Sub-Zero, Inc. v. Bernell Burton / Refrigeration 365, LLC
Claim Number: FA2210002014880
Complainant is Sub-Zero, Inc. (“Complainant”), represented by Matthew D. Witsman of Foley & Lardner LLP, US. Respondent is Bernell Burton / Refrigeration 365, LLC (“Respondent”), represented by Aaron P. Peacock of PEACOCK LAW FIRM PLLC, US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <subzerorefrigeratorservice.com>, registered with Tucows Domains Inc..
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.
Jeffrey J. Neuman as Panelist.
Complainant submitted a Complaint to Forum electronically on October 5, 2022; Forum received payment on October 5, 2022.
On October 06, 2022, Tucows Domains Inc. confirmed by e-mail to Forum that the <subzerorefrigeratorservice.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 October 10, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 4, 2022 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@subzerorefrigeratorservice.com. Also on October 10, 2022, 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 November 4, 2022.
On November 11, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Jeffrey J. Neuman as Panelist.
On November 11, 2022, Complainant submitted an Additional Submission for consideration under Supplemental Rule 7, and on November 17th, 2022, Respondent submitted an Additional Submission of its own. Complainant then issued a second additional statement on November 18th, 2022 responding to several of Respondent’s assertion in its November 17th filing.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Sub-Zero, Inc., provides high-end residential kitchen appliances, including refrigerators, freezers, and similar goods. Complainant asserts rights in the SUB-ZERO mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,543,399, registered June 13, 1989). See Compl. Annex B Ex. 3. Respondent’s <subzerorefrigeratorservice.com> domain name is confusingly similar to Complainant’s mark because it contains the SUB-ZERO mark in its entirety, merely removing the hyphen, adding the descriptive terms “refrigerator” and “service”, and appending the generic top-level domain (“gTLD”) “.com”.
Respondent does not have rights or legitimate interests in the <subzerorefrigeratorservice.com> domain name. Respondent is not licensed or authorized to use Complainant’s SUB-ZERO mark and is not commonly known by the Disputed Domain Name. Additionally, Respondent does not use the Disputed Domain Name for any bona fide offering of goods or services or legitimate non-commercial or fair use. Instead, Respondent uses the Disputed Domain Name to pass itself off as Complainant and to offer competing repair services for Complainant’s appliances.
Respondent registered and uses the <subzerorefrigeratorservice.com> domain name in bad faith. Respondent has attempted to attract internet users to its site for commercial gain by creating a likelihood of confusion as to the source or affiliation of its site. Additionally, Respondent has attempted to pass itself off as Complainant. Finally, Respondent had actual and constructive knowledge of Complainant’s rights in the SUB-ZERO mark when it registered the Disputed Domain Name.
B. Respondent
Respondent is Bernell Burton Sr., president of Refrigerator 365, LLC, a business located in Texas, which provides repair services for refrigerators and like appliances for the past twenty years. Respondent has extensive “hands-on” experience with Sub-Zero refrigerators and considers himself an expert. He employs two individuals to assist him in his business. For the past three (3) years, Respondent has been servicing and repairing almost exclusively Sub-Zero refrigerators. Respondent does not “buy, sell or install refrigerators – only services and repairs them.” See Response at paragraph 4.
Respondent registered the <subzerorefrigeratorservice.com> domain name on February 18, 2022, for use by his company. Approximately two (2) weeks after he registered the domain name, the contents of a website were placed online and included a disclaimer at the bottom stating “This site is in no way associated with or endorsed by Sub Zero.”. See WHOIS Information. The <subzerorefrigeratorservice.com> domain name is not confusingly similar to Complainant’s SUB-ZERO mark because Respondent adds the terms “refrigerator” and “service” to describe its business.
Respondent has rights or legitimate interests in the <subzerorefrigeratorservice.com> domain name because Respondent is using the Disputed Domain Name for a bona fide offering of goods or services or legitimate non-commercial or fair use. Respondent is using the Disputed Domain Name to describe the repair services it offers, and he chose the domain name to describe to the public the service that it offers. Respondent has not attempted to take advantage of Complainant’s mark.
Respondent did not register or use the <subzerorefrigeratorservice.com> domain name in bad faith. Respondent has proven it has rights or legitimate interests in the Disputed Domain Name and Complainant has failed to provide evidence to the contrary. Respondent also previously registered the domain name <subzeroservicetexas.com> in December 2020 but has not used the domain name since its registration other than for displaying a message stating “Site Coming Soon”. He intends to let this domain name expire.
C. Additional Submissions
Both the Complainant and Respondent submitted additional statements. However, per the Panel’s decision on Preliminary Issue 1 below, only those contentions relating to Respondent’s assertions of nominative fair use shall be summarized below.
Complainant asserts that Respondent’s use of the Disputed Domain Name is for profit and therefore cannot be characterized as “noncommercial” or “without intent for commercial gain”. That being the case, Respondent cannot prove a legitimate interest in the disputed domain under Policy ¶ 4(c)(iii). In addition, Complainant’s SUB-ZERO Marks are distinctive and not being used by the Respondent in a purely descriptive sense. Therefore, it cannot be categorized as classic fair use. Nor can it be considered nominative fair use under US Trademark law because Respondent is not using Complaint’s SUB-ZERO Marks only in a manner and to the extent necessary to accurately describes products or services offered by Complainant. Instead, Respondent uses the Complainant’s Marks and the domain name to promote and offer services offered by the Respondent and under the trade name “Sub Zero Refrigerator Experts.”
Further, Complainant argues that Respondent’s use cannot be considered “nominative fair use” under the standard set forth in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) because Respondent is not actually an authorized repair service provider for any SUB-ZERO brand appliances, and Respondent uses the disputed domain name to promote repair services for third-party appliance brands and not exclusively for SUB-ZERO brand appliances. Finally, Complainant asserts that the disclaimer used by Respondent is insufficient to insulate it from wrongdoing.
Respondent objects to the Complainant’s Additional Statement based on Complainant’s failure to directly serve a copy of its Additional Statement on the Respondent and for not supplying any new information that it could not have included in its original Amended Complaint. He claims that Complainant “misapplies” nominative fair use to the facts presented in this case and argues that the disclaimer provided is effective.
Complainant submitted a second additional submission which is not summarized herein as discussed below.
Under Forum’s Supplemental Rules, it is within the discretion of the Panel to accept or consider additional unsolicited submission(s). See Supplemental Rule 7.
Panels are generally reluctant to accept additional unsolicited submissions especially when those submissions contain arguments that could have been foreseen and should have been included in the original Complaint. However, Panels can accept additional submissions with respect to new allegations or evidence presented by the Respondent which may not have been able to have been foreseen.
In this case, the Panel will accept both the first Additional Submission by the Complainant and the Response to the first Additional Submission by the Complainant solely as they relate to the issue of nominative fair use and whether the Respondent’s registration and use of the domain name presented a bona fide use of the Complainant’s mark in a manner that violates the Policy. Although Complainant was eventually provided with the identity of the Respondent after filing this case, it may not have been able to foresee that the registrant was in the business of providing refrigerator services especially as the Respondent was not an “authorized” services repair company by the Complainant. Therefore, both the Complainant’s additional submission and the Respondent’s response are both relevant and appropriate to be considered.
The Panel, however, having read the Complainant’s second additional submission, does not believe that it adds any material information for the consideration of this matter.
PRELIMINARY ISSUE 2: USE OF DECLARATIONS IN UDRP DECISIONS
Paragraph 10(d) of the Rules states that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence.” In addition, 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."
Although Panel concedes that under applicable law, the declarations submitted by Complainant may not be admissible in court, neither the Policy nor the Rules require that declarations be “sworn” or submitted under penalty of perjury. That said, the fact that such evidence was submitted unsworn may be considered by the Panel when weighing the evidence. The Panel also notes that unsworn declarations that are supported by other factual evidence, or that are verifiable through publicly available documentation are to be given more weight than an unsworn declaration without such support.
In this case, Respondent requests that the Panel decline to accept as evidence the two declarations and attached exhibits thereto submitted by Complainant because neither of the declarants “have legally bound themselves to what they have stated to the Panel. Rule 10(d). If, however, the Panel does accept their so-called Declarations and attached exhibits, Respondent requests that the Panel give such Declarations and attached exhibits little to no weight.”
The Panel notes that both declarations start out by stating that the declarant “declare[s] that the information contained in this Declaration is, to the best of [their] knowledge, complete and accurate.” The Panel acknowledges that the declarations are not submitted under “penalty of perjury” but are submitted using the same words as the first part of the required certification under Paragraph 3(b)(xiii) of the Rules. In addition, one of the declarations submitted by the Complainant was done so by a legal assistant for the law firm representing the Complainant merely to introduce several publicly available documents.
For all of the above reasons, the Panel will consider both declarations and use its reasonable judgement to afford them the appropriate weight.
1. Complainant has demonstrated rights in the SUB-ZERO trademark and the Respondent’s domain name <subzerorefrigeratorservice.com> is confusingly similar to Complainant’s trademark.
2. Complainant has not met its burden to demonstrate that the Respondent does not have rights or legitimate interests in the domain name.
3. Given that the Complainant has not met its burden to establish the second element of the Policy, the Panel need not consider the issue of whether or not the domain name was registered and used in bad faith under the Policy.
4. Consistent with the intent of the Policy, and previous similarly situated cases, this dispute may, however, present issues of US trademark law that can only be considered in a court of competent jurisdiction.
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 asserts rights in the SUB-ZERO mark through its registrations of the mark with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 1,543,399, registered June 13, 1989, and Reg. No. 3,507,324, registered September 30, 2008). Both have first use dates as far back as 1945. See Compl. Annex B, Exhibit 3. Registering a mark with the USPTO is sufficient to establish rights in a mark. See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”); see also H-D Michigan, LLC v. Private Whois Service, FA 1006001328876 (Forum July 12, 2010) (finding that “Complainant has sufficiently registered its HARLEY-DAVIDSON mark with the USPTO to prove Complainant’s rights in the mark according to Policy ¶ 4(a)(i), regardless of the fact that Respondent lives or operates outside the United States.”). Therefore, the Panel finds Complainant has sufficiently established rights in the SUB-ZERO mark.
Complainant argues Respondent’s <subzerorefrigeratorservice.com> domain name is identical or confusingly similar to Complainant’s SUB-ZERO mark, as it is highly similar in appearance, sight, sound and connotation to Complainant’s mark. The only differences are the removal of the hyphen, and the addition of two generic words, “Refrigerator” and “service”, and the “.com” gTLD. The mere addition of generic terms and gTLD may not be enough to differentiate a disputed domain name from a mark. See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.).
Respondent claims, however, that when comparing the Complainant’s trademark to the Respondent’s domain name, the Panel has to determine whether the nominative fair use doctrine applies. Citing US federal case law, the Respondent argues that the referential use of another’s trademark is permissible where (i) the trademark owner’s product or service cannot be readily identified without using the mark, (ii) the mark is used only so much as necessary for such identification, and (iii) such use does not suggest sponsorship or endorsement by the mark owner.
Respondent’s position may be accurate according to US law, but whether the Respondent is entitled to use the trademark of another party in such a referential manner is not relevant to the first element of the Policy which merely requires the Panel to issue a finding as to whether the Disputed Domain Name is confusingly similar to a mark in which the Complainant has rights. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 1.7:
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
Therefore, the test is a side-by-side comparison of the domain name and the mark to “assess whether the mark is recognizable within the Disputed Domain Name.” Panels also look to the applicable website content to support findings of confusing similarity. Though a more comprehensive discussion of the website content follows below in connection with the second element, in general the content associated with the Disputed Domain Name is related to the products offered by Complainant under the mark.
Given the above, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s SUB-ZERO mark.
In addition to demonstrating that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, the Complainant must demonstrate that the Respondent lacks rights or legitimate interests in the Disputed Domain Name under Policy ¶ 4(a)(ii). While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the “often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. See WIPO Overview 3.0 at Section 2. Therefore, in order to satisfy its prima facie case under the Policy the Complainant must proffer evidence to show that (a) the Respondent is not commonly known by the Disputed Domain Name, nor has it been authorized to use the Complaint’s mark, and (b) the Respondent is not using the Disputed Domain Name for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair uses.
a) Commonly Known by Domain Name.
Complainant argues that Respondent does not have rights or legitimate interests in the Disputed Domain Name because (i) Respondent is not commonly known by the domain name or any derivation of the same; and (ii) Respondent’s use of the Disputed Domain Name does not constitute a bona fide offering of the goods/services, nor does it constitute a non-commercial use or fair use of the domain name. It supports its prima facie case by proffering evidence that the WHOIS record identifies “Contact Privacy Inc. Customer 0163781496” as the Registrant Organization.
The Panel notes, however, that since the implementation of the European General Data Protection Regulation (“GDPR”), many domain name registrars no longer display the actual registrant information in the publicly available WHOIS database. This is not the fault of the domain name registrant and should not be used against the registrant in a UDRP proceeding. That said, after Complainant filed its initial Complaint, on October 6, 2022, Complainant was sent the actual contact information about the Respondent and given five (5) days to amend the Complainant to reflect the true Respondent. Although Complainant did so in the header of its amended complaint and in several other sections, it failed to amend this section of its argument to include the correct contact information. In either case, Complainant has established that the Respondent is not commonly known by the domain name or any derivation of the same.
b) Bona Fide Offerings of Goods / Services
Complainant argues that the Respondent uses the Disputed Domain Name to offer competing services for SUB-ZERO’s residential kitchen appliances and prominently displays the Complainant’s marks in a manner that is misleading and confusing as to (i) the actual origin of Respondent’s services or (ii) the official connection, association, or sponsorship between Respondent’s services and Complainant, to which there is none. In addition, Complainant asserts that the “resolved-to website makes assertions that, in context, reasonably suggest that the repair services offered at the website are provided by Complainant’s trained technicians (e.g. “Our Sub Zero refrigerator experts will quickly solve your issue.”).” It claims therefore that the domain name is not being used for a bona fide offerings of goods or services, nor any legitimate noncommercial or fair uses.
Respondent, however, argues that it does have rights and legitimate interests in the Disputed Domain Name. It argues that its use of the domain name amounts to nominative fair use and the Panel should apply the principles established by the Oki Data Americas Inc. v. ASD, Inc. D2001-0903 (WIPO November 6, 2001) decision. Respondent claims that it has every right to use the Complainant’s mark to describe the actual services its company provides. Under the Oki Data test
a sales or service dealer of trademarked goods (whether authorized or unauthorized) may demonstrate that its domain name use is bona fide where:
1. it is actually offering the goods or services at issue;
2. it uses its website to sell only the trademarked goods or services and not those of a complainant’s competitors or other third-parties;
3. the website accurately discloses the registrant's relationship (or lack thereof) with the trademark owner; and
4. the Respondent has not tried to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Fluke Corporation v. Erwin Bryson / fixmyfluke / Nelson Bryson FA 1988399 (Forum July 6, 2022) (majority opinion citing Oki Data).
Respondent is correct that under Oki Data the first element makes no distinction as to whether a Respondent is an authorized or unauthorized reseller, servicer or repairer of Complainant’s products nor whether its services compete with that of the Complainant. The panel in Yeti Coolers, LLC v. Ryley Lyon / Ditec Solutions LLC, FA 1675141 (Forum July 11, 2016) observed that:
“[t]he Oki Data test was developed in the context of an authorized retailer, and as Complainant points out in its Complaint, Respondent was never authorized to sell Complainant’s products. Nevertheless, the Oki Data standard has repeatedly been applied in the context of unauthorized resellers as well. See, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., D2007-1524 (WIPO Jan. 28, 2008); Volvo Trademark Holding AB v. Peter Lambe, D2001-1292 (WIPO June 8, 2005). Indeed, there is no reason to distinguish between nominative fair use principles whether the user is authorized or unauthorized. Either way, if the use is fair and non-confusing, it should be permitted.”
Neither party disputes that fact that Respondent provides refrigerator repair services nor that it provides such services with respect to Complainant’s products.
With respect to the second element, both Complainant and Respondent provide screenshots of the content associated with the Disputed Domain Name. Respondent claims that it uses this website to promote repair services with respect to only the trademarked SUB-ZERO refrigerators and appliances. Complainant, however, argues that Respondent uses the domain name to provide repair services for other third-party brands and not exclusively in connection with Complainant’s products. To support its claims, Complainant points to Respondent’s response in this matter where Respondent states that it “almost exclusively” services SUB-ZERO refrigerators and that this has only been the case for the past three years. Complainant interprets that statement to imply that Respondent does provide services with respect to other third-party branded kitchen appliances.
Complainant’s argument here misses the mark. The test is not whether the Respondent actually provides services with respect to other brands, but whether the website associated the with the Disputed Domain Name promotes the Respondent’s services with respect to products offered by competitors of the Complainant. Complainant provides no evidence that the website associated with the Disputed Domain Name does in fact promote Respondent’s services with respect to kitchen appliances offered by competing third parties. Panel’s review of the screenshots provided by both Complainant and Respondent demonstrates that the website only promotes its services with respect to Complainant’s branded kitchen appliances.
Taking the elements out of order and addressing element four of the Oki Data factors, Complainant does not argue that Respondent has “cornered the market” in domain names that reflect Complainant’s mark. Other than the Disputed Domain Name, Respondent voluntarily admitted that it registered <subzeroservicetexas.com> in December 2020. However, it claims that it had never used the site and intended to let it expire when the term is up. Even considering the second domain name registration, one cannot reasonably argue that the registration of these two names leave the Complainant without any reasonable alternatives to use in connection with its own services.
Turning back to element three of the Oki Data factors, the website associated with the Disputed Domain Name must accurately disclose the registrant's relationship (or lack thereof) with the trademark owner. Respondent argues that this factor is satisfied by the inclusion of a disclaimer at the bottom of the website where it promotes its services. More specifically, the disclaimer states, “This site is in no way associated with or endorsed by Sub Zero.” Complainant, however, argues that the disclaimer is insufficient to legitimize Respondent’s registration and use of the Disputed Domain Name for several reasons. First, the disclaimer is buried at the bottom of the website in a font so light that it is barely discernable from the black background. It further claims that the disclaimer does not name the Respondent or his company, nor does it say anything about Respondent’s relationship, or lack thereof, with Complainant.
In support of its argument, Complainant cites to two cases that found that the existence of a disclaimer was insufficient to confer rights or a legitimate interest to a domain name. See Retail Royalty Co. v. AK, FA1409001580871 (Forum Oct. 31, 2014) and Sub-Zero, Inc. v. Joseph DelMaestro, FA 2104001940115 (Forum May 19, 2021)(Hereinafter referred to as “the Sub-Zero I case”). The Panel, however, believes that the facts and circumstances in this case distinguish it from those other cases. In the Retail Royalty case, the Registrant is not a reseller nor a service provider for complainant’s goods and services, but rather a site that claims to “review” the products and services of the complainant. In the Sub-Zero I case, although it does involve a reseller of Complainant’s products and services, the Panel did not specifically look at the Oki Data factors in reaching its conclusion. In addition, there was evidence proffered by the Complainant that the Registrant resold and provided services with respect to competing third party products and services at its websites. Finally, in the Sub-Zero I case, the Respondent had been doing business under the trade name “SUB-ZERO REFRIGERATION SERVICE”. In such a case, this Panel understands how the Panel in that case came to the conclusion that the disclaimer was insufficient and that the domain name was registered and used in bad faith.
In Fluke Corporation v. Erwin Bryson / fixmyfluke / Nelson Bryson FA 1988399 (Forum July 6, 2022), the three-member panel’s majority found that:
Although not every notice of non-affiliation will satisfy the Oki Data test, the Majority notes that in past decisions the appearance of such a notice in a manner that does not immediately call attention to itself is not, alone, an indication that it is ineffective, especially after considering all of the circumstances of a given case.
The Fluke Majority then cites a previous decision (coincidentally involving the same Complainant we have in this case) where the Panel found that it was 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. See Sub-Zero, Inc. v. Adrian Loughlin / Factor Appliance, FA 1927129 (Forum Feb. 23, 2021)(Hereinafter, “the Sub-Zero II case”). The Panel in the Sub-Zero II case, involving the domain name <centricsubzerorepair.com>, found “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 of the factors to be considered in the assessment.”
As such, the majority in Fluke made reference to the following elements contained within Section 2.5.2 of the WIPO Overview 3.0 that panels should analyze, including:
(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).
Applying those elements to this case, the Panel finds here that:
(i) Respondent is using the domain name in connection with its actual business of repairing Sub-Zero refrigerators and other SUB-ZERO kitchen appliances. Respondent has been in the business of repairing such goods for more than twenty years, and in particular, has been servicing SUB-ZERO products almost exclusively for the past three years.
(ii) Respondent does reasonably believe in the truthfulness of its references to Complainant’s products and such belief does appear to be reasonable.
(iii) This element will be addressed below.
(iv) There is no evidence that respondent has engaged in a pattern of registering domain names corresponding to marks held by the Complainant or third parties.
(v) There appears to be an actual connection between the Complainant’s trademark in the Disputed Domain Name and the corresponding website content; and
(vi) The domain name registration and use by the Respondent is consistent with a pattern of bona fide activity (whether online or offline).
With respect specifically to element (iii) above, there appears to be an issue of fact as to whether the Respondent has adequately made it clear to Internet users visiting the respondent’s website that it is not operated by, or sponsored by, the Complainant. Although the Respondent does not appear to use any of Complainant’s logos of the Disputed Domain Name, the website does not identify the Respondent as the provider of the repair services. Rather, the website merely states that “Our Sub Zero refrigerator experts will quickly solve your issue” and provides a scheduling application that allows Internet users to book an appointment with Respondent.
Like the majority in Fluke, the Panel believes that this case presents issues upon which panelists may disagree and that there are significant open issues of fact as to whether the website associated with the Disputed Domain Name adequately discloses the registrant’s relationship (or lack thereof) with the Complainant. More specifically, there are issues of fact with whether the disclaimer itself is sufficiently clear and prominent to distinguish its services from that of the Complainant and whether it is clear to Internet users visiting the respondent’s website that it is not operated by the Complainant.
Although the Panel finds that Respondent has successfully established each of the other Oki Data factors (namely, 1, 2 and 4), because there are such complex issues of fact with respect to element 3, it cannot be said definitively that the Respondent has rights or legitimate interests in the Disputed Domain Name. That said, it also cannot be said definitively that the Respondent does not have a right or legitimate interest to the Disputed Domain Name.
In such a case, the Panel is not satisfied that the Complainant has met its burden of proof in establishing that Respondent does not have a right or legitimate interests to the domain name.
Having found that Complainant has not met its burden of establishing that the Respondent does not have a right or legitimate interests in the Disputed Domain Name, it is not necessary to address whether the Disputed Domain name was registered and used in bad faith.
As noted by the Panel in Oki Data and repeated in Fluke, “[i]t is important to keep in mind that the Policy was designed to prevent the extortionate behavior commonly known as cybersquatting. It cannot be used to litigate all disputes involving domain names.” Oki Data Americas, Inc. v. ASD, Inc., supra.
This is not a customary run-of-the-mill cybersquatting case, and based on the limited facts presented, is one that reasonable Panelists may come to different conclusions. The Panel believes that both the Complainant and Respondent have made arguments which necessitate the collection of evidence, fact-based and expert witness testimony, and cross-examination. Unfortunately, those tools are not available under the Policy and are only available in a court of competent jurisdiction.
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 <subzerorefrigeratorservice.com> domain name REMAIN WITH Respondent.
Jeffrey J. Neuman, Panelist
Dated: November 30, 2022
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