WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Taojing International Ltd., Zenni Optical, Inc. v. Domain Proxy Manager, Domains By Proxy - Niche Proxy Account
Case No. D2021-3343
1. The Parties
The Complainants are Taojing International Ltd. (“First Complainant”), Hong Kong, China, and Zenni Optical, Inc. (“Second Complainant”), United States of America (“United States”), represented by Green & Green Law Offices, United States.
The Respondent is Domain Proxy Manager, Domains By Proxy - Niche Proxy Account, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <zenniopitcal.com> is 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 7, 2021. On October 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 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 11, 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 14, 2021. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed a second amended Complaint on October 22, 2021.
The Center verified that the Complaint together with the amended Complaints 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 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 17, 2021.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on November 24, 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.
4. Factual Background
The Complainants explore online retail store services in the field of eyeglasses and prescription eyeglasses from the online shops available at <zenni.com> and <zennioptical.com> which are operated by the Second Complainant.
The First Complainant is the owner, amongst others, of the following trademark registrations (Annexes 08-10 to the Complaint):
- United States Trademark Registration No. 3389855 for ZENNI, filed on June 7, 2005 and registered on February 26, 2008, claiming first use in commerce on September 30, 2002, in class 09; and
- United States Trademark Registration No. 3597735 for ZENNI OPTICAL, filed on June 12, 2008 and registered on March 31, 2009, claiming first use in commerce on September 30, 2002, in classes 09 and 35.
The disputed domain name <zenniopitcal.com> was registered on March 6, 2007, and presently resolves to a parked webpage displaying pay-per-click (“PPC”) links.
5. Parties’ Contentions
According to the Complainants, the disputed domain name is confusingly similar with the Complainants’ trademarks since the ZENNI trademark is reproduced in its entirety and the “optical” term is misspelled in the disputed domain name which is insufficient to add distinctiveness thereto.
Also according to the Complainants, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the disputed domain name is not being used in connection with a bona fide offering of goods or services or with a legitimate noncommercial or fair use, given that it is being used in connection with a webpage displaying PPC links generating undue revenue to the Respondent in the form of a virtual catalogue of the Complainants’ competition; and
(ii) to the best of the Complainants knowledge, the Respondent has no trademark or service mark or any other rights to any ZENNI mark.
The Complainants contend that the disputed domain name was registered and is being used in bad faith given the nature of the Respondent’s use of the confusingly similar and almost identical disputed domain name to the Complainants’ trademark. The Complainants further submit that a cease-and-desist letter was sent by the Complainants’ representatives (Annex 11 to the Complaint), in order to put the Respondent on notice of the Complainants’ trademarks and rights and with a view to resolving the matter amicably. In addition to that, the Complainants state that the disputed domain name is being used in connection with “click fraud” which arises when people generate traffic to websites, advertisements or promotions, to earn a commission, or to advertisements run by competitors, to cost them money.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
6.1 Preliminary Issues
A. Consolidation of Multiple Complainants
The Complainants allege, and the Panel agrees, that there is a common grievance against Respondent because the First Complainant is the owner of the trademarks which it licenses exclusively to the Second Complainant, which is the operator of the websites located at the domain names <zennioptical.com> and <zenni.com>, and the Complainants are the target of the conduct by the Respondent.
Accordingly, the Panel accepts Complainants’ request for the consolidation of multiple Complainants in the present proceeding. The Complainants are hereinafter referred to as the Complainant.
6.2 Substantive Issues
Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name.
A. Identical or Confusingly Similar
The Complainant has established rights in the ZENNI and ZENNI OPTICAL trademarks, duly registered.
The Panel finds that the disputed domain name reproduces the Complainant’s mark in its entirety, being the misspelling of “optical” in the disputed domain name insufficient to avoid a finding of confusing similarity under the Policy which, as recognized by past UDRP panels involves a “comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (WIPO Overview 3.0, sections 1.7 and 1.8).
The first element of the Policy has therefore been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a nonexclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding the Complainant, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondent under the second UDRP element.
In that sense, and according to the evidence submitted, the Complainant has made a prime facie case against the Respondent that the Respondent has not been commonly known by the disputed domain name, and neither is there a connection or affiliation between the Complainant and the Respondent. Also, the Respondent has not received any license or consent to use the ZENNI trademark in any way.
In addition to that, the lack of any good faith use of the disputed domain which is being used in connection with PPC links available at the parked webpage that resolves from the disputed domain name, does not characterize an evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
Also, the absence of any indication that the Respondent has rights in a term corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel’s finding of the absence of rights or legitimate interests.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the complainant who is the owner of a trademark relating to the disputed domain name or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trademark 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other location, by creating a likelihood of confusion with the complainants’ 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.
The registration and use of the disputed domain name in bad faith can be found in the present case in view of the following circumstances:
(i) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name, not having submitted a response;
(ii) the Respondent has not replied to the cease-and-desist letter sent prior to this procedure;
(iii) the use of the disputed domain name in connection with a parked webpage displaying PPC links;
(iv) the Complainant’s trademarks have a date of first use in commerce that predates the registration of the disputed domain name; and
(v) the nature of the disputed domain name (reproducing the entirety of the Complainant’s trademark and misspelling the “optical” term), and the Respondent’s intention to unduly profit from the value of the Complainant’s trademark, suggest rather a clear indication of the Respondent’s registration and holding of the disputed domain name in bad faith, with the implausibility of any good faith use to which the disputed domain name may be put.
For the reasons stated above, the Panel finds that the disputed domain name was registered and is being used in bad faith pursuant to 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 <zenniopitcal.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: December 8, 2021