Complainant is ZENNI OPTICAL, LLC, an Oregon LLC and L.Tibor Laczay, of California, United States of America, represented by Law Offices of Green & Green, United States of America.
Respondent is Above.com Domain Privacy of Beaumaris, Victoria, Australia / Transure Enterprise Ltd of Tortola, Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <zenni-optical.com> is registered with Above.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2010. On June 3, 2010, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On June 4, 2010, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 7, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on June 7, 2010. The Center verified that the Complaint together with the amendment to the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 1, 2010.
The Center appointed Ross Carson as the sole panelist in this matter on July 12, 2010. 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.
Complainant L Tibor Laczay is the registered owner of United States Registration No. 3389855 for the trademark ZENNI registered on the Principal Register on February 26, 2008 in relation to the goods prescription eyeglasses. The trademark ZENNI has a claimed first use date of Septemebr 30, 2002 and a claimed first use in commerce date of September 30, 2002. The trademark Zenni was filed on June 7, 2005 and was published for opposition on February 28, 2006.
Complainant L Tibor Laczay is also the registered owner of United States Registration No. 3597735 for the trademark ZENNI OPTICAL registered on the Principal Register on March 31, 2009 in relation to the goods : eyeglass cases, eyeglass frames; eyeglass lenses; eyeglasses; reading glasses. The trademark has a claimed first use in commerce date of September 30, 2002. The trademark ZENNI OPTICAL was also registered in relation to the services: on-line retail store services featuring eyeglasses. The trademark has a claimed first use in commerce date of Septemeber 30, 2002 in relation to the services. The trademark ZENNI OPTICAL was filed on June 12, 2008 and published for opposition on January 13, 2009.
Complainant is the owner of the domain name <zennioptical.com> which was created on April 19, 2003.
Complainant is also the owner of the domain name <zenni.com> created on May 2, 2001.
The disputed domain name <zenni-optical.com> was created on September 12, 2007.
Complainant states that as found in section 4 above, Complainant L Tibor Laczay is the owner of trademark registrations in the United States for the trademarks ZENNI registered February 28, 2008 in relation to eyeglasses and eyeglass accessories and ZENNI OPTICAL registered March 31, 2009 in relation to eyeglasses and eyeglass accessories and on-line retail store services featuring eyeglasses.
Complainant submits that Complainant Zenni Optical, LLC, an Oregon USA Limited liability Company is the exclusive licensee of the trademark ZENNI OPTICAL, owns the website <zennioptical.com>, and the business. The other Complainant, L.Tibor Laczay is the Company's Manager who is the owner of a majority share of the Company and licensor of the registered trademark ZENNI OPTICAL. The Complainants have a common legal interest in a relevant right or rights that are affected by Respondent's conduct.
Complainant states that its trademarks have been in wide use since September 30, 2002. Complainant is almost certain (absent an examination of Respondent) that Respondent knew on or before September 12, 2007 when Respondent first registered the disputed domain name of the extensive use by Complainant of its domain name <zennioptical.com>. The current version of Complainant's website was created by Complainant on or about July 19, 2003. Complainant's domain name <zennioptical.com> was registered by Complainant on April 19, 2003, so Complainant's website predates the registration of the Respondent's use of the disputed domain name by over four years and use of Complainant's trademark by five years.
Complainant submits that the disputed domain name <zenni-optical.com > is identical to or confusingly similar to Complainant's trademark ZENNI OPTICAL as the only difference is the introduction of a hyphen between the words “zenni” and “optical” and the addition of “.com”.
Complainant submits that there is no evidence that Respondent has ever used the disputed domain name in connection with any bona fide offering of goods or services. Instead, Respondent is using the disputed domain name for commercial gain by purposefully misleading consumers. Respondent is using the disputed domain name to host a website featuring “pay-per-click” links to third party websites featuring discounted lenses, eyeglass and eyeglass accessories including links to direct competitors of Complainant. This common “pay-per-click” scheme is misleading to consumers who will naturally believe that the disputed domain name points to a site endorsed or otherwise associated with Complainant's website, goods and services. This is especially true given the fact that the website associated with the disputed domain name includes links to third parties in direct competition with Complainant.
Complainant further submits that Respondent has never been commonly known by the domain name and has no rights and/or legitimate interests in any trademark or service mark. There is no available evidence suggesting Respondent has any connection to the eyeglass industry or to any eyeglass related products or services.
Complainant states that as a result of its exclusive use of its ZENNI OPTICAL trademark for over eight years, this mark has come to indicate Zenni Optical, LLC as the source of low price eyeglass goods under the brand ZENNI OPTICAL and no one else has the right to use the mark without its authority. The Complainant has not given Respondent permission to use Complainant's trademark ZENNI OPTICAL and therefore it has no rights or legitimate interests in respect of the disputed domain name. ZENNI OPTICAL is not a general and descriptive combination of words used in accordance with their natural meaning, but they are completely fanciful in the eyeglasses and lenses industry. Respondent is competing with Complainant in an obvious and unfair way.
Complainant states that Respondent is a known cybersquatter named as a respondent in numerous administrative proceedings filed pursuant to the UDRP based on its registration of domain names that included third-party trademarks resulting in a transfer to the named complainants. See for example some recent UDRP decisions: SNCF - Société Nationale des Chemins de Fer Français v. Transure Enterprise Ltd /Above.com Domain Privacy, WIPO Case No. D2010-0513; Spenco Medical Corporation v. Transure Enterprise Ltd, WIPO Case No. D2009-1765; TRS Quality, Inc. v. Above.com Domain Privacy/Transure Enterprise Ltd, WIPO Case No. D2009-0630; Osram GmbH v. Transure Enterprises Ltd., WIPO Case No.. D2008-1032.
Complainant submits upon information and belief, that it is almost inconceivable that Respondent did not know of Complainant's trademark rights in the mark ZENNI OPTICAL at the time it registered the disputed domain name. Complainant states that as a result of its exclusive use of its ZENNI OPTICAL trademark for over eight years, this mark has come to indicate Zenni Optical, LLC as the source of low price eyeglasses goods under the brand ZENNI OPTICAL and no one else has the right to use the mark without its authority. Complainant's promotional online site at <zennioptical.com> actually was, or is likely to have been received or known by Respondent during that period between Complainant's use of its own trademark ZENNI OPTICAL commencing in 2002, to the time Respondent registered the disputed domain name on September 12, 2007. It is due to the long time and publicity of the Zenni Optical website, that the Better Business Bureau (USA) has rated Complainant as “A” for its long service in its industry.
Complainant states that Respondent intentionally attempted to attract for commercial gain, Internet users to Respondent's web site or other on-line location, by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or location or of a very similar product or service, in the same business of product offerings and resources, including to buy eyeglasses on Respondent's web site or location. Respondent is using the disputed domain name <zenni-optical.com> to draw customers looking for Complainant's websites at: <zennioptical.com> and <zenni.com>. Respondent is only using the disputed domain name which is confusingly similar to Complainant's domain name and trademarks to lure customers to Respondent's web site and to misdirect potential customers away from Complainant to Respondent's listings of eyeglass providers. On information and belief, Complainant believes that Respondent receives a payment for every “click-through” of customers to Respondent's listings of eyeglass providers.
Respondent did not reply to Complainant's contentions.
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.
The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant's evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trade mark and secondly that the disputed domain name is identical to or confusingly similar to the trade mark in which Complainant has rights.
Complainant is the owner of United States Trade mark registrations for the trademarks ZENNI and ZENNI OPTICAL. Particulars of the trademark registrations are reviewed in paragraph 4 above. The trademarks were registered respectively on February 28, 2008 and March 31, 2009. The disputed domain name <zenni-optical.com> was registered on September 12, 2007 prior to the registration of either of Complainant's registered trademarks. While the UDRP makes no specific reference to the date on which the owner of the trademark or service mark acquired rights the Panel is of the view that in the absence of extenuating circumstances registered trademark rights should not necessarily be treated as regressive rights.
The UDRP recognizes that a complainant may successfully assert common law or unregistered trademark rights. Common law rights are reviewed in Question 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. The Overview states that in order to establish common law rights a complainant must show that the mark has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.
Complainant submits that as a result of its exclusive use of its ZENNI OPTICAL trademark over eight years, this mark has come to indicate Zenni Optical, LLC as the source of low price eyeglasses goods under the brand ZENNI OPTICAL and no one else has the right to use the mark without its authority. Complainant relies on the content of a Better Business Bureau (“BBB”) report on Zenni Optical, filed as an annex to the Complaint, to support a claim that the Better Business Bureau has recognized Complainant as a grade “A” business due to the long time use and publicity of the Zenni Optical website. The Panels review of the BBB Report shows that the Report is primarily a summary of customer complaint history and the disposition of the complaints by Zenni Optical over the preceding 36 months. The BBB Report includes a statement that BBB does not endorse any product, service or business. Under the heading “Advertising Review” the Report has the statement: “BBB has no information regarding advertising review at this time.”
The BBB Report includes the statement that Zenni Optical, LLC is an additional DBA name for Zenni Optical. The BBB Report includes the statement that Zenni Optical, LLC was incorporated in August 2009 in Oregon. There appears to be an inconsistency between Complainant's position that Zenni Optical, LLC has been the exclusive licensee of the trademark ZENNI OPTICAL for eight years and the statement that Zenni Optical was incorporated in August 2009. The Panel went on-line and reviewed the records of the corporate division of the Oregon Secretary of State whose records disclose that Zenni Optical was registered on May 17, 2007. The company was administratively dissolved in 2008 for failure to pay the annual fee. The company was reinstated some three months later and appears to be in good standing. In a recent UDRP decision in which Zenni Optical, LLC was the sole named Complainant, Zenni Optical, LLC., An Oregon LLC v. DNS Administrator / Cykon Technology Limited, WIPO Case No. D2009-1594, the panel concluded on the basis of evidence before it that a trademark license agreement existed between Zenni Optical, LLC and Tibor Laczay the owner of the trademarks ZENNI and ZENNI Optical finding that “for the purpose of this proceeding, to accept that the license agreement is what it says”. In the earlier case, the complainant Zenni Optical, LLC failed as the disputed domain name <zenni.com> was registered by the respondent before the date of first use of September 30, 2002 of the trademarks ZENNI and ZENNI OPTICAL by the registrant Tibor Laczay. There was no evidence that the respondent was using the disputed domain name <zenni.com>. The Complainant Zenni Optical, LLC in this case states that it is the current owner of domain name <zenni.com>.
As noted in paragraph 4 above the registered trademarks ZENNI and ZENNI OPTICAL are owned by Complainant L. Tibor Laczay. Each of the registrations include a claimed date of first use of September 30, 2002 and a first use in commerce date of September 30, 2002. The domain name <zennioptical.com> was created on April 19, 2003. Complainant trading as “zennioptical.com” commenced online activities offering prescription eyeglasses and associated goods for sale in association with the trademark ZENNI OPTICAL in July 2003 on webpages associated with the domain name <zennioptical.com>. Complainant continues offering prescription eyeglasses and associated goods for sale on the Internet in association with the trademark ZENNI OPTICAL on webpages associated with the domain name <zennioptical.com> at the time that this proceeding commenced. Complainant's webpages offering discount prescription eyeglasses in the years 2003 to 2008 appear on the Internet Archive Wayback Machine. The Better Business Report on the Complainant published in February 2010 shows that Complainant Zenni Optical LLC has 267 employees. Complainant's website <zennioptical.com> featuring the trademark ZENNI OPTICAL is active receiving 241,828 visitors per month.
The Panel finds that Complainant trading as “zennioptical.com” and “Zenni Optical” has actively promoted and sold prescription eyeglasses and related goods in association with the trademark ZENNI OPTICAL on the Internet since at least July 2003 and continues to do so today. Respondent, a professional registrant, registered the disputed domain name <zenni-optical.com> on September 12, 2007 after Complainant had established a reputation among the public for its discount prescription eyeglasses and associated goods through promotion and sale of such goods over the Internet.
The disputed domain name incorporates the entirety of Complainant's ZENNI OPTICAL trademark as its distinctive element. Many UDRP decisions have found that a disputed domain name is confusingly similar to a complainant's trademark where the disputed domain name incorporates the complainant's trademark in its entirety. See eBay, Inc. v. Progressive Life Awareness Network., WIPO Case No. D2001-0068 (finding that the domain name <gayebay.com> incorporated the complainant's mark in its entirety and holding it to be confusingly similar to complainant's EBAY mark); Auxilium Pharmaceuticals, Inc. v. Kumar Patel, NAF Claim No. 642141, (finding <auxilium-pharmaceuticals.com> confusingly similar to complainant's AUXILIUM name and mark); MasterCard International Incorporated v. ZJ, WIPO Case No. D2007-0687 (finding confusing similarity and ordering the transfer of the domain name <platinummastercard.com> to Complainant).
The inclusion of the top level domain descriptor “. com” in the disputed domain name does not affect a finding of confusingly similar. UDRP panels have repeatedly held that the specific top level of the domain name such as “.org,” “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr,, WIPO Case No. D2000-1525 holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant has proven that the disputed domain name comprised of Complainant's trademark ZENNI OPTICAL and the top level domain descriptor “.com” is confusingly similar to Complainant's trademark ZENNI OPTICAL.
Pursuant to paragraph 4(a)(ii) of the Policy Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant's trademark.
Complainant's position is that there is no evidence that Respondent has ever used the disputed domain name in connection with any bona fide offering of goods or services. As of June 2, 2010, Respondent was using the disputed domain name to host a website featuring “pay-per-click” links to third party websites, including links to direct competitors of Complaint and other confusingly similar discount prescription eyeglasses and related goods sites.
Complainant's evidence is that Respondent has never been commonly known by the disputed domain name and has no rights and/or legitimate interests in any trademark or service mark associated with the disputed domain name. There is no available evidence suggesting Respondent has any connection to the industry associated with the manufacture or sale of prescription eyeglasses or to any related products or services.
The Panel finds that Complainant has made a prima facie case that Respondent has no rights to and legitimate interests in the disputed domain name.
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a disputed domain name. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once this showing is made, the burden of proof shifts to respondent to demonstrate its rights or legitimate interests in the disputed domain name.
A respondent is entitled to avail itself of the benefits of paragraph 4(c) of the Policy to demonstrate its rights and interests in the disputed domain name in responding to the Complaint. Respondent did not avail itself of the opportunity to file evidence establishing rights and a legitimate interest in the disputed domain name.
The use by Respondent of a webpage associated with the disputed domain name which incorporates “pay-per-click” links to third party websites, including links to direct competitors of Complainant and other confusingly similar discount prescription eyeglasses and eyeglass related sites, is not a bona fide use of the disputed domain name.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain name recognized under the Policy.
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and used in bad faith.
C.1. Registered in Bad Faith
For the reasons expressed in Paragraph 6. A. above, the Panel finds that Complainant had established common law rights in the trademark ZENNI OPTICAL prior to the adoption of the confusingly similar domain name <zenni-optical.com> by Respondent on September 12, 2007. Respondent is a professional registrant found in numerous UDRP decision to have registered domain names confusingly similar to trademarks of other complainants. Respondent registered the confusingly similar disputed domain name in bad faith to take advantage of Complainant's reputation among prescription eyeglass purchasers of Complainant's ZENNI OPTICAL trademark.
The Panel finds on the basis of the evidence submitted that Respondent registered the disputed domain name in bad faith.
C.2. Domain Name Used in Bad Faith
Respondent is involved in “typosquatting”; the practice of using a domain name which is a misspelling of a well known trademark. Respondent has also been found to be involved in cybersquatting and acting in bad faith in numerous UDRP cases referred to above.
Respondent is using the disputed domain name in bad faith to host a website featuring “pay-per-click” links to third party websites featuring discounted prescription eyeglasses, eyeglass lenses, eyeglass and eyeglass accessories including links to direct competitors of Complainant. This common “pay-per-click” scheme is misleading for consumers who will naturally believe that the domain name points to a site endorsed or otherwise associated with Complainant's trademark ZENNI OPTICAL and Complainant's goods and services relating to discount prescription eyeglasses and related goods and services. This is especially true given the fact that the website associated with the disputed domain name includes links to third parties in direct competition with Complainant.
The Panel finds that Respondent is using the confusingly similar disputed domain name <zenni-optical.com> to attract users to Respondent's website for commercial gain by creating a likelihood of confusion with Complainant's trademark as to source, sponsorship, affiliation or endorsement of Respondent's website constituting bad faith use under Paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <zenni-optical.com> be transferred to the Complainant.
Ross Carson
Sole Panelist
Dated: July 26, 2010