Complainant is Seasonal Comfort Company, Inc., United States of America (“U.S.”), represented by Neugeboren O’Dowd PC, U.S.
Respondent is Irina Inkina, U.S. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2020, naming Henry Wasserman as Respondent. On October 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 6, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 8, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 9, 2020 naming Irina Inkina as Respondent, and arguing that Ms. Inkina appears to be affiliated or associated with Mr. Wasserman. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2020. Notification was sent to Respondent as well as to Mr. Wasserman (although, inadvertently, the Center failed at that time to send this notice to the email address associated with Mr. Wasserman’s counsel because Mr. Wasserman’s counsel’s email address was not indicated in the Complaint; as noted below, this ovesight was later corrected). Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 20, 2020. On November 7, 2020, Complainant submitted a request for leave to file a second amended Complaint in which it sought to include an additional domain name in the dispute. The Center responded on November 20, 2020, and notified Complainant that it would refer the request to the Panel. On December 21, 2020, Respondent was granted an additional five-day period to submit a response due to the administrative oversight with respect to notification to Mr. Wasserman’s counsel. The notice of the additional period for response was sent by email to Respondent, to Mr. Wasserman, and to Mr. Wasserman’s counsel. Respondent did not submit any response or other communication. The Center notified to the Parties that it was proceeding to panel appointment on December 29, 2020. The Center appointed David H. Bernstein as the sole panelist in this matter on December 30, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background Complainant is a Texas company that, since 1948, has offered appliance installation and repair services under the SEASONAL COMFORT trademark in the Greater Houston area. Complainant is the exclusive certified servicer company for SUB-ZERO and WOLF appliances in that geographic market. Complainant owns U.S. Trademark Application Serial Nos. 88/948,079 and 88/948,086 for SEASONAL COMFORT and SEASONAL COMFORT and Design for “installation, maintenance, and repair of appliances.” These applications were filed on June 4, 2020, claiming first use and first use in commerce dating back to 1948. According to the United States Patent and Trademark Office (“USPTO”) website,1 on January 5, 2021, these applications matured to registrations as Nos. 6,237,641 and 6,237,639, respectively. Respondent registered the disputed domain name on August 22, 2019. At the time of the filing of the Complaint and of the amended Complaint, the disputed domain name resolved to a website at which Respondent purported to offer SUB-ZERO-related appliance repair services. At some point after the filing of the amended Complaint, Respondent and/or Mr. Wasserman allegedly removed the content from the website to which the disputed domain name resolves and transferred that content to a new website “www.seasonalcomfort.online,” which still advertises SUB-ZERO-related services. 5. Parties’ Contentions A. Complainant In addition to its ownership of two pending federal trademark applications, Complainant claims common law trademark rights in the term SEASONAL COMFORT by virtue of its “long-term investment of time, effort, and resources to promote the SEASONAL COMFORT trademark and the services offered thereunder.” Complainant further alleges: “The SEASONAL COMFORT trademark is of central importance to Complainant’s business and represent [sic] substantial goodwill achieved over more than seventy years of very successful service operations and exclusive relationships with luxury appliance providers.” Complainant asserts that the disputed domain name is identical to its trademark. Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant alleges that Respondent is not operating a bona fide service appliance repair service, that its website is comprised of text and images scraped from other appliance repair websites, and that any use Respondent is making of the SEASONAL COMFORT name is infringing on its prior trademark rights and therefore cannot be said to be a bona fide offering of goods or services. Complainant asserts that Respondent registered and is using the disputed domain name in bad faith. First, Complainant alleges that Respondent registered and used the disputed domain name to attract Internet users to its website for commercial gain by causing a likelihood of confusion with Complainant’s mark. In particular, Complainant reports that at least two consumers contacted Respondent to arrange service of their appliances, mistakenly believing that they were contacting Complainant. These customers apparently located the telephone number on Respondent’s website and then scheduled appliance repair services, believing that they were scheduling repair services with Complainant. Respondent’s service technicians failed to appear at the appointed time, so the consumers contacted Complainant to complain. In a third incident, another customer booked service on a SUB-ZERO refrigerator by making an appointment through the website to which the disputed domain name resolves, mistakenly believing that the service was booked with Complainant. Two technicians apparently arrived at the customer’s home for a diagnostic visit on a water line, and one of them, who was wearing a “Seasonal Comfort” shirt, returned to replace a light switch, but neither technician contacted the customer to complete the service call. Complainant learned about this incident when the customer contacted Complainant to complain. Second, Complainant asserts that Respondent has engaged in a pattern of registering domain names to prevent the trademark owner from reflecting its trademark in a correspondent domain name. Complainant alleges that, according to the “FastPeopleSearch” website, Respondent appears to share the same address as Mr. Wasserman, who was a defendant in an action filed in The United States District Court for the Central District of California (the “Court”) in 2018 by Sub-Zero, Inc. (“Sub-Zero”), and Wolf Appliance, Inc. (“Wolf”). In that action, Sub-Zero and Wolf alleged that Mr. Wasserman infringed and cybersquatted on the SUB-ZERO and WOLF trademarks, and falsely advertised that his services were authorized or certified by Sub-Zero and Wolf. As part of the resolution of that matter, in 2019, Mr. Wasserman agreed to a consent injunction prohibiting him from using the SUB-ZERO and WOLF trademarks, including but not limited to on websites, and from representing that his services are connected with, associated with, sponsored by, or approved by Sub-Zero or Wolf. In further connection with the resolution of that matter, in August 2020, Mr. Wasserman filed a compliance report with the Court in which he declared under penalty of perjury that he had removed the SUB-ZERO and WOLF trademarks from a number of websites that were some how related to him. Among the listed websites was “www.seasonal-comfort.com”, which corresponds to the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Procedural Ruling As noted above, On November 7, 2020 (four days before the deadline for Respondent’s response), Complainant filed a second amended Complaint, seeking to add a second domain name and related allegations to the proceedings. Complainant stated that it learned the day before that the content previously at the website to which the disputed domain name resolved had been moved to the recently-registered domain name Paragraph 4.12.2 of the WIPO Overview 3.0 provides: “Requests for addition of domain names to a complaint after it has been notified to the respondent and the proceedings have formally commenced would be addressed by the panel on appointment. “Except in limited cases where there is clear evidence of respondent gaming/attempts to frustrate the proceedings (e.g., by the respondent’s registration of additional domain names subsequent to complaint notification), panels are generally reluctant to accept such requests because the addition of further domain names would delay the proceedings (which are expected to take place with due expedition). Moreover, a panel declining such request would not prevent the filing of a separate complaint where such additional domain names may be addressed. “In those cases where panels would grant such a request, the complainant would need to hold relevant trademark rights and the proposed additional domain names would need to be prima facie registered by the same or related respondent. Moreover, in the event a panel would grant such a request, it may also order partial or full re-notification of the proceeding (which may impact case timelines).” Complainant states that the Although Respondent’s and/or Mr. Wasserman’s misconduct in registering (or assisting with the registration of) another domain name that is identical to Complainant’s trademark would be reprehensible if they are behind this new domain name, the evidence submitted is not sufficient to establish that Mr. Klyuev is an alias for Respondent or that his website is necessarily under common control with Respondent’s website. Complainant has not, for example, submitted evidence that Mr. Klyuev shares an address with Respondent (which is among the evidence Complainant has submitted to show that Mr. Wasserman appears to be acting in concert and control with Respondent), or that they share any other contact or identification information. See generally WIPO Overview 3.0, section 4.11.2. The fact that the content of Respondent’s website has been moved to Mr. Klyuev’s website is circumstantial evidence that there is some relationship between Respondent and Mr. Klyuev, but on this record, it is not strong enough evidence to justify adding Mr. Klyuev and his domain name to this pending proceeding given the disruption that such an amendment, after commencement of the proceeding, would cause to this pending matter. In making that determination, the Panel is influenced by the procedural challenges that could occur if the Panel were to authorize the filing of the second amended Complaint. Because Mr. Klyuev might be a new party (if the registrar were to confirm that Mr. Klyuev is in fact the registrant), the Panel would, in fairness to Mr. Klyuev and his due process rights, need to ask the Center to notify the second amended Complaint to Mr. Klyuev, and provide him 20 days to respond. As part of that response, Mr. Klyuev might request a three-member panel, which would require the Center to withdraw the Panel appointment and appoint an entirely new panel. During that process, the Respondent and those acting in concert and participation with her might register yet another new domain name and might transfer the content to yet another website, and the process might need to start all over again. Rather than allow that cycle to continue, the Panel finds it more appropriate to rule on the case before it, providing the Parties with the Panel’s objective views with respect to the disputed domain name, with the hope that the Panel’s guidance will not only resolve this dispute but also help avoid any future disputes between these Parties. For these reasons, the Panel denies Complainant’s request for leave to file a second amended complaint, without prejudice to any new UDRP proceeding Complainant may elect to file against the The domain name is identical to the term SEASONAL COMFORT. What remains for determination is whether Complainant owns trademark rights in that term. Complainant claims trademark rights in the mark SEASONAL COMFORT based through (1) its pending trademark applications, and (2) its common law rights. Generally, a pending trademark application is insufficient to establish trademark rights. WIPO Overview 3.0, section 1.1.4. That is because it is only a registration that is entitled to a presumption of validity under U.S. law. See WIPO Overview 3.0, section 1.2.1. Here, though, at the time the Panel was appointed, the applications had been examined and published, and the opposition had passed without the filing of any opposition or request to extend time to oppose. Moreover, since then, the applications have matured to registrations. As such, the Panel concludes that Complainant has established trademark rights by virtue of its trademark registrations. The Panel also finds that Complainant has established common law trademark rights at least in the Greater Houston area. Complainant’s evidence in support of its claim of common law trademark rights is thin. Some of the allegations have no detail whatsoever (e.g., Complainant has made a “long-term investment of time, effort, and resources to promote the SEASONAL COMFORT trademark and the services offered thereunder”); others are entirely conclusory (e.g., “[t]he SEASONAL COMFORT trademark is of central importance to Complainant’s business and represent [sic] substantial goodwill”). Complainant has, though, asserted that it has used the SEASONAL COMFORT trademark in association with its appliance installation and repair services for more than 70 years, and has provided an example of the use of the mark on its website. Those allegations are sufficient to establish Complainant’s common law trademark rights. The Panel therefore concludes that Complainant has sustained its burden of proving that the disputed domain name is identical to a trademark in which Complainant has rights. B. Rights or Legitimate Interests Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant has submitted evidence establishing that Respondent is not making a bona fide offering or goods or services under the disputed domain name; to the contrary, Respondent appears to have developed its website by scraping other appliance installation and repair service websites, and is infringing Complainant’s trademark rights, at least in the Greater Houston area. There is no evidence in the record to suggest that Respondent has been commonly known by the disputed domain name, and there is no evidence of any legitimate noncommercial or fair use by Respondent; to the contrary, Complainant’s evidence supports a finding that Respondent is using the disputed domain name for commercial gain to misleadingly divert consumers. Respondent was given the opportunity to refute these allegations or come forward with evidence to establish its rights or legitimate interests, but she has not done so. In light of Respondent’s default, the Panel accepts as true the factual assertions in the Complaint, and finds that Complainant’s prima facie showing that Respondent lacks rights or legitimate interests is unrebutted. As such, Complainant has sustained its burden under the second element of the Policy. C. Registered and Used in Bad Faith Complainant asserts that Respondent registered and used the disputed domain name in bad faith because Respondent appears to be affiliated with Mr. Wasserman, and Mr. Wasserman is subject to a consent injunction for his role in abusing the SUB-ZERO and WOLF trademarks on various websites and in various domain names. Although not conclusive, the evidence does support a finding that Mr. Wasserman is associated with Respondent. First, they appear to share the same address. Second, Mr. Wasserman did reference the disputed domain name in the compliance report that he filed with the Court. Although that declaration does not indicate the nature of Mr. Wasserman’s relationship to that domain name, Mr. Wasserman did represent to the Court that he had removed all references to the SUB-ZERO and WOLF trademarks from the website to which the disputed domain name resolved. Based on the evidence submitted in this proceeding, that representation either was false, or Respondent subsequently reposted references to those trademarks on the “www.seasonal-comfort.com” website. To the extent Respondent acted in concert and participation with Mr. Wasserman in doing so, that not only reflects bad faith, but also may constitute contempt of court. In addition, Complainant has submitted evidence that Respondent registered and used the disputed domain name intentionally to attract Internet users to her website for commercial gain based on a likelihood of confusion with Complainant’s trademark. Complainant has provided details of three incidents of actual confusion. These incidents are powerful evidence of Respondent’s bad faith. It is possible that Respondent has an explanation. Maybe Respondent could have explained her relationship with Mr. Wasserman, or her use of the SUB-ZERO and WOLF trademarks on her website, or the circumstances surrounding these three alleged incidents of confusion. But, despite having been given an extended period to respond, Respondent did not provide any explanation. In light of Respondent’s default, the Panel accepts as true the factual assertions in the Complaint, and finds that Complainant has sustained its burden of establishing that Respondent has registered and used the disputed domain name in bad faith. 8. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, David H. Bernstein 1 As the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides at section 4.8, “a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision,” including “accessing trademark registration databases.”
Sole Panelist
Date: January 8, 2021
Full & Egal Universal Law Academy