DECISION

 

Sub-Zero, Inc. v. Alina Kartunova / ThisIsRich.com

Claim Number: FA2407002106542

 

PARTIES

Complainant is Sub-Zero, Inc. ("Complainant"), represented by Bianca L. Ascolese of Foley & Lardner LLP, Wisconsin, USA. Respondent is Alina Kartunova / ThisIsRich.com ("Respondent"), represented by Eric Eisenberg of Law Office of Eric Eisenberg, New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <repairsubzeronyc.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Gerald M. Levine as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on July 16, 2024; Forum received payment on July 16, 2024.

 

On July 16, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <repairsubzeronyc.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On July 18, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 2024 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@repairsubzeronyc.com. Also on July 18, 2024, 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 August 12, 2024.

 

On August 13, 2024 pursuant to the Parties' requests to have the dispute decided by a single-member Panel, Forum appointed Gerald M. Levine as Panelist.

 

On August 14, 2024, the Complainant submitted an unsolicited Additional Submission under Forum Supplemental Rule 7. On August 15, 2024 the Panel issued a Procedural Order to the Respondent requesting it to respond to specific contentions in the Complainant's Additional Submission, and on August 19, 2024 the Respondent submitted its response. Complainant submitted a Second Additional Submission on August 22, 2024. The Panel issued a Second Procedural Order to Respondent requesting it to respond to a specific contention which it did on August 26, 2024. Complainant submitted a Third Additional Submission on August 26, 2024. 

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Sub-Zero is an industry leader in the sale of high-end residential kitchen appliances, including refrigerators, freezers, wine storage systems, etc., that are marketed and sold throughout the United States and the world under the SUB-ZERO mark and logo. It also provides replacement parts and installation, maintenance, and repair services for its refrigerators, freezers, and other products.

 

It states that it has used SUB-ZERO as a trademark continuously and exclusively since at least as early as 1945 in connection with Sub-Zero's various high-end residential kitchen appliances and related repair, installation, and maintenance services. The disputed domain name <repairsubzeronyc.com> is not meaningfully different from the SUB-ZERO Marks because it incorporates the almost identical SUB-ZERO Mark with the removal of the hyphen between SUB and ZERO and adds the generic and highly descriptive term "repair," the geographic term "nyc" and the generic top-level domain extension ".com." The disputed domain name was created on February 17, 2024.

 

Respondent's use of <repairsubzeronyc.com> to ostensibly offer repair services of the Complainant's high end products is likely to mislead Internet visitors into believing, erroneously, that Respondent and the Subject Domain Name are actually Complainant, or are affiliated with, sponsored, approved, authorized, or certified by, or otherwise officially connected with Complainant and the SUB-ZERO Marks, and will divert Internet visitors from Complainant's own website and business as well as Complainant's actual authorized repair service providers' websites and business to Respondent's website, thereby irreparably damaging Complainant's reputation and the goodwill in the SUB-ZERO Marks that Complainant has spent numerous years developing.

 

B. Respondent

Respondent contends that its domain name, <repairsubzeronyc.com>, would be understood by relevant consumers to refer Respondent's lawful activities, protected under the nominative fair use doctrine, namely, repairing Complainant's SUB-ZERO branded appliances in New York City. Such consumers would already have likely obtained Complainant's high-end SUB-ZERO branded appliances, and thus would already be familiar with Complainant's website, www.subzero-wolf.com, at which both SUB-ZERO (and WOLF) branded appliances and support/repair of these appliances are prominently offered.

 

The Respondent states further that prior to any notice of this dispute, first received on July 18, 2024 via a Written Notice from Forum, Respondent prepared to use, and used, the <repairsubzeronyc.com> domain name and the corresponding name Repair Subzero NYC, in connection with a bona fide offering of (1) repair services for Complainant's branded appliances, and (2) authentic factory certified replacement parts from Complainant provided along with those repair services when necessary for the repair.

 

Finally, it states that Respondent's activities under the domain name <repairsubzeronyc.com> and its corresponding wording Repair Subzero NYC constitute nominative fair use, for example in that they truthfully refer to Respondent providing repair services on Complainant's Sub[-]zero branded appliances in New York City. It concludes by stating that it is not clear how else Respondent could describe these services.

 

ADDITIONAL SUBMISSIONS

Although unsolicited supplemental filings are generally discouraged, panels have generally accepted them when a party is surprised by contentions in its adversary's pleading that it could not possibly have anticipated. See WIPO Overview 3.0, Secs. 4.6 and 4.7: "fairness calls for an opportunity for a party to respond to certain (unforeseeable) allegations or submissions by the other party."

The following summaries offer a fair view of the parties' contentions. See Akamai Technologies, Inc. v. Cloudflare Hostmaster / Cloudflare, Inc., FA 1979588 (Forum Mar. 9, 2022).

A.       FIRST ADDITIONAL SUBMISSION

Complainant

The Complainant states that the person identified in the caption of the response is entirely different from the person identified by the registrar in the Whois directory. The name verified by the registrar is "Alina Kartunova / ThisIsRich.com." The caption in the response identifies the Respondent as "Repair Subzero NYC" which has a different address, a different phone number, and a different email address. Complainant states further, Respondent's contention that it is well or commonly known by the Subject Domain Name should be completely disregarded. Complainant argues that this blatant inconsistency is a transparent attempt by the Respondent to fabricate a connection to the Subject Domain Name. There simply is no evidence that Alina Kartunova /ThisisRich.com, is an alias for "Repair SubZero NYC." Indeed, Respondent's use of the Subject Domain Name is also fraudulent connecting it to a serial domain name cybersquatter, Henry Wasserman.

 

Finally, Complainant contends that the Respondent ineffectively attempts to argue that the use of the Subject Domain Name is nominative fair use under UDRP Policy ¶ 4(c)(iii), which provides that a respondent's rights or legitimate interests can be established by showing that respondent is "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." Respondent's use of the Subject Domain Name, without a disclaimer or non-affiliation language, is for profit, as Respondent acknowledges, and thus cannot be characterized as "noncommercial" or "without intent for commercial gain." As such, Respondent cannot rely on UDRP Policy ¶ 4(c)(iii) to establish legitimate rights or interests.

 

Respondent

Respondent denies all of these contentions. It states that it is a small business, operating as a two-person partnership (neither of whom is Henry Wasserman, the alleged serial domain name registrant identified by Complainant) of limited scope and geographic reach. Respondent states that it had a limited budget for the project and now understands that the web-developer, who is not a "high-end" web-developer who did not have a massive budget for the project, may not have taken the time and expense to attend in detail to every formality and aspect of domain name registration and website design. Respondent now understands that the web-developer inserted names and a family residential address that were associated with the web-developer's family's account, and may have used "stock" imagery found on the Internet pertaining to similar refrigerator /freezer (and in particular "subzero") repair services and perhaps other "stock" templates and/or material, rather than focusing on custom, from-scratch image and website design work. However, in registering the domain name, Respondent nonetheless understands that the local web-developer was acting for Respondent's benefit and so that Respondent would own the domain name.

 

The Respondent claims that "'Repair Subzero NYC' is a legal d/b/a, all prior to the institution of this action" and that its disclaimer of association with Complainant clearly states properly gives notice of its independent status.

 

B.       SECOND ADDITIONAL SUBMISSION

Complainant:

The Complainant states that the substituted Respondent added the disclaimer of non-affiliation to the website resolving from <repairsubzeronyc.com> only after the UDRP Complaint was filed and before service of the Amended Complaint, in an apparent attempt to correct the infringing activity, falsely claiming that the website associated with the Subject Domain Name adequately disclosed the lack or relationship between the parties, in an attempt mislead the Panel. It states further that Respondent heavy reliance on post-initiation of this proceeding is clear proof of bad faith.

 

Further as additional evidence of bad faith, there are numerous other examples of similarities and ties between the Subject Domain Name and other domains the Complainant, and its sister company, Wolf Appliance, Inc., have filed through Forum, including <subzerocare.support> and <wolfappliance.support>. All of the websites linked to Wasserman, including the Subject Domain Name, falsely state or suggest that their owners are "authorized," "certified," or "factory trained" by Sub-Zero or otherwise falsely suggest a connection or affiliation between the websites' owners and Complainant.

 

Respondent

In response to the second Rule 12 Order, the Respondent Repair SubZero states that it is hard to imagine how the domain name <repairsubzeronyc.com> could be better suited to its communicative message, that Respondent repairs Complainant's products in New York City. Moreover, as further proof Respondent filed a declaration of Leonid Vaynberg attaching a Certificate of Assumed Name dated February 29, 2024. The Certificate reflected that APPLIANCEREPAIRNYC "will be doing business under the assumed name of REPAIRSUBZERNYC".

 

In regard to this contention, the Panel notes that the domain name was registered on February 17, 2024, but the Certificate of Assumed Name postdated the filing with the NYS Secretary of State, thus Respondent was not commonly known by that name upon registration of <repairsubzeronyc.com>. 

 

C.       THIRD ADDITIONAL SUBMISSION

Complainant

Leonid Vaynberg having been disclosed as the principal of Repair SubZero NYC, the Complainant states that it previously entered into a settlement agreement with him in connection with <subzerorepairnewyork.com> on June 16, 2021(UDRP commenced and withdrawn). This agreement was negotiated by Attorney Eisenberg (Respondent's representative in this proceeding). Section 1.2 of the Settlement Agreement prohibits Mr. Vaynberg from using any marks incorporating SUB ZERO, SUB-ZERO, OR SUBZERO or similar variants, in connection with the sale, rendering, promotion, advertising and/or offering of any kitchen or cooking appliance-related products or services in connection with any business names, trade names, trademarks, service marks, domain names, or websites relating to kitchen or cooking appliances.

 

Respondent

The Respondent did not submit any further statement challenging Complainant's Third Additional Statement.

 

In regard to the Third Additional Statement which was supported by a redacted copy of the June 16, 2021 Settlement Agreement, the Panel notes that attorney Eisenberg, the Respondent's representative in this proceeding, falsely certified that "the information contained in this Response is to the best of Respondent's knowledge complete and accurate" Rule 5(viii). He has wasted every one's time by defending the indefensible registration of a domain name that in a settlement agreement that he negotiated was prohibited.

 

FINDINGS

 

1.       The Complainant owns a mark in the term SUB-ZERO duly registered by the USPTO Registration No. 1542299 in 1989 that predates the registration of <repairsubzeronyc.com> by many decades.

2.       The Respondent lacks rights or legitimate interests in <repairsubzeronyc.com>, and

3.       The Respondent registered and is using <repairsubzeronyc.com> in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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:

 

(i)        the domain name registered by Respondent is identical or confusingly   similar to a trademark or service mark in which Complainant has rights; and

(ii)       Respondent has no rights or legitimate interests in respect of the domain name; and

(iii)       the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

To succeed under the first element, a complainant must pass a two-part test by first establishing that it has rights, and thereafter that the disputed domain name is either identical or confusingly similar to the mark. The first element of a UDRP complaint "serves essentially as a standing requirement." Here, the Complainant has established that it has rights in the word mark SUB-ZERO duly registered by the USPTO Reg. No. 1543399 in 1989. See WIPO Overview 3.0, Sec. 1.2.1: "Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case."

The second part of the test calls for a side-by-side comparison of Complainant's mark with the Disputed Domain Name. It entails "a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name." See WIPO Overview 3.0 at section 1.7: "While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing."

Here, <repairsubzeronyc.com> incorporates the Complainant's mark sandwiched between a descriptive and geographic designation omitting only the dash between SUB and ZERO. It is both virtually identical and confusingly similar to Complainant's mark.

Accordingly, the Complainant's satisfies the first element of the Policy. 

Rights or Legitimate Interests

To establish the second of the three elements, the Complainant must first demonstrate that Respondent lacks rights and legitimate interests in the Disputed Domain Name. See Advanced International Marketing Corporation v. AA-1 Corp,. FA 780200 (Forum Sept. 25, 2006) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy paragraph 4(a)(ii). 

Recognizing that proof for establishing this element is under the Respondent's control, the Complainant may satisfy this burden by offering a prima facie case based on such evidence as there is, which in this case is substantial, thus shifting the burden to the Respondent to produce evidence to overcome the presumption that it lacks rights or legitimate interests in the disputed domain name.

In response (including its responses to the Procedural Orders but noting that it did not respond to the Third Additional Submission), Respondent argues that it has a right or legitimate interest in <repairsubzeronyc.com> in that it incorporates the Complainant's mark nominatively to offer repair services to residents of New York City for the Complainant's refrigerator  and other products. It raises the question as to whether Respondent qualifies for the defense of nominative fair use, and what evidence must be offered to rebut Complainant's presumptive evidence that it lacks rights or legitimate interests in <repairsubzeronyc.com>.

 

In this case, the Complainant argues that the Respondent is not an authorized servicer of its refrigeration or other products to which the Respondent counters that neither does it have to be to prevail on the theory of nominative fair use. Indeed, the Complainant has suffered dismissals based on the same faulty assertion. See Sub-Zero, Inc. v. Daniel Ellis / Joel Gonzalez / SEO Repair Shop / Elite Sub-Zero Repair, FA 2014882 (Forum Nov. 15, 2022) (<elitesubzerorepair sanantonio.com>; Sub-Zero, Inc. v. Adrian Loughlin / Factor Appliance, FA 1927129 (Forum Feb. 23, 2021) (centricsubzerorepair.com>). 

 

However, while the Panel can agree with Respondent in principle, and there are many UDRP cases attesting to lawful use of incorporating a mark in a domain name over a wide range of use, the defense only applies if the evidence supports the defense. See Textron Innovations Inc. v. Robert Vondersaar, FA 2106243 (Forum Aug. 20, 2024). Thus, simply alleging that the incorporation of the Complainant's mark for nominative use supports rights or legitimate interests does not by itself qualify for the defense. If it did, then all respondents need do is make the allegation and rest on their website contents as proof of its rights or legitimate interests. But this is not the law applied under the UDRP. 

In this case, though, there is the additional impediment to rights or legitimate interests. Respondent's rebuttal is undercut by the undisputed evidence that its principal entered into a Settlement Agreement in 2021 in connection with <subzerorepairnewyorkcity.com> that prohibited it from acquiring any domain names or advertising itself with any variant of the Complainant's mark. Thus, its acquisition of an almost identical domain name, <repairsubzeronyc.com> on February 17, 2024 undermined its right to hold it. If it had no right it had no legitimate interest in the domain name.

Accordingly, the Complainant satisfies the second element of the Policy.

 

Registration and Use in Bad Faith

If a respondent is contractually prohibited from acquiring domain names or advertising itself with any variant of a complainant's mark, it follows that its registration and purported use to offer repair services incorporating Complainant's mark is itself in bad faith both as to registration and use.  

 

Accordingly, the Complainant satisfies the third element of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <repairsubzeronyc.com> domain name be TRANSFERRED from Respondent to Complainant. 

 

 

 

Gerald M. Levine, Panelist

Dated: August 29, 2024