Sub-Zero, Inc. v. Daniel Ellis / Joel Gonzalez / SEO Repair Shop / Elite Sub-Zero Repair
Claim Number: FA2210002014882
Complainant is Sub-Zero, Inc. (“Complainant”), represented by Matthew D. Witsman of Foley & Lardner LLP, US. Respondent is Daniel Ellis / Joel Gonzalez / SEO Repair Shop / Elite Sub-Zero Repair (“Respondent”), represented by Arnold Anderson Vickery of VICKERY & SHEPHERD, LLP, US.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <subzerorepairsanantonio.com> and <elitesubzerorepairsanantonio.com> (collectively “Domain Names”) registered with GoDaddy.com, LLC and Tucows Domains Inc..
The undersigned certifies that each member has acted independently and impartially and to the best of their knowledge has no known conflict in serving as Panelists in this proceeding.
Richard Hill and Francine Siew Ling Tan as Panelists and Nicholas J.T. Smith, as chair Panelist.
Complainant submitted a Complaint to Forum electronically on October 5, 2022; Forum received payment on October 5, 2022.
On October 6, 2022, GoDaddy.com, LLC and Tucows Domains Inc. confirmed by e-mail to Forum that the <subzerorepairsanantonio.com> and <elitesubzerorepairsanantonio.com> domain names are registered with GoDaddy.com, LLC and Tucows Domains Inc. and that Respondent is the current registrant of the names. GoDaddy.com, LLC and Tucows Domains Inc. have verified that Respondent is bound by their registration agreements 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 October 31, 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@subzerorepairsanantonio.com, postmaster@elitesubzerorepairsanantonio.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 October 28, 2022.
On November 8, 2022, Complainant filed an unsolicited Additional Submission responding to certain matters raised in the Response. As there were matters in the Response, including the raising of various equitable defenses such as laches, that could not have been reasonably anticipated or dealt with in the Complaint, the Panel has exercised its discretion to have regard to the Additional Submission. However, given the conclusions reached by the Panel in this proceeding, the Panel did not consider it was necessary for Respondent to incur the additional cost of preparing and filing a Reply to the Additional Submission.
On November 9, 2022, pursuant to Complainant's request to have the dispute decided by a three-member Panel, Forum appointed Richard Hill, Francine Siew Ling Tan and Nicholas J.T. Smith as Panelists.
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 Names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS/IDENTITY OF THE RESPONDENT
In the instant proceedings, Complainant has alleged that the entities which control the Domain Names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The Response indicates, and this is not contested by Complainant, that while the named registrants of the disputed domain names are Daniel Ellis and Joel Gonzalez / SEO Repair Shop respectively, the beneficial and true holder of each of the domain names is a company known as Elite Sub-Zero Repair. The domain names are commonly owned and controlled by a single Respondent who will be referred to as “Respondent” in this Decision; the Panel will rule on both Domain Names. See The Valspar Corporation v. Zhou Zhiliang / zhouzhiliang / Zhiliang Zhou / Eric Chow / Visspa Ltd., FA100800133934 (Forum Sept. 28, 2010); see also BBY Solutions, Inc. v. White Apple / Dev Kumar, FA1805001787251 (Forum June 20, 2018).
Respondent consents to transfer the <subzerorepairsanantonio.com> domain name to Complainant. However, after the initiation of this proceeding, GoDaddy.com, LLC placed a hold on Respondent’s account and therefore Respondent cannot transfer the <subzerorepairsanantonio.com> domain name while this proceeding is still pending.
In a circumstance such as this, where Respondent has not contested the transfer of one of the subject domain names, but instead agrees to transfer the <subzerorepairsanantonio.com> domain name to Complainant, the Panel is authorized to forego the traditional UDRP analysis for that domain name. This Panel, in recognition of the common request of the parties, in the interests of judicial expedience, and in the absence of any aggravating circumstances, has so decided to forego the traditional UDRP analysis and to order an immediate transfer of the <subzerorepairsanantonio.com> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
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). Respondent’s <subzerorepairsanantonio.com> and <elitesubzerorepairsanantonio.com> domain names are confusingly similar to Complainant’s mark because they contain the SUB-ZERO mark in its entirety, merely removing the hyphen, adding generic and geographic terms, and appending the generic top-level domain (“gTLD”) “.com”. The <subzerorepairsanantonio.com> domain name appends the terms “repair” and “San Antonio”, and the gTLD “.com”. The <elitesubzerorepairsanantonio.com> domain name appends the terms “elite”, “repair”, and “San Antonio”, and the gTLD “.com”.
Respondent does not have rights or legitimate interests in the <subzerorepairsanantonio.com> and <elitesubzerorepairsanantonio.com> domain names. Respondent is not licensed or authorized to use Complainant’s SUB-ZERO mark and is not commonly known by the domain names. Additionally, Respondent does not use the domain names for any bona fide offering of goods or services or legitimate non-commercial or fair use. Instead, Respondent uses the domain names to offer repair services for Complainant’s appliances. Furthermore, Respondent’s disclaimers do not confer on it any rights and legitimate interests in the domain names.
Respondent registered and uses the <subzerorepairsanantonio.com> and <elitesubzerorepairsanantonio.com> domain names in bad faith. Respondent has attempted to disrupt Complainant’s business and attract internet users to its sites for commercial gain by creating a likelihood of confusion as to the source or affiliation of its sites. 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.
B. Respondent
Respondent is ELITE Sub-Zero Repair Company, a family-owned business which provides repair services for SUB-ZERO appliances that are out of warranty. Respondent registered the <subzerorepairsanantonio.com> domain name on September 21, 2010, and the <elitesubzerorepairsanantonio.com> domain name on December 8, 2020. Respondent consents to the transfer of the <subzerorepairsanantonio.com> domain name to Complainant. Respondent disputes the transfer of the <elitesubzerorepairsanantonio.com> domain name.
The <elitesubzerorepairsanantonio.com> domain name (“Domain Name”) is not confusingly similar to Complainant’s mark because it is distinguished by the addition of the terms “elite” and “repair” and there hasn’t been any actual confusion; by law, “In order to hold any person or company liable in a civil action’’ for infringement of a registered trademark, the Lanham Act requires the holder of the mark to prove that the person used the mark in a manner that is “likely to cause confusion, or to cause mistake, or to deceive.”
Respondent has rights or legitimate interests in the Domain Name”. Respondent is commonly known by the Domain Name as it has been in business for over 13 years using a name that corresponds to the Domain Name. Additionally, Respondent is using the Domain Name for a bona fide offering of goods or services or legitimate non-commercial or fair use. Respondent is using the Domain Name to describe the repair services it offers. It does not pass off as Complainant and has not attempted to take advantage of Complainant’s SUB-ZERO mark. Furthermore, Respondent has provided a disclaimer on the Domain Name’s resolving website (“Respondent’s Website”).
Respondent did not register or use the <elitesubzerorepairsanantonio.com> domain name in bad faith. Respondent does not use the Domain Name to pass itself off as Complainant and has taken adequate measures on the Respondent’s Website to ensure consumers are not confused. Complainant has provided no actual evidence that any consumers have been confused between itself, and Respondent (who provides after-warranty repair services for Complainant’s products).
Finally, Respondent argues that the doctrine of laches precludes the relief sought by Complainant.
C. Complainant’s Additional Submission
The Domain Name itself is clearly confusingly similar to the SUB-ZERO mark as it wholly incorporates the mark, save for the removal of the hyphen. Evidence of actual confusion is not required under the Policy. Nor does the presence of a disclaimer provide any relief to Respondent; the critical question is whether the Domain Name is similar to the SUB-ZERO mark, not whether confusion arises upon visiting the Respondent’s Website.
Respondent’s use of the Domain Name is not legitimate or fair under the Policy or United States trademark law. Respondent’s use of the Domain Name does not satisfy the test in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001) (“Oki-Data”), because unlike in Oki-Data, Respondent is not actually an authorized repair service provider for any SUB-ZERO brand appliances and Respondent uses the Domain Name to promote repair services for third-party appliance brands and not exclusively for SUB-ZERO brand appliances.
Respondent is not commonly known by the Domain Name because it has not offered any evidence in support of its assertion. Even if such evidence were provided, Respondent’s use of a name incorporating the SUB-ZERO mark would not be legitimate and hence insufficient to legitimize Respondent’s use and registration of the Domain Name.
Respondent’s claims regarding equitable defenses such as laches or anti-trust law are simply not relevant under the Policy. Respondent’s registration and use of the Domain Name with actual knowledge of Complainant’s mark for the purpose of commercial gain amounts to bad faith registration and use under the Policy.
Complainant has rights in the SUB –ZERO mark predating the registration of the disputed domain names.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent offers out-of-warranty repair services for Complainant’s products; Complainant does not itself offer such services; it authorizes partners to offer repair services.
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 rights in the SUB-ZERO mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g., Reg. No. 1,543,399, registered June 13, 1989). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent appears to argue that the <elitesubzerorepairsanantonio.com> Domain Name is not confusingly similar to the SUB-ZERO mark because there has been no actual confusion and because the addition of the words “elite” and “repair” are important distinctions. These arguments are unfounded. As noted below, addition of generic/descriptive and/or geographic terms does not distinguish a disputed domain name from a mark under the Policy. Further, actual confusion is not a criterion under the first element of the Policy. As stated in 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), the test of confusing similarity under the Policy “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.” Respondent appears to be well acquainted with the Policy, so it should not have raised these unfounded arguments.
The Panel finds that the <elitesubzerorepairsanantonio.com> Domain Name is confusingly similar to the SUB-ZERO mark as it fully incorporates almost the entirety of the SUB-ZERO mark (omitting the hyphen) and adds the generic or descriptive terms “elite”, “repairs” and the geographic term “san antonio” and the “.com” gTLD. The addition of a generic term and geographic descriptor to an almost wholly incorporated trade mark does not distinguish a disputed domain name from a mark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis.”).see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the 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) and 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 holds that Complainant has not made out such a prima facie case and that Respondent is making a bona fide offering of goods and services at the Doman Name.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because Respondent offers and promotes unauthorized refrigerator repair services at Respondent’s Website that are in direct competition with services offered by Complainant’s authorized third parties.
The Domain Name was registered on December 8, 2020. Respondent’s Website contains the title “Elite Sub Zero Repair” and prominently displays the statement “Your #1 choice for San Antonio Sub Zero Repair”. It then contains the statement:
“We would like to welcome you to Elite Sub Zero Repair San Antonio. We are a full-service Sub Zero refrigerator repair company. We work on other Sub Zero items as well such as; stoves, wine refrigerators, ice-makers, and more.”
Further down the website there is the following statement:
“Sub Zero Refrigerator Repair - We only work on Sub Zero refrigerators. Very rarely, we will work on other high-end brands, but our business growth has been built on focus. We focus on out of warranty Sub Zero refrigerators and we focus on long-term customer relationships.”
Finally at the bottom of the website there is the following disclaimer: “Copyright © 2022 Elite Sub Zero Repair | Elite Sub Zero Repair maintains no affiliation with Sub-Zero/Wolf nor are we Factory Certified”. Respondent’s Website contains other content that has not been necessary to summarize for the purpose of this decision.
The content of Respondent’s Website supports the statements made in the Response that Respondent operates an independent, unauthorized repair service for Complainant’s SUB-ZERO refrigerators. The Panel is satisfied that Respondent’s Website clearly identifies itself as independent of Complainant, both by using the disclaimer, and by the nature of the various statements made on Respondent’s Website. There is no evidence to suggest that Respondent does not actually supply repair services for Complainant’s products and Complainant does not assert as such, only noting that Respondent is not an authorized repair service provider for Complainant’s products.
The doctrine of nominative fair use was articulated by the Ninth Circuit Court of Appeals decisions in New Kids on the Block v. News American Publishing, Inc., 971 F.2d. 302 (9th Cr. 1992), and Toyota Motor Sales, U.S.A., Inc .v. Tabari, 610 F.3d. 1171 (9th Cir. 2010). In Tabari, the plaintiffs were auto brokers who registered and used the domain names <buy-a-lexus.com> and <buyorleaselexus.com.> The court in this case held that “momentary uncertainty” does not preclude the nominative use of another’s mark in a domain name, provided that a truthful use is being made to describe the domain name registrant’s business.” 610 F.2. at 1179.
These principles have been applied by UDRP panels. The leading decision is Oki-Data, referred to in 2.8 of the cited WIPO Jurisprudential Overview 3.0, in which the respondent was a reseller of the complainant’s OKIDATA products. The respondent registered and used the domain name <okidataparts.com> in connection with that business. The panel in that case concluded that this use could be a bona fide offering of goods or services within the meaning of the Policy if the following conditions were satisfied:
The respondent must actually be offering the goods or services at issue,
The respondent must use the site to sell only the trademarked goods (otherwise there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods),
The site itself must accurately disclose the respondent’s relationship with the trademark owner, and
The respondent must not try to ‘corner the market’ in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
Other panels have concluded that applying the nominative fair use doctrine could also be appropriate in cases other than those involving a reseller of branded parts, provided that the respondent operated a business genuinely revolving around the trademark owner’s goods or services, see National Association for Stock Car Auto Racing, Inc. v. Racing Connection/The Racin’ Connection, Inc., D2007-1524 (WIPO January 28, 2008) and YETI Coolers, LLC v. Ryley Lyon / Ditec Solutions LLC. FA 1675141 (Forum July 11, 2016). The Oki Data test has also been applied for registrants offering repair services, see General Motors LLC v. Flashcraft, Inc DBA Cad Company D2011-2117 (WIPO January 30, 2012).
In the present case Respondent is offering SUB-ZERO repair services in San-Antonio. Complainant submits that the Oki Data conditions cannot be satisfied as unlike in Oki Data, Respondent is not an authorized repair-service provider. This is an incorrect reading of the Policy and the case law. The Oki Data standard has repeatedly been applied in the context of unauthorized resellers/repair companies. See 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); and YETI Coolers, LLC v. Ryley Lyon / Ditec Solutions LLC. FA 1675141 (Forum July 11, 2016). 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. The Panel notes in particular the recent decision of Sub-Zero, Inc. v. Adrian Loughlin/Factor Appliance, FA2101001927129, involving Complainant, in which the then respondent was able to satisfy the Oki Data test notwithstanding it was not an authorized repair-service provider of Complainant.
The Panel finds that the first, third and fourth factors in the Oki Data test are clearly satisfied by Respondent. Respondent is offering repair services for SUB-ZERO refrigerators in San Antonio; the Respondent’s Website clearly discloses Respondent’s (lack of) relationship with Complainant and nothing on the website suggests an affiliation beyond the fact that Respondent repairs Complainant’s products. While Respondent has registered two domain names incorporating Complainant’s SUB-ZERO mark, Respondent has consented to the transfer of one of these names and there is nothing in the record that suggests a broad approach by Respondent of deliberately trying to corner the market in domain names to deprive Complainant of the opportunity to reflect its mark in a domain name.
It remains necessary to consider the second factor. Complainant submits that because Respondent’s Website states “We only work on Sub Zero refrigerators. Very rarely, we will work on other high-end brands, but our business growth has been built on focus” that the second Oki Data factor is not satisfied because Respondent is using the Domain Name to promote repair services for third party appliance brands and not exclusively for Complainant appliances.
The exact wording of the second factor in Oki Data is “Must use the site to sell only the trademarked goods, otherwise it could be using the trademark to bait Internet users and then switch them to other goods”. In YETI Coolers, LLC v. Ryley Lyon / Ditec Solutions LLC. FA 1675141 (Forum July 11, 2016), the panel (being the same panel as in Oki Data) provided more context in respect of the second factor below (emphases added):
“With respect to the second factor, Complainant alleges that Respondent’s handles are not designed exclusively for use on YETI cups, but rather can also be used on other brands of cups (such as Rtic, Sic Cup and more). That, though, does not implicate the policy underlying this factor, which is to avoid “bait and switch” scams. Here, the nature of the handles is that they can be used for other brands of cups and tumblers as well. In that context, Respondent has a legitimate interest in using the term “YETI" in the Disputed Domain Names in order to communicate that the handles can be used as an accessory for YETI (and other brands) cups. Cf. Nikon, Inc. v. Technilab, D2000-1774 (WIPO Feb. 26, 2001) (holding use of Nikon-related domain names to sell Nikon and competitors’ cameras was not a legitimate use). Complainant has not established that Respondent’s use of the Disputed Domain Names constitutes a bait and switch or that it otherwise increases the probability that, having been drawn to the Disputed Domain Names at issue by the Complainant’s trademark, consumers will be deceived into purchasing alternative competing products or services.”
In TT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc. D2008-0936 (WIPO November 7, 2008) the Panel took a similar approach as set out below in considering the second factor, noting that it must be interpreted in line with the underlying policy behind the requirement, being to avoid bait and switch scams:
The more problematic of the Oki Data criteria, as applied to this proceeding, is the requirement that the Domain Names be used to sell only the trademarked goods. The Respondents' website includes a link to the Respondents' former Detroit Switch website, on which the Respondent DPI resold “new surplus” Detroit Switches. The link is not prominent, however; it is listed on a “Link Directory” page within the Respondents' website. Moreover, the Complainants have not demonstrated that Detroit Switches are products that compete with the ITT Barton devices or, indeed, with any products now sold by the Complainants. Thus, the Complainants have not established the risk of “bait and switch” tactics. The Respondents' use of the Domain Names for the Respondents' website is consistent with their stated purpose of reselling ITT Barton devices and related testing and warranty services. The single link to the Respondents' former Detroit Switch website is, in the Panel's view, insufficient to change the character of the Respondents' website as one concerned overwhelmingly with surplus ITT Barton products. This reflects a legitimate reseller's interest under the Oki Data test. See Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481 (“Clearly designated links to websites, under which other brands or products are offered, cannot be considered as the offering of other brands or products under the Domain Names, provided they take up only a minor part of the site and the overall impression of that site remains that of a site offering corresponding goods.”)
It is necessary to consider the underlying policy when deciding whether the second factor is satisfied, namely to avoid “bait and switch” scams (for example if Respondent was using Complainant’s trade mark to advertise a general refrigerator repair services at Respondent’s Website). Respondent’s Website promotes Respondent’s business offering specialist repair services for SUB-ZERO products. It does not refer to any other brand of refrigerator company nor does it link to any other websites where Respondent advertises expertise in repairing any refrigerator brands other than those of Complainant. While Respondent, as stated on Respondent’s Website (not highlighted in any way) may rarely work on other high-end brands, this in no way changes the “character” of the Respondents' Website and this is not a case where the Domain Name is used for a “bait and switch” exercise. Respondent’s use of the Domain Name for the Respondent’s Website is consistent with the stated purpose which is to advertise that Respondent offers specialized repair services for Complainant’s appliances in the San Antonio area.
It is also worth noting that Complainant does not directly offer out-of-warranty repair services, it only authorizes third parties to offer such services. Thus, Respondent does not compete directly with Complainant, it only competes with Complainant’s authorized repair services, who, according to the evidence in the record, do not use domain names containing the SUB-ZERO mark.
In summary it appears that Respondent operates a legitimate business repairing Complainant’s appliances and there is no evidence that that Respondent is seeking to take advantage of any similarity between the Domain Name and SUB-ZERO Mark beyond that which arises from a truthful use of the SUB-ZERO Mark to describe the services that Respondent’s business provides.
The Panel notes that the present proceeding raises complex legal and factual issues that seem ill-suited to resolution through the Policy. Such proceedings are better resolved in a national court of law which has the benefit of a full range of evidentiary tools such as discovery, witness testimony and cross-examination. The Policy is designed to deal with clear cases of cybersquatting, see IAFT International LLC v. MANAGING DIRECTOR / EUTOPIAN HOLDINGS, FA 1577032 (Forum Oct. 9, 2014) (“The objectives of the Policy are limited -- designed to obviate the need for time-consuming and costly litigation in relatively clear cases of cyber-squatting -- and not intended to thwart every sort of questionable business practice imaginable). Respondent here meets the Oki Data criteria and Complainant has failed to demonstrate that Respondent lacks rights or a legitimate interest in the Domain Name.
The Panel finds Complainant has not satisfied Policy ¶ 4(a)(ii).
In light of the Panel’s dispositive finding on the issue of rights or legitimate interests, the Panel need not address the question of registration and use in bad faith.
With respect to the <subzerorepairsanantonio.com> domain name:
As the remedy of the Complainant and the request of the Respondent both sought to transfer the Domain Name from the Respondent to the Complainant, the Panel concludes that such relief shall be GRANTED.
Accordingly, it is Ordered that the <subzerorepairsanantonio.com> domain name be TRANSFERRED from Respondent to Complainant.
With respect to the <elitesubzerorepairsanantonio.com> domain name:
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 <elitesubzerorepairsanantonio.com> domain name REMAIN WITH Respondent.
Richard Hill and Francine Siew Ling Tan as Panelists and Nicholas J.T. Smith as Chair Panelist
Dated: November 15, 2022
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