WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Taojing International Ltd., Zenni Optical, Inc. v. Super Privacy Service LTD c/o Dynadot / shuo wu
Case No. D2021-3257
1. The Parties
The Complainants are Taojing International Ltd., Hong Kong, China, and Zenni Optical, Inc., United States of America (“United States”), represented by Green & Green Law Offices, United States.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States / shuo wu, China.
2. The Domain Name and Registrar
The disputed domain name <zenioptical.com> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2021. On October 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2021, 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 Complainants on October 4, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on October 5, 2021.
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 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2021.
The Center appointed C. K. Kwong as the sole panelist in this matter on November 18, 2021. 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.
The date by which the Administrative Panel was required to render its decision was extended to December 9, 2021 in accordance with Rule 10(c) of the Policy.
4. Factual Background
Taojing International Limited of the Complainants is the owner of numerous trademarks consisting of or comprising the word ZENNI. These registrations include:
- United States Trademark Registration No. 3,389,855 for the mark ZENNI filed on June 7, 2005, registered on February 26, 2008 with first use in commerce claimed from September 30, 2002 in respect of prescription eyeglasses in Class 9 (Annex 9 to the Amended Complaint);
- United States Trademark Registration No. 3,597,735 for the mark ZENNI OPTICAL filed on June 12, 2008, registered on March 31, 2009 in respect of certain goods including eyeglass cases, eyeglass frames, eyeglass lenses and eyeglasses in Class 9 claiming first use in commerce from September 30, 2002 and for online retail store services featuring eyeglasses in Class 35 claiming first use in commerce from September 30, 2002 (Annex 8 to the Amended Complaint).
The Complainant Zenni Optical, Inc. is the exclusive licensee for the aforesaid ZENNI trademarks of the Complainant Taojing International Limited.
The evidence produced by the Complainants shows that the first use in commerce of the marks ZENNI and ZENNI OPTICAL in the United States are claimed from September 30, 2002, before the first registration of the disputed domain name <zenioptical.com> on March 10, 2005.
The disputed domain name resolves to a website using the Complainants’ trademark ZENNI in relation to the sale of products therein offered including ZENNI prescription glasses, ZENNI prescription sunglasses, ZENNI OPTICAL, ZENNI OPTICAL eyeglasses, ZENNI eyeglasses, and ZENNI eyewear, as well as the same or similar products of other brands including Warby Parker (Annex 11 to the Amended Complaint).
Other than the particulars shown in the printout of the database searches conducted by the Complainants on the WhoIs Database (as provided in Annexes 1 and 2 to the Amended Complainant) and the website to which disputed domain name resolves as provided in Annexes 11 and 12 to the Amended Complaint, there is no evidence concerning the background of the Respondent and its businesses.
The Complainants use the domain names <zennioptical.com> and <zenni.com> to operate websites for listing their goods and services bearing the ZENNI trademark or with reference to the ZENNI trademarks.
5. Parties’ Contentions
The Complainants have made the following contentions:
The Registrant of the disputed domain name is Shuo Wu, with proxy, Super Privacy Service LTD c/o Dynadot (Annex 2 to the Amended Complaint).
The Complainants own and use the trademarks ZENNI and ZENNI OPTICAL as set out in Section 4 above. They operate their websites using the domain names <zennioptical.com> and <zenni.com> which have incorporated their ZENNI trademarks and advertise products and related bearing or with reference to the trademarks ZENNI and ZENNI OPTICAL.
The main element of the disputed domain name is the word “zenioptical” which is a misspelling of the Complainants’ ZENNI OPTICAL trademark by just omitting one letter “n” from the two letters “nn” in the Complainants’ ZENNI OPTICAL trademark. Customers may easily mistype “zeni” for ZENNI and “zenioptical” for ZENNIOPTICAL and/or be misled to the website to which the disputed domain name resolves which links to the Complainants’ products as well as those of their competitors including Glasses USA, Warby Parker, and others, offering competitive products and services at lower prices (Annexes 11 and 12 to the Amended Complainant). All these were done without the permission or license of the Complainants.
The links on the website to which the disputed domain name resolves resolve to websites showing photographs of genuine ZENNI products and deep links depicting models of genuine ZENNI glasses shown on the ZENNI website. The images or photos of these genuine ZENNI products are the subject of copyright belonging to the Complainants.
It is of concern that if customers enter their private person medical prescription information to the deep links accessed from the website to which the disputed domain name resolves, the privacy of these customers will be compromised.
The Respondent has copied the Complainants’ trademarks and domain name with the intent of commercial gain and disruption of the Complainants’ business by misleading and diverting customers to the website to which the disputed domain name resolves. Furthermore, the Respondent may be making money for every click-through on its website and collect customer information from those members of the public who believe that the Respondent’s website is that of the Complainants, when it is not.
There is no evidence that the Respondent has made any legitimate noncommercial or fair use of the disputed domain name.
There was no response to the cease and desist letter issued on behalf of the Complainants to the Respondent, the hosting company Dynadot, the Registrar, and the privacy address-blocking proxy, and the other indicated ISPs (Annex 5 to the Amended Complaint).
The careful linking to the Complainants’ competitors and their products, the willful nature of copying the Complainants’ product images, diverting customers to the Respondent’s website for competitive products and services would constitute acts of bad faith to harm the Complainants’ business.
Registration of the disputed domain name prevents the Complainants, as owner of the ZENNI trademarks from reflecting their marks in a corresponding domain name which is used to perpetrate the fraud on customers. These activities are primarily for the purpose of disrupting the business of the Complainants.
The Respondent is intentionally attempting to attract for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainants’ ZENNI marks 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.
The Respondent has no trademark or service mark or any other rights to any ZENNI mark and has not acquired any such rights.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. The naming of party and notice of proceedings
The contact particulars of the Respondent and the disputed domain name as of September 1, 2021 as set out in the WhoIs search results provided in Annex 2 to the Amended Complaint showed the Registrant name/Admin name/Tech name as Super Privacy Service LTD c/o Dynadot.
The answers provided by the Registrar to the Center on October 4, 2021 in response to the Center’s request for Registrar Verification disclosed the underlying registrant of the disputed domain name as shuo wu.
The Complainants accordingly filed an Amended Complaint to identify and add the Respondent shuo wu on October 5, 2021 following the said verification particulars provided by the Registrar.
On October 11, 2021, the Center forwarded the Notification of Complaint and Commencement of Administrative Proceedings to the contact details of the Respondent, including those found in the Complaint, Amended Complaint, WhoIs, and Registrar Verification. The said notification was sent by post/courier and email as per the contact particulars so provided with copies to the Registrar.
In the circumstances, the Panel finds that the proper Parties to these proceedings have been named and notified. As long as the Complainants or the Center as the case may be communicated with the Respondent using the contact information which the Respondent have chosen to provide to the Registrar as reflected in the above contact details, their respective notice obligations will be discharged and the Respondent is bound accordingly.
The Panel is satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a reply is not due to any omission or inadequate communication by the Center.
B. The Three Elements
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “the Panel shall 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 14(b) of the Rules further provides that, “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under, these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. Paragraph 5(e) of the Rules further provides that, “if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.
The failure of the Respondent to respond does not automatically result in a favourable decision for the Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
The said three elements are considered below.
1. Identical or Confusingly Similar
On the evidence available, the Panel has no hesitation in finding that the Complainants have rights in the trademarks ZENNI and ZENNI OPTICAL by reason of the trademark registrations recited in Section 4 above.
Furthermore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark ZENNI OPTICAL.
The dominant or principal component of the disputed domain name differs from the Complainants’ ZENNI OPTICAL mark merely by deleting one letter “n” from the 2 letters “nn” in the word “zenni” of the Complainants’ trademark ZENNI OPTICAL followed by the generic Top-Level Domain (“gTLD”) “.com”. Accordingly, the Complainant’s ZENNI OPTICAL mark remains clearly recognizable in the disputed domain name.
It is well-established practice to disregard the gTLD part of a domain name, such as “.com”, when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d’Evian and Societe des Eaux de Volvic v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2008-0416.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy is established.
2. Rights or Legitimate Interests
The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such prima facie case is made, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain name.
The Complainants have confirmed that they have not authorized, licensed, or permitted the Respondent to use the marks ZENNI or ZENNI OPTICAL.
There is no explanation on the record as to why it was necessary for the Respondent to adopt the term “zenioptical” in the disputed domain name.
There is no evidence before the Panel to suggest that the Respondent is commonly known as <zenioptical.com>.
There is also no evidence available to demonstrate any legitimate noncommercial or fair use of the disputed domain name by the Respondent. The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent.
Accordingly, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name.
3. Registered and Used in Bad Faith
Given the Complainants’ supported claim of registration of its said ZENNI trademarks and the apparent use of those marks for many years, i.e., since at least 2002 as claimed in the aforesaid Unites States trademark registrations before the registration of the disputed domain name as well as the serious allegations made, there is a strong case for the named Respondent to come forward to defend the case. Notwithstanding that, the named Respondent has not come forward with any defence on its choice of embodying the word “zeni” as part of the disputed domain name and adopting the word “zenioptical”, which is substantially identical to the Complainants’ word mark ZENNI OPTICAL registered and used by them in their official website under the domain name <zennioptical.com>. In the disputed domain name, merely the letter “n” has been deleted from the word “zenni”.
The incorporation of the word “zenioptical” as part of the disputed domain name without any explanation under the above circumstances and the prior substantial use of the Complainants’ ZENNI and ZENNI OPTICAL marks lead to the conclusion that the Respondent must have been aware of the existence of the Complainants and their trademarks ZENNI and ZENNI OPTICAL at the time of the registration of the disputed domain name.
The disputed domain name resolves links that resolve to websites copying the materials from the official website of the Complainants. The contents of the website to which the disputed domain names resolves or redirects as shown in Annexes 11 and 12 to the Amended Complaint are telling. Other than demonstrating a skillful way of referring to the mark ZENNI and obviously directed to the customers of the Complainants, they also show a clear acknowledgement of actual knowledge of the Complainants and their trademarks ZENNI and ZENNI OPTICAL.
The Panel finds that the circumstances under paragraph 4(b)(iii) and (iv) of the Policy have been established.
Accordingly, the Panel finds that the disputed domain name has been registered and used 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 name <zenioptical.com> be transferred to the Complainants.
C. K. Kwong
Date: December 9, 2021