WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Taojing International, Limited and Zenni Optical, Inc. v. Damian Otolewski

Case No. D2017-2135

1. The Parties

The Complainants are Taojing International, Limited of Kowloon, Hong Kong, China and Zenni Optical, Inc. of Novah, California, United States of America (hereafter the “Complainant”), represented by Green & Green Law Offices, United States of America.

The Respondent is Damian Otolewski of Lodz, Poland.

2. The Domain Name and Registrar

The disputed domain name <zenni-optic.com> (“Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2017. On November 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 2, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 8, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 8, 2017.

The Center verified that the amended Complaint (hereafter “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 the Respondent of the Complaint, and the proceedings commenced on November 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2017.

The Center appointed Nicholas Smith as the sole panelist in this matter on December 18, 2017. 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

The Complainant is involved in the retail of eyeglasses and various accessories through its online website (“Complainant’s Website”) at “www.zenni.com” and “www.zennioptical.com”.

The Complainant is the owner of trade mark registrations in various jurisdictions for the word “zenni” (the “ZENNI Mark”), including a registration in the United States from February 26, 2008 (registration number 3389855) for “Prescription eyeglasses”. The Complainant is also the owner of trade mark registrations in various jurisdictions for the words “zenni optical” (the “ZENNI OPTICAL Mark”), including a registration in the United States from March 31, 2009 (registration number 3597735) for “Eyeglass cases; Eyeglass frames; Eyeglass lenses; Eyeglasses; Reading eyeglasses”.

The Domain Name <zenni-optic.com> was registered on July 31, 2017. The Domain Name is presently inactive however prior to the commencement of this dispute resolved to an Internet site (“the Respondent’s Website”) which appeared to be a near-exact copy of large parts of the Complainant’s Website right down to the products offered and prices for which they were offered. Hence the Respondent’s Website offers for sale eyeglasses that are either the Complainant’s products or counterfeit Zenni products.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is identical or confusingly similar to the Complainant’s ZENNI and ZENNI OPTICAL Marks;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

The Complainant is the owner of the ZENNI and ZENNI OPTICAL Marks, having registered the ZENNI and ZENNI OPTICAL Marks internationally and in the United States. The Domain Name consists of the ZENNI Mark, a dash, and the word “optic” which is a variant with a similar meaning to the word “optical”.

There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name, nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is using the Domain Name to operate the Respondent’s Website where the Respondent is making an illicit offering of eyeglasses from a website that impersonates the Complainant. Furthermore, the Respondent may be using the Domain Name to gather user and customer information from potential customers of the Complainant.

The Domain Name was registered and is being used in bad faith. By using the Domain Name for website whose content has been copied from the Complainant’s Website, the Respondent is preventing the Complainant from using the Domain Name, is disrupting the business of the Complainant and is intentionally attempting to attract for commercial gain, Internet users to the Respondent’s Website, by creating a likelihood of confusion with the Complainant’s ZENNI and ZENNI OPTICAL Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Consolidation of Multiple Complainants

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides at section 4.11.1, in respect of the issue “Multiple complainants filing against a single respondent” that:

“Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP 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.

In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.”

The present proceeding involves two Complainants bringing a single complainant against a common Respondent. The Complaint makes a request for consolidation and bears the onus of establishing that such a consolidation is justified.

The Panel is satisfied, based on the material filed, that the Complainants have a specific common grievance against the Respondent, in that the Complainants have a common legal interest as Complainant Taojing International Limited is the owner of the relevant Marks and licenses such marks to the Complainant Zenni Optical, Inc.

The Panel has considered whether it would be equitable and procedurally efficient to permit the consolidation. In the present case it is no doubt procedurally efficient.

The Panel finds that it is equitable to grant the Complainants’ request for consolidation.

B. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the ZENNI and ZENNI OPTICAL Marks, having registrations for the ZENNI and ZENNI OPTICAL Marks as trade marks in the United States.

Discounting the generic Top-Level Domain “.com”, the Domain Name consists of the ZENNI Mark, a dash, and the descriptive term “optic”, a word that relates to eye or vision often used in the sale of eyeglasses. The addition of the term “-optic” does not prevent a finding of confusing similarity. An individual viewing the Domain Name may be confused into thinking that the Domain Name refers to a website in which it is possible to purchase the Complainant’s optical products. The Panel finds that the Domain Name is confusingly similar to the Complainant’s ZENNI Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

C. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial 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.”

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the ZENNI and ZENNI OPTICAL Marks or a mark similar to the ZENNI and ZENNI OPTICAL Marks. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate non-commercial use.

The Respondent has used the Domain Name to operate a website that has been entirely copied from the Complainant’s Website and hence uses the ZENNI and ZENNI OPTICAL Marks to sell eyeglasses that purport to be legitimate ZENNI products. Given the lack of any connection between the Complainant and the Respondent, and the dishonest manner in which the Respondent’s Website impersonates the Complainant’s Website, it is highly likely that the eyeglasses sold by the Respondent are not genuine Zenni products. If this is the case the Respondent’s use of the Domain Name does not grant it rights or legitimate interests since it is using the Complainant’s ZENNI and ZENNI OPTICAL Marks for a site selling counterfeit products.

Even if the Respondent is offering genuine Zenni products from the Respondent’s Website, such use does not automatically grant it rights and legitimate interests. The principles that govern whether a reseller of genuine goods has rights or legitimate interests have been set out in a variety of UDRP decisions, starting with the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

The WIPO Overview 3.0 section 2.8 summarizes the consensus views of UDRP panels in assessing claims of nominative (fair) use by resellers or distributors in the following manner:

“… Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test”, the following cumulative requirements will be applied in the specific conditions of a UDRP case:

(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.

The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.”

In this case, the Respondent’s Website does not accurately or prominently disclose the Respondent’s relationship with the Complainant, in particular that it is not an authorized dealer or has any particular connection with the Complainant. Rather it is a direct copy of the Complainant’s Website and thus the Respondent is actively impersonating the Complainant online. Even in the event that the Respondent is reselling genuine Zenni products, its use of the Domain Name for the Respondent’s Website does not grant it rights or legitimate interests in the Domain Name.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a response the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b)).

The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the ZENNI and ZENNI OPTICAL Marks at the time the Domain Name was registered. The Domain Name resolved to a website copied from the Complainant’s Website, indicating that the Respondent was aware of the Complainant and was actively impersonating the Complainant.

In the circumstances, the Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s rights and lacked rights or legitimate interests of its own amounts to registration in bad faith.

The Respondent registered the Domain Name for the purposes of operating a website that impersonated the Complainant’s Website specifically to sell either the Complainant’s eyewear or counterfeit eyewear that compete with the Complainant’s products. The Respondent is using the Domain Name that is confusingly similar to the ZENNI and ZENNI OPTICAL Marks to sell products, be they legitimate or otherwise, in competition with the Complainant and without the Complainant’s approval. Consequently the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the Complainant’s ZENNI and ZENNI OPTICAL Marks Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website.

Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.

7. Decision

For 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-optic.com> be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Date: January 1, 2018