USA. Respondent is Adrian Loughlin / Factor Appliance (“Respondent”), represented by Laila Ghauri of Antares Law Firm, Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <centricsubzerorepair.com>, registered with GoDaddy.com, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Francine Siew Ling Tan as the Chair of the three-member Panel, along with Kendall C. Reed, Esq. and Darryl C. Wilson, Esq. as Panelists,
Complainant submitted a Complaint to the Forum electronically on January 4, 2021; the Forum received payment on January 4, 2021.
On January 5, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <centricsubzerorepair.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 January 11, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 1, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents registration as technical, administrative, and billing contacts, and to postmaster@centricsubzerorepair.com.
On January 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.
A timely Response was received and determined to be complete on February 1, 2021.
An Additional Submission was filed by Complainant on February 10, 2020. An additional Submission was filed by Respondent on February 15, 2020.
On February 10, 2021 pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed
Francine Siew Ling Tan, as Panelist;.
Kendall C. Reed, as Panelist; and
Darryl C. Wilson, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is an industry leader in the sale of high-end residential kitchen appliances including refrigerators, freezers and wine storage systems. Complainant registered its SUB-ZERO mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1543399, registered on June 13, 1989; and Reg. No. 3507324, registered on September 30, 2008). The Complainant also provides replacement parts and installation, maintenance and repair services for its products. The SUB-ZERO mark has been used by Complainant since as early as 1945.
Respondent’s <centricsubzerorepair.com> domain name (the “Domain Name”), which was registered on November 16, 2016, is confusingly similar to Complainant’s mark as it incorporates the essentially identical SUB-ZERO mark, altering it only by adding the descriptive terms “repair and “centric” (the latter being an adjective meaning “located in or at a center; central”) and the “.com” generic top-level domain (“gTLD”). These additions are inadequate to distinguish the Domain Name from Complainant’s SUB-ZERO mark.
Respondent does not have any rights or legitimate interests in the Domain Name. Respondent is not licensed by Complainant to use the SUB-ZERO mark and is not commonly known by the Domain Name. Respondent does not use the Domain Name for any bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the Domain Name to pass off as or as being affiliated with Complainant and offers competing repair services.
Respondent registered and is using the Domain Name in bad faith in that it is passing itself off as Complainant, or as an affiliate of Complainant, and is offering services which complete with Complainant. Respondent had actual knowledge of Complainant’s rights in the SUB-ZERO mark prior to registering the Domain Name.
B. Respondent
Respondent is the owner of two companies, Factor Appliance and Centric Subzero Repair, LLC. The former is a Maryland sole proprietorship and the latter, a District of Columbia limited liability company, which was initially registered and operated as a sole proprietorship in the State of Maryland.
Respondent uses the Domain Name exclusively for its Centric Subzero Repair business. The Domain Name is not confusingly similar to the SUB-ZERO mark because the mark is a descriptive term (meaning “characterized by or suitable for subzero temperatures”) and the terms “centric” and “repair’ differentiate the Domain Name from the mark. The SUB-ZERO mark exists in a crowded market of SUB-ZERO-formative and SUBZERO-formative trademarks. The SUB-ZERO mark also co-exists on the USPTO Principal Register with many other third-party registrations of SUB-ZERO-formative and SUBZERO-formative trademarks. Against this backdrop, similar marks with minor distinctions can be registered as consumers would be conditioned to look to other elements of the marks as a means of distinguishing the source of the goods or services in the field. Additionally, there is no evidence Complainant uses the SUB-ZERO mark in conjunction with out-of-warranty kitchen appliance repair services offered by Respondent.
Respondent has rights and legitimate interests in Domain Name as Respondent is commonly known by the Domain Name in the State of Maryland and the District of Columbia. Respondent has used the Domain Name in connection with a bona fide offering of goods or services since November 18, 2016 and has developed goodwill and value in its business. Respondent uses the Domain Name to offer services outside those offered by Complainant. Respondent’s website features disclaimers indicating that Respondent is not affiliated with Complainant. A disclaimer appearing around the middle of the home page reads:
“We are an independent repair company and are not affiliated in any way with the Sub-Zero/Wolf appliance manufacturer or any of its distributors. We do not service any Wolf products. We are not a ‘factory service’ repair company for Sub-Zero and do not offer any in-warranty repairs on their behalf. If your product is covered by some type of warranty, we recommend contacting Sub-Zero directly to obtain service through a Sub-Zero warranty provider. We only offer repair service on Sub-Zero products located in residential properties, working directly with homeowners and not through any insurance companies.”
Complainant has not offered evidence that Respondent registered or used the Domain Name in bad faith. Respondent has no intention to divert or confuse consumers. Respondent has not displayed links on its website directly to Complainant’s goods or services.
Complainant has engaged in reverse domain name hijacking.
C. Additional Submissions
(1) Complainant
Respondent’s argument that Complainant’s SUB-ZERO mark is descriptive and co-exists in a crowded field is irrelevant under the UDRP. What is relevant is whether the domain name itself is identical or confusingly similar to Complainant’s mark. Complainant’s SUB-ZERO mark is not descriptive. The SUB-ZERO mark, as a registered mark on the USPTO Principal Register, has reached incontestable status. The mark is therefore distinctive.
Having clear prior knowledge of Complainant and its rights in the SUB-ZERO mark, Respondent nonetheless registered the company name “Centric Sub-Zero Repair” and the Domain Name in November 2016 and used them to service Complainant’s SUB-ZERO brand appliances. This cannot convey rights or legitimate interests in the Domain Name.
Respondent is using the Complainant’s SUB-ZERO mark in a trademark manner, and not in a descriptive manner. Respondent’s use cannot be categorized as “nominative fair use” as the use of the mark in the Domain Name is for the promotion and offer of services offered by Respondent.
Respondent’s disclaimer and non-affiliation language on the website appear in a single and non-obvious place. Consumers would be exposed to the disclaimer only after landing at the website.
(2) Respondent
Fair use is protected under ¶ 4(c)(iii) of the Policy and U.S. trademark laws. Respondent’s use of the Domain Name qualifies as legitimate, fair use as inclusion of Complainant’s mark in the Domain Name is referential and Respondent limits use of the mark for only that purpose. Nothing in the record shows Respondent has done anything to give rise to the belief that Complainant somehow endorses Respondent or its services. The Domain Name, at most, suggests to prospective customers that Respondent is a repair company.
Complainant, having failed to establish that Respondent lacks rights or legitimate interests in the Domain Name, has not established all the required elements of its claim. The Complainant is therefore denied.
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 has established it has trademark rights in SUB-ZERO. The registration of a mark with the USPTO is a valid showing of rights in a mark for the purposes of the Policy ¶ 4(a)(i). (See DIRECTTV v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018); Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015). The Panel agrees with Complainant that Respondent’s argument that Complainant’s SUB-ZERO mark is descriptive and co-exists in a crowded field is irrelevant under the Policy.
The Domain Name is confusingly similar to Complainant’s SUB-ZERO mark as it incorporates the mark in its entirety, altering it only by adding the generic or descriptive terms “centric” and “repair” and the gTLD “.com”, and removing the hyphen in the mark. Such differences do not distinguish a domain name from a complainant’s mark for the purposes of the Policy ¶ 4(a)(i). This position is well established by numerous UDRP panel decisions. (See e.g. Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016); MTD Products Inc. v. ICS Inc., FA 1721505 (Forum Apr. 18, 2017).)
For the reasons discussed above, the Panel finds that the Domain Name is confusingly similar to the SUB-ZERO mark, in which Complainant has rights.
Policy ¶ 4(a)(i) has therefore been established.
It is not in dispute that Complainant has not authorized Respondent to use its SUB-ZERO mark in a domain name and that Respondent is not licensed by Complainant to repair or distribute Complainant’s SUB-ZERO products. The Panel finds that Complainant has established a prima facie case that Respondent lacked rights or legitimate interests in the Domain Name. Having done so, the burden of production shifts to Respondent to show it has rights or legitimate interests in the Domain Name. (See AOL LLC v. Jordan Gerberg, FA 780200 (Forum Nov 2, 2011); Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014).) Pursuant to Policy ¶ 4(c), Respondent may establish its rights or legitimate interests therein, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Policy is intended to be a simple administrative dispute resolution mechanism for dealing with clear cases of cybersquatting (see https://www.wipo.int/export/sites/www/amc/en/docs/wipointaudrp.pdf). The principles established by the seminal Oki Data Americas, Inc. v. ASD, Inc. decision (WIPO Case No. D2001-0903) recognize that the Policy is not intended to prohibit, without exception, the incorporation of a third party’s trade mark within a domain name in all cases. A balance was sought to be struck in the Oki Data case which incorporated the concept of “nominative fair use”. The Oki Data case, which has been applied in many UDRP cases, established the following cumulative criteria:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trade mark.
Generally speaking, UDRP panels have found that where a domain name consists of a trade mark plus an additional term, such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner (Section 2.5.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Hence, the question to be addressed is whether there is basis to say that the terms forming the Domain Name trigger an inference of affiliation, sponsorship or endorsement with/by Complainant.
In this case the Panel is unable to make a conclusive determination, simply on the face of the Domain Name, that it triggers an inference of possible affiliation, sponsorship or endorsement. The terms “centric” and “repair” are additional elements surrounding Complainant’s mark such that “subzero” is not the sole dominant feature, albeit it is easily identifiable in the Domain Name. Uncertainty is thereby created about the connection between Complainant and Respondent. The combination of the additional terms “centric” and “repair” conveys to consumers a message, as part of the ordinary and common experience of Internet browsing, that the Domain Name is not likely to be associated with or to emanate from the original manufacturers. In view of the said uncertainty, one has to consider the broader facts and circumstances, including the associated website content. In this regard, section 2.5.2 of the WIPO Overview 3.0 provides that some of the factors to be considered in the assessment include the following:
(i) whether the domain name has been registered and is being used for legitimate purposes and not as a pretext for commercial gain or other such purposes inhering to the respondent’s benefit;
(ii) whether the respondent reasonably believes its use (whether referential, or for praise or criticism) to be truthful and well-founded;
(iii) whether it is clear to Internet users visiting the respondent’s website that it is not operated by the complainant;
(iv) whether the respondent has refrained from engaging in a pattern of registering domain names corresponding to marks held by the complainant or third parties;
(v) whether there is an actual connection between the complainant’s trademark in the disputed domain name and the corresponding website content, and not to a competitor, or an entire industry, group, or individual; and
(vi) whether the domain name registration and use by the respondent is consistent with a pattern of bona fide activity (whether online or offline).
Taking into account these factors as well as Policy ¶ 4(c), Respondent appears to use the Domain Name for a legitimate purpose and in respect of a bona fide offering of services, namely the repair services of SUB-ZERO-branded products. The repair services do not extend to products of a competing brand(s). Respondent’s referential use of the SUB-ZERO mark appears to be valid and bona fide. Respondent’s website accurately discloses the nature of its business and that it is not affiliated with Complainant. There is nothing in the content of Respondent’s website which suggests affiliation with or endorsement by Complainant. The Panel finds that the disclaimers on Respondent’s website are sufficiently prominent and clear enough such that it would be evident to consumers that Respondent is not affiliated to or endorsed by Complainant. Neither is there any evidence of a pattern of conduct by Respondent of registering domain names containing the trademarks of Complainant or of third parties. The Panel finds that the evidence shows Respondent satisfies the four elements of the Oki Data test. Respondent uses the Domain Name for its business of repair of SUB-ZERO appliances, which is consistent with what is reflected in the Domain Name.
The Panel accordingly finds that Respondent has rights and legitimate interests in the Domain Name.
Policy ¶ 4(a)(ii) has therefore not been established.
In the light of the Panel’s finding on the issue of Respondent’s rights or legitimate interests, the Panel declines to address the issue of registration and use in bad faith.
Reverse Domain Name Hijacking (“RDNH”)
RDNH, per the Rules, is defined as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain” (see Section 4.16, WIPO Overview 3.0). The mere lack of success of a complaint is not in itself sufficient to make a finding of RDNH. Section 4.16 of the WIPO Overview 3.0 sets out a number of circumstances which UDRP panels have considered relevant to support a finding of RDNH, e.g.:
(i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements;
(ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complainant;
(iii) unreasonably ignoring established Policy precedent notably as captured in the WIPO Overview 3.0, except in limited circumstances which prima facie justify advancing an alternative legal argument;
(iv) the provision of false evidence or attempting to mislead the panel;
(v) basing a complaint on only the barest of allegations without any supporting evidence.
The Panel finds no evidence of bad faith on Complainant’s part to support a finding of RDNH.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <centricsubzerorepair.com> domain name REMAIN WITH Respondent.
Francine Siew Ling Tan, as the Chair,
Kendall C. Reed, Esq. and Darryl C. Wilson, Esq. as Panelists
Dated: February 23, 2021
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