WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Luxottica Group S.p.A. v. Privacy.co.com - 65cd3, Savvy Investments, LLC Privacy ID# 383151 / Savvy Investments, LLC Privacy ID# 383149 / Domain Admin, Global Access
Case No. D2020-2543
1. The Parties
The Complainant is Luxottica Group S.p.A., Italy, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Privacy.co.com - 65cd3, Savvy Investments, LLC Privacy ID# 383151, United States of America (“United States”) / Savvy Investments, LLC Privacy ID# 383149, United States / Domain Admin, Global Access, United Kingdom.
2. The Domain Names and Registrar
The disputed domain names <lenscrafter.com> and <lenscrafterseyewear.com> are registered with Sea Wasp, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2020. On October 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 6, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 7, 2020, 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 October 9, 2020.
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 the Respondent of the Complaint, and the proceedings commenced on October 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2020.
The Center appointed Peter Burgstaller as the sole panelist in this matter on December 15, 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
OAKLY, Inc, a wholly owned subsidiary of the Complainant, is the owner of the following registered LENSCRAFTERS trademarks:
- LENSCRAFTERS & Device, United States Patent and Trademark Office (“USPTO”), reg.-No. 2023454, reg. date December 17, 1996, IC Class 042;
- LENSCRAFTERS & Device, USPTO, reg.-No. 2188999, reg. date September 15,1998, IC Class 035, 042;
- LENSCRAFTERS & Device, USPTO, reg.-No. 2189004, reg. date September 15, 1998, IC Class 035, 042;
- LENSCRAFTERS, USPTO, reg.-No. 3457256, reg. date July 1, 2008, IC Class 035, 044;
- LENSCRAFTERS.COM, USPTO, reg.-No. 2201169, reg. date November 3,1998, IC Class 042;
- LENSCRAFTERS, CIPO, reg.-No. TMA361173, reg. date October 27, 1987, IC Class 035, 044;
- LENSCRAFTERS, EUIPO, reg.-No. 002868883, reg. Date April 15, 2004, IC Class 042 (Annex 1 to the Complaint).
Through its subsidiary OAKLY, Inc, the Complainant has rights in the LENSCRAFTERS trademarks.
Additionally, the Complainant has rights in the domain name <lenscrafters.com>, created on June 8, 1995 through its subsidiary Luxottica Retail North America Inc.; this primary domain name is used it in connection with a website to market LENSCRAFTERS products throughout the world (Annex 5 to the Complaint).
The Complainant or its subsidiaries have never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the LENSCRAFTERS trademarks in any manner.
The disputed domain names <lenscrafterseyewear.com> and <lenscrafter.com> were registered on December 2, 2013 and August 5, 2004, respectively (Annex 2 to the Complaint). The Registrant of the disputed domain names is the Respondent.
The Respondent used the disputed domain name <lenscrafterseyewear.com> for addressing a website containing links which refer to “Eyewear Glasses”, “Prescription Glasses Frames”, “Lenscrafters”, “Prescription Eyeglasses” and “Eyewear Prescription Glasses” (Annex 6 to the Complaint); regarding the disputed domain name <lenscrafter.com> the Respondent offered this domain for sale (Annex 8 to the Complaint).
5. Parties’ Contentions
The Complainant is an Italian eyewear conglomerate and the world’s largest eyewear company. Founded in 1961 by Leonardo Del Vecchio, the Complainant boasts a brand portfolio of more than 10 retail brands and 30 plus eyewear brand including LensCrafters and Oakley.
In the year ending 2019, the Complainant reported total net sales of approximately EUR 9 billion and net income of EUR 900 million while employing 82,000 people worldwide.
As of December 31, 2018, the Complainant’s group operated a retail network of 1,158 LensCrafters stores, of which 1,050 are in North America and the other 108 stores are in China and Hong Kong, China.
The Complainant communicates with its customers through its social media channels and its primary website under the domain name <lenscrafters.com>. Because of the strong online presence under the primary domain name <lenscrafters.com> the website received 904.76K visits during the six-month period between December 2019 and May 2020. Additionally, it ranks this domain 44,799th worldwide and 8,399th in the United States, where Respondent resides.
Through its wholly owned subsidiary OAKLY, Inc, the Complainant has rights in the LENSCRAFTERS trademarks.
The LENSCRAFTERS trademarks are well known and the disputed domain names are confusingly similar to these trademarks.
The Respondent has no rights or legitimate interests in respect of the disputed domain names and registered and used the disputed domain names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain names are confusingly similar to the LENSCRAFTERS trademarks in which the Complainant has rights. The disputed domain names almost entirely contain these trademarks and only add the dictionary term “eyewear” with regard to the disputed domain name <lenscrafterseyewear.com> and omit the letter “s” with regard to the disputed domain name <lenscrafter.com>.
It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name the mere addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) as well as the mere omission of a character will not prevent a finding of confusing similarity under the first element of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Finally, it has also long been held that suffixes such as a generic Top-Level Domain (“gTLD”) are generally disregarded.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).
In the present case the Respondent failed to submit a Response. Considering all of the evidence in the Complaint (especially with regard to the Annexes presented by the Complainant) and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain names, that the Respondent has no connection or affiliation with the Complainant, and the Respondent has not received any license or consent, express or implied, to use the trademarks LENSCRAFTERS in a domain name or in any other manner, lead the Panel to the conclusion that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As stated in many decisions rendered under the Policy (e.g., Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001) both conditions, registration and used in bad faith, must be demonstrated; consequently, the Complainant must show that:
- the disputed domain names were registered by the Respondent in bad faith, and
- the disputed domain names are being used by the Respondent in bad faith.
The Complainant has rights in the mark LENSCRAFTERS and the domain name <lenscrafters.com>. The Complainant together with its subsidiaries have promoted the LENSCRAFTERS mark globally, and the LENSCRAFTERS eyewear products are well-publicized on social-media channels and have a strong online presence through a website addressed by the primary domain name <lenscrafters.com>.
The Panel is convinced that it is inconceivable that the Respondent has registered the disputed domain names without knowledge of the Complainant’s rights; this is especially supported by the fact that the Respondent used with regard to the disputed domain name <lenscrafterseyewear.com> a suffix to the Complainant’s trademark which refers to the Complainant’s business (“eyewear”) not to mention the related links on the website which is addressed by the disputed domain name <lenscrafterseyewear.com>.
With regard to the disputed domain name <lenscrafter.com> it is the Panel’s view, that this is a misspelling of the LENSCRAFTERS trademarks in which the Complainant has rights; this signals an intention on the part of the Respondent to confuse users seeking or expecting the Complainant. Moreover, the Respondent offers the disputed domain name for sale: although the practice of registering a domain name for subsequent resale would not by itself support a claim that the respondent registered the domain name in bad faith; however, there might be specific circumstances which indicate that a domain name was registered for bad faith purpose, especially the nature of the domain name, e.g., misspelling of trademark of which the respondent must have known. Exactly this is the case with regard to the disputed domain name <lenscrafter.com>.
Therefore, the Panel is convinced that the disputed domain names were registered with full knowledge of the Complainant’s rights in order to take advantage of their similarity with the Complainant’s trademarks, and as such in bad faith by the Respondent.
The disputed domain names moreover were used in bad faith:
The disputed domain name <lenscrafterseyewear.com> resolves to a website containing links which refer to “Eyeear Glasses”, “Prescription Glasses Frames”, “Lenscrafters”, “Prescription Eyeglasses” and “Eyewear Prescription Glasses”; such use of a domain name can never confer rights or legitimate interests on a respondent – it is quite the contrary: the Respondent “free rides” on the reputation and the valuable goodwill of the Complainant’s trademark and thus the use of the disputed domain names is suited to divert or mislead potential web users from the website they are actually trying to visit (the Complainant’s site).
With regard to the disputed domain name <lenscrafter.com> panels have held that the use of a domain name for purposes other than to host a website may also constitute under specific circumstances bad faith use; such circumstances are present in this case since the Respondent uses a misspelling of the trademark LENSCRAFTERS as the disputed domain name <lenscrafter.com> and offers it for sale
The evidence and documents produced and put forward by the Complainant together with the fact that the Respondent has failed to present any evidence of any good faith registration and use with regard to the disputed domain names lead the Panel to the conclusion that the disputed domain names were registered and are being used by the Respondent in bad faith under paragraph 4(a)(iii) of the Policy.
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 names <lenscrafter.com> and <lenscrafterseyewear.com> be transferred to the Complainant.
Date: January 5, 2021