The Complainant is Vision Service Plan d/b/a VSP Global of Rancho Cordova, California, United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Domain Whois Protect Service of Mumbai, India / Hemang Infrasructure Private Limited of Mumbai, India. 2. The Domain Name and Registrar
The disputed domain name is registered with Tirupati Domains and Hosting Pvt Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2018. On November 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 20, 2018, 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 20, 2018 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 November 21, 2018.
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 November 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default December 12, 2018.
The Center appointed Jane Seager as the sole panelist in this matter on December 19, 2018. 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 was founded in 1955 in Oakland, California, United States, by a group of optometrists whose vision was to provide affordable access to eye-care insurance. The Complainant offers goods and services to eye-care professionals, employers and individuals. Its business comprises five main areas, notably, insurance, eyewear, lenses, ophthalmic technology, and retail. The Complainant’s business includes “VSP Vision Care”, a not-for-profit company providing access to affordable eye care and eyewear, and “VSP Optics”, which is focused on custom lens services.
The Complainant owns various VSP-formative trademarks, used in connection with the above-mentioned goods and services, including but not limited to the following:
- United States Trademark VSP, Registration No. 2,324,613, registered on February 29, 2000;
- European Union Trade Mark VSP, Registration No. 011537181, registered on June 25, 2013; and
- United States Trademark VSP VISION CARE FOR LIFE (design), Registration No. 3,410,088, registered on April 8, 2008.
The Complainant also owns several domain names comprising its VSP trademark, including , , , , and others.
The disputed domain name was registered on February 12, 2004. The disputed domain name resolves to a parking page displaying pay-per-click links, including those labelled “VSP Vision Insurance” and “VSP Vision Plan”. When the links are clicked upon, Internet users are redirected to other parking pages displaying payperclick links to competitors of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant asserts that it has rights in the trademark VSP and other VSP-formative trademarks, and that the disputed domain name is confusingly similar to its trademarks.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that it has never authorized the Respondent to register or use the VSP trademark in any manner, that the use of the disputed domain name in connection with a website displaying pay-per-click links to competitors of the Complainant is not bona fide, that the Respondent has not been commonly known by the disputed domain name, having never acquired any trademark rights in the disputed domain name, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant submits that the disputed domain name has been registered and is being used in bad faith. The Complainant notes that its oldest trademark registration claims first use in commerce in 1974, many years prior to the registration of the disputed domain name. It further claims that its trademark is used in connection to services that are offered to some 88 million members around the world, and that its trademark is used in multiple domain names that are used in connection with its business operations. As such, the Complainant argues that it is implausible that the Respondent was unaware of the Complainant’s trademark at the time that the disputed domain name was registered. The Complainant submits that the use of the disputed domain name in connection with a monetized parking page is, in the circumstances of the present case, bad faith use of the disputed domain name. Finally, the Complainant submits that the Respondent is a serial cybersquatter, having been named as a respondent in many prior cases under the Policy involving domain names comprising well-known thirdparty trademarks.
The Complainant requests transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed in its Complaint, the Complainant must prove on the balance of probabilities that it has satisfied the requirements of paragraph 4(a) of the Policy, as follows:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights in the VSP trademark, along with other VSPformative trademarks, including VSP VISION CARE FOR LIFE (design), through registration and use of such trademarks in connection with its eye-care services.
The Panel finds the disputed domain name to be confusingly similar to the Complainant’s VSP trademark. It incorporates the VSP trademark as its leading element, together with the descriptive term “vision” and the generic Top-Level Domain (“gTLD”) “.com”. Prior UDRP panels have found that where a trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. Moreover, noting that the disputed domain name comprises substantial elements of its VSP VISION CARE FOR LIFE (design) trademark, i.e., “VSP VISION” the Panel further finds that the disputed domain name is confusingly similar to the Complainant’s VSP VISION CARE FOR LIFE (design) trademark. See in this regard Supercell Oy v. WhoisGuard Protected, WhoisGuard, Inc. / Giacinto Napolitani,WIPO Case No. D2017-2064.
The gTLD “.com” may be disregarded as it is viewed as a standard requirement of registration. See WIPO Overview 3.0, section 1.11.1.
For the reasons set out above, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See WIPO Overview 3.0, section 2.1.
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances, any of which may demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) before any notice to you [the respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the trademark or service mark at issue.
The Complainant states that it has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use its VSP trademark in any manner.
The Complainant argues that the use of the disputed domain name to resolve to a monetized parking page displaying pay-per-click links that redirect Internet users to its competitors is not bona fide within the meaning of paragraph 4(c)(i) of the Policy. The Panel accepts the Complainant’s submission in this regard. As held by prior UDRP panels, the use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. See WIPO Overview 3.0, section 2.9.
The Complainant further submits that the Respondent has never been commonly known by the disputed domain name, and that the Respondent has never acquired any trademark rights in the disputed domain name. The Panel notes that the Respondent’s name, as displayed in the WhoIs information for the disputed domain name, bears no resemblance to the disputed domain name. There are no other circumstances that would indicate that the Respondent is commonly known by the disputed domain name.
As noted by the Complainant, the purpose of the Respondent’s website is commercial in nature, and as such, the Respondent cannot be said to be making a legitimate noncommercial or fair use of the disputed domain name pursuant to paragraph 4(c)(iii) of the Policy.
Based on the foregoing, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production onto the Respondent. Despite having been duly notified of the proceeding, the Respondent has not come forward with any arguments or evidence to demonstrate its rights or legitimate interests. There are no other circumstances that would appear to indicate any rights or legitimate interests in the domain name on the part of the Respondent.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The disputed domain name was registered on February 12, 2004. At that time, the Complainant’s VSP trademark had already been registered for several years, and had first been used in commerce some 30 years earlier. Noting that the disputed domain name includes the Complainant’s VSP trademark in its entirety, together with a term that is descriptive of the field in which the Complainant operates, i.e., “vision”, the Panel accepts the Complainant’s submission that it is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name.
The use to which the disputed domain name has been put reinforces the Panel’s finding above. The Panel finds that by using the disputed domain name in connection with a parking page displaying pay-per-click links to competitors of the Complainant from which the Respondent presumably derives revenue, the Respondent has attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s VSP and VSP-formative trademarks, as to the source, sponsorship, affiliation, or endorsement of both the Respondent’s website and those websites of the Complainant’s competitors accessible via the Respondent’s website. See paragraph 4(b)(iv) of the Policy. Again, the inclusion of the term “vision”, referring to the business area of the Complainant, only serves to reinforce such a likelihood of confusion.
The Panel further finds that the Respondent, who has been named as a respondent in several UDRP decisions involving well-known third-party trademarks, has engaged in a bad faith pattern of abusive domain name registration. See, e.g., Intesa Sanpaolo S.p.A. v. Hemang Infrasructure Private Limited,WIPO Case No. D2014-1313 (, concerning the SANPAOLO IMI trademark); Nationwide Mutual Insurance Company (Nationwide) v. PrivacyP / Hemang Infrasructure Private Limited,WIPO Case No. D2013-1842 (, concerning the NATIONWIDE BANK trademark); Allstate Insurance Company v. Hemang Infrasructure Private Limited,WIPO Case No. D2011-0262 (, concerning the ALLSTATE trademark); and LEGO Juris A/S v. Hemang Infrasructure Private Limited / PrivacyP, Domain Admin,WIPO Case No. D2010-1847 (, concerning the LEGO trademark).
Finally, while not constituting evidence of cyberflight (as claimed by the Complainant), the Panel finds, in the context of the present case, that the Respondent’s use of a privacy service to mask its identity is further evidence of the Respondent’s bad faith.
The Panel finds that the Complainant has satisfied the requirements of 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 disputed domain name be transferred to the Complainant.
Jane Seager
Sole Panelist
Date: 23 December 2018
Full & Egal Universal Law Academy