WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Taojing International Ltd. and Zenni Optical, Inc. v. 杨智超 (Zhichao Yang)

Case No. D2021-4137

1. The Parties

The Complainant ¹ is 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 杨智超 (Zhichao Yang), China.

2. The Domain Names and Registrar

The disputed domain names <zenniopotical.com>, <zennioptcical.com>, and <zennioptiacal.com> are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2021. On December 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 14, 2021, 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 December 14, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. The Complainant filed an amended Complaint in Chinese on December 22, 2021, including a language request that English be the language of the proceeding. 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 in English and Chinese of the Complaint, and the proceedings commenced on January 6, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2022.

The Center appointed Dr. Hong Xue as the sole panelist in this matter on February 9, 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 Complainant, Taojing International Ltd., owns the trademarks ZENNI, ZENNI OPTICAL, and ZENNI.COM on the goods of eyeglass cases, eyeglass frames and eyeglass lenses in the United States and Hong Kong, China. The Complainant registered in the United States the trademark ZENNI (Registration Number 3389855) on February 26, 2008, the trademark ZENNI OPTICAL (Registration number 3597735) on March 31, 2009 and the trademark ZENNI.COM (Registration number 6438164) on August 3, 2021; and in Hong Kong, China the trademark ZENNI OPTICAL (Registration Number 301703150) on February 2, 2011 and the trademark ZENNI (Registration Number 301779715) on July 18, 2011 respectively. The Complainant, Zenni Optical, Inc., is the exclusive licensee of the Complainant, Taojing International Ltd., and is the operator of the websites at the domain names <zennioptical.com> and <zenni.com>.

The Respondent registered the disputed domain names <zenniopotical.com> on October 13, 2019 and <zennioptcical.com> and <zennioptiacal.com> on August 1, 2020 respectively. According to the Complaint, the Respondent are using the disputed domain names for the websites providing the referral catalogs of eyeglasses sellers competing to the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to its trademarks ZENNI, ZENNI OPTICAL, and ZENNI.COM.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Complainant contends that the disputed domain names were registered and are being used in bad faith.

The Complainant requests that the disputed domain names be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceeding

According to the Rules, paragraph 11(a), unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

When determining the language of the proceeding, the paragraphs 10(b) and (c) of the Rules should also be taken into account to balance the fairness and equal treatment to the parties and the expedition for domain name dispute resolution. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical applicance co. ltd., WIPO Case No. D2008-0293). The language finally decided by the panel for the proceeding should be non-prejudicial to either party to present the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004, and see section 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The Registration Agreements for the disputed domain names are in Chinese. The Complainant, although submitting the Chinese translation of the amended Complaint, requests the language of the proceeding be English. The Respondent does not make any submission in response to the Complainant’s request.

The Panel notes that the websites to which the disputed domain names resolve are all in English, which shows that the Respondent has sufficient capacity to use English as the working language. In addition, the disputed domain names are registered in Latin characters rather than Chinese scripts.

The Panel, therefore, finds that making English as the language of the proceeding will not affect the Respondent’s ability to present his/her case and can effectively avoid the considerable delays and expenses if requiring the evidence of the Complaint be translated into Chinese.

In consideration of the above circumstances and in the interest of fairness to both Parties, the Panel decides, under paragraph 11(a) of the Rules, that English shall be the language of the proceeding of this case.

B. Identical or Confusingly Similar

The Panel notes that the Complainant had registered in the United States the marks ZENNI in 2008, ZENNI OPTICAL in 2009, and ZENNI.COM in 2021. The Panel also independently discovers that the Complainant registered in Hong Kong, China the trademark ZENNI OPTICAL (Registration Number 301703150) on February 2, 2011 and the trademark ZENNI (Registration Number 301779715) on July 18, 2011 respectively.

The Panel notes that apart from the generic Top-Level Domain (“gTLD”) suffix “.com”, the disputed domain names consist of “zenniopotical”, “zennioptcical” and “zennioptiacal” respectively. If compared with the Complainant’s registered marks ZENNI and ZENNI OPTICAL, the character sets of all the disputed domain names are confusingly similar to these marks because they are recognizable in the disputed domain names. Each disputed domain name prefixing the Complainant’s highly distinctive mark ZENNI and followed with the misspelling of “optical” shows the pattern of typosquatting against the Complainant’s mark ZENNI OPTICAL.

The Panel, therefore, finds that the disputed domain names <zenniopotical.com>, <zennioptcical.com>, and <zennioptiacal.com> are confusingly similar to the marks in which the Complainant has rights. The Complainant has successfully proven the first element required by paragraph 4(a) of the Policy.

C. Rights or Legitimate Interests

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain names <zenniopotical.com>, <zennioptcical.com>, and <zennioptiacal.com> and, as stated above, the Respondent does not provide any information to the Panel of any rights or legitimate interests he/she may have in the disputed domain names.

It is apparent from the Complaint that there was no connection between the Respondent and the Complainant or its business. Paragraph 4(c) of the Policy lists a number of circumstances which can be taken to demonstrate a respondent’s rights or legitimate interests in a domain name. However, there is no evidence before the Panel that any of the situations described in paragraph 4(c) of the Policy apply here. To the contrary, the lack of a Response leads the Panel to draw a negative inference.

Therefore, and also in light of the Panel’s findings below, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names <zenniopotical.com>, <zennioptcical.com>, and <zennioptiacal.com>. Accordingly, the Complainant has proven the second element required by paragraph 4(a) of the Policy.

D. Registered and Used in Bad Faith

The Panel notes that long before the Respondent registered the disputed domain names <zenniopotical.com>, <zennioptcical.com>, and <zennioptiacal.com> the Complainant had registered and used the trademarks ZENNI and ZENNI OPTICAL on the goods of eyeglass cases, eyeglass frames and eyeglass lenses in the United States and Hong Kong, China. Although the Complainant’s marks have not been registered in mainland China, the Complainant’s eyeglasses marked with ZENNI are recognized in that market primarily through cross-border e-commerce. There is hardly any likelihood that the Respondent registered the confusingly similar disputed domain names coincidentally.

According to the evidence on record, three disputed domain names resolve to the websites of which contain the contents of pay-per-click (PPC) links relating to “Affordable Eyewear”, “Prescription Glasses” or “Sunglasses”. In the absence of any rebuttal by the Respondent, the Panel finds that the Respondent intentionally misappropriates the reputation of the Complainant’s marks ZENNI and ZENNI OPTICAL to attract the Internet users to the eyeglasses that may be offered by the Complainant’s competitors. The Respondent’s registration of the multiple disputed domain names confusingly similar to the Complainant’s marks indicates that the Respondent has engaged in a pattern of conduct of registering the domain names in order to prevent the Complainant from reflecting the marks in the corresponding domain names; and the Respondent uses them in connection with the websites containing PPC links for commercial gain, which constitutes the evidence of bad faith under the paragraphs 4(b)(ii) and 4(b)(iv) of the Policy.

In conclusion, the Complainant has successfully proven the third element required by paragraph 4(a) 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 disputed domain names, <zenniopotical.com>, <zennioptcical.com>, and <zennioptiacal.com>, be transferred to the Complainant.

Dr. Hong Xue
Sole Panelist
Date: February 21, 2022

¹ For reasons explained in section 4 below, the Panel will refer to the Complainants collectively as “the Complainant” unless it is necessary to refer to them separately.