WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Taojing International Ltd., Zenni Optical, Inc v. 杨智超 (Zhichao Yang)
Case No. D2021-3658
1. The Parties
The Complainants are Taojing International Ltd. (“First Complainant”), Hong Kong, China, and Zenni Optical, Inc. (“Second Complainant”), United States of America, represented by Green & Green Law Offices, United States of America.
The Respondent is 杨智超 (Zhichao Yang), China.
2. The Domain Name and Registrar
The disputed domain name <zennioptacal.com> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2021. On November 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 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 Complainant on November 4, 2021, 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 in Chinese on November 5, 2021.
On November 4, 2021, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on November 5, 2021. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese, and the proceedings commenced on November 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2021.
The Center appointed 陈长杰 Jacob (Changjie) Chen as the sole panelist in this matter on January 13, 2022. 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 First Complainant is the owner of the ZENNI and ZENNI OPTICAL trademarks and the Second Complainant is its exclusive licensee. The Complainants are in the business of operating an online retail eyewear and optical accessories store under “www.zenni.com” and “www.zennioptical.com”.
The Complainants owns United States Trademark ZENNI Registration No. 3389855 registered on February 26, 2008; United States Trademark ZENNI OPTICAL Registration No. 3597735 registered on March 31, 2009; and, International Trademark ZENNIOPTICAL.COM Registration No. 1598932 registered on April 24, 2021, designating China. (Hereinafter referred to as the “ZENNI OPTICAL trademark”).
The disputed domain name was registered on August 28, 2021, by the Respondent and resolves to a parking page consisting of pay-per-click links.
5. Parties’ Contentions
The Complainants contend that the disputed domain name is confusingly similar to its ZENNI OPTICAL trademark.
The Complainants further contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name as the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.
The Complainants finally contend that the disputed domain name was registered and is being used in bad faith as the Respondent is intentionally attempting to attract for commercial gain, Internet users to use the website of the disputed domain name 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.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Procedural Issues
A. Multiple Complainants
The Complainants have filed a single Complaint against the Respondent.
Based on the evidence on record, the Panel determines that the Complainants share common interests in the ZENNI OPTICAL trademarks, and thus have a common legal interest and grievance resulted from the Respondent’s registration and use of the disputed domain name.
Therefore, the Panel holds that it is equitable and procedurally efficient to grant the Complainants’ request for consolidation.
B. Language of the Proceeding
The Complainants request that the language of the proceeding be English. The main arguments include (1) the Complainants sent an English cease-and-desist letter to the Respondent, though the Respondent did not respond; and (2) the website associated with the disputed domain name displays contents in English.
The Panel observes that in this proceeding the Complaint was originally filed in English and later amended and refiled in Chinese. The Respondent had been given opportunity to comment on the Complainants’ language request but did not do so.
Having considered the above circumstances, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.
6.2 Substantive Issues
According to paragraph 4(a) of the Policy, each of the following factors should be proven, for the Complainants to win the case, namely that:
(i) the disputed domain name is identical or confusingly similar with a trademark or service mark in which the Complainants has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
The Panel’s decision is based on the consideration of three elements below.
A. Identical or Confusingly Similar
The Complainants have successfully established registered trademark rights in the ZENNI OPTICAL trademark.
It is well established that the suffix “.com” as a standard registration requirement should be disregarded in the assessment of the confusing under the Policy. Hence the relevant part of the disputed domain name is “zennioptacal”, which is closely resembling the Complainants’ ZENNI OPTICAL trademark and differs from the trademark by the mere substitution of the letter “i” by letter “a” in the word “optical”. The Panel views that the disputed domain name is a misspelling of the Complainants’ ZENNI OPTICAL trademark and a typical example of typosquatting, which cannot prevent a finding of confusing similarity between the ZENNI OPTICAL trademark and the disputed domain name.
Thus, the Panel concludes that the disputed domain name is confusingly similar to the Complainants’ ZENNI OPTICAL trademark.
B. Rights or Legitimate Interests
The Panel notices that the Respondent is resolving the disputed domain name to a parking page containing pay-per-click links offering eyeglasses products. The Panel determines that using the disputed domain name as parking page will not create any legitimate interests on the Respondent nor represent a bona fide offering of goods or services by the Respondent.
The Panel holds that the Complainants have made out a prima facie case that the Respondent does not have rights or legitimate interests in respect of the disputed domain name. The burden of production on this element hence shifts to the Respondent to rebut the Complainants’ contentions. In this case, the Respondent did not submit a response and failed to rebut the Complainants’ prima facie case.
Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Respondent must have been aware of the Complainants’ ZENNI OPTICAL trademark when selecting its typographical variant to register the disputed domain name. The Panel holds that the misspelling signals the Respondent’s intention to target on the ZENNI OPTICAL trademark and use it to register the disputed domain name. The Respondent’s registration of disputed domain name is a typical example of typosquatting and on its own sufficient to establish registration and use in bad faith under paragraph 4(a)(iii) of the Policy.
The Respondent is intentionally using the typographical variant of the ZENNI OPTICAL trademark to mislead Internet users and redirect them to websites of third parties or even competitors of the Complainants via the pay-per-click links displayed at the disputed domain name. The Respondent’s use of the disputed domain name to host pay-per-click links is sufficient on its own for a finding of registration and use in bad faith, regardless of whether it was directly placed by the Respondent or not.
In the absence of a reasonable explanation from the Respondent for choosing a name confusingly similar to the Complainants’ trademark and using it to host advertising links competing with the Complainants, the Panel finds that the Respondent purposefully intends to attract Internet users to its own websites with a view to commercial gain.
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy is satisfied.
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 <zennioptacal.com> be transferred to the Complainants.
Jacob (Changjie) Chen
Date: January 27, 2022