The Complainant is Vision Service Plan d/b/a VSP Corporation of Rancho Cordova, California, United States of America, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
The Respondent is Registration Private / Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Michael Rahimzadeh of Los Angeles, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 21, 2016. On March 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 23, 2016 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 amendment to the Complaint on March 23, 2016.
The Center verified that the Complaint together with the amendment to the 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 April 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 25, 2016.
The Center appointed Ellen B Shankman as the sole panelist in this matter on May 3, 2016. 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 date of the Domain Name registration was confirmed by the Registrar to be June 15, 2015. The Complainant provided evidence of multiple trademark registrations for the mark EYECONIC including, inter alia, United States Trademark No. 4,268,635 (registered on January 1, 2013) and United States Trademark No. 4,158,570 (registered on June 12, 2012) for EYECONIC.COM that predate the date of the Domain Name registration for a variety of related goods and services.
The Panel also conducted an independent search to determine that the Domain Name resolves to a website selling sunglasses.
Since the Respondent did not respond, the facts regarding the use and fame of the Complainant's mark, as well as other statements regarding correspondence between the parties, are taken from the Complaint and are generally accepted as true in the circumstances of this case. 5. Parties' Contentions A. Complainant
The Complainant alleges that the company was founded in 1955 in Oakland, California (USA), by a group of committed and forward-thinking optometrists. Their vision was to offer affordable, accessible, high-quality eye-care insurance to the world that promoted visual wellness and improved members' quality of life. The Complainant operates in more than 100 countries and helps more than 77 million people see better by providing affordable, accessible, high-quality eye care and eyewear.
The Complainant also alleges it has been known by and has used the EYECONIC trademark since at least 1999 and has owned a United States trademark registration for the trademarks EYECONIC and EYECONIC.COM, identified above, as well as owning trademarks in many other jurisdictions, including China.
In addition, the Complainant also alleges it operates a website under the name "Eyeconic," using the domain name , which was created on September 10, 1999. The "www." website offers eyeglasses, sunglasses and contact lenses for sale to the public.
The Complainant argues that the substitution of the letter "k" for the letter "c", which is pronounced the same, together with the addition of the letters "la" which are a geographic shorthand for "Los Angeles" in California, USA, does not bar a finding that the Domain Name is confusingly similar to the Complainant's trademarks. Further, the sale of similar goods to those of the Complainant's constitutes both prior knowledge of the Complainant's marks, as well as bad-faith use and registration.
To summarize the Complaint, the Complainant is the owner of numerous registrations for the trademark EYECONIC, in respect of goods and services related to eyewear and sunglasses. The Domain Name is confusingly similar to the trademark owned by the Complainant. The substitution of the letter "k" which is a phonetic equivalent to the letter "c" and the addition of the geographic or descriptive letters "la" to the term "eyekonic" do not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant's trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. Thus, the Respondent's registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for EYECONIC.
The Panel finds that the Domain Name is confusingly similar to the Complainant's trademark. The substitution of the letter "k" which is a phonetic equivalent to the letter "c" and the addition of the geographic or descriptive letters "la" to the Domain Name do not prevent a finding of confusing similarity and do not change the overall impression of the designation as being connected to or confused with the trademark of the Complainant. If anything, because it is used on a website to also sell sunglasses, the confusion is enhanced. See Pfizer Inc. v. Asia Ventures, Inc.,WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110, stating "The incorporation of a Complainant's well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant's trademark."
The Panel agrees with the Complainant that the Respondent's substitution of the letter "k" for the first letter "c" is irrelevant because these letters are pronounced the same and because "[a]pplication of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name." WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2 (emphasis added). See Debbie Robus and Greg Robus v. Nicky Suard (DrivenOne, Inc.),WIPO Case No. D2000-0941 ("an incorrect spelling of Complainant's trademark" is irrelevant where a domain name "sound[s] either the same as or very similar to" the trademark); Gorenje gospodinjski aparati, d.d. v. Ling Lee Sze,WIPO Case No. D2003-1009 (where a domain name contains words that are "pronounced the same" as a complainant's trademark, then the domain name is confusingly similar to the trademark); Leaseweb BV Keep v. ,WIPO Case No. D2009-0794 (domain name "sounds and looks almost identical to the Complainant's trademark"); and Ebay Inc. v. Wangming,WIPO Case No. D2006-1107 (domain name "sounds the same as the complainant's trademark and looks similar to the complainant's trademark").
Further, the Panel finds that the addition of the letters "la" in the Domain Name are indeed intended to provide a suggestion of a geographic term, and does not prevent a finding of confusing similarity.
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant's registered trademark, under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Given the evidence of the distinctiveness of the Complainant's trademark and reputation, the Panel agrees with the Complainant's claims that the Respondent has registered the Domain Name with full knowledge of the Complainant's trademark and finds that the registration and use of the Domain Name to promote a website selling sunglasses was and is being done in bad faith.
The Panel agrees with Complainant's contention that by offering for sale sunglasses on its website using the Domain Name (the same services offered by the Complainant under the EYECONIC Trademark) Respondent has "registered the domain name primarily for the purpose of disrupting the business of a competitor" (Policy, paragraph 4(b)(iii)); and, "by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location" (Policy, paragraph 4(b)(iv)). See also, e.g., Arla Foods amba v. Jucco Holdings,WIPO Case No. D2006-0409 ("the practice of registering a domain name and using it to redirect a user to a website which is used for the sale of competing services constitutes evidence of registering and using a trademark in bad faith"); and Six Continents Hotels, Inc. v. Telmex Management Services,WIPO Case No. D2001-0996 ("The deliberate adoption of Complainant's well-known trade marks without any apparent right or interest therein, raises a prima facie presumption of bad faith registration, and Complainant's demonstrated use of the domain names to link to other [competing] service sites… demonstrates bad faith use").
Given the evidence of the Complainant's prior rights in the trademark EYECONIC, the timing of the registration of the Domain Name and the Respondent's use of the Domain Name to sell similar/competitive goods, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) 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 Domain Name be transferred to the Complainant.
Ellen B Shankman
Sole Panelist
Date: May 5, 2016
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