The Complainants are 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 Super Privacy Service LTD c/o Chengdu West, United States / Ai Zhen Hua (艾振华), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2020. On July 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 8, 2020, 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 July 8, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. On the same day, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. The Complainants filed an amended Complaint in English on July 9, 2020. The Complainants furthermore filed a further amended Complaint in English and Chinese on July 21, 2020, while still requesting 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 of the Complaint, and the proceedings commenced on July 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2020. The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on August 25, 2020. 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 in this proceeding are Taojing International Ltd., a company established in Hong Kong, China, and Zenni Optical, Inc., a company established in the United States. The Complainants are active in the sector of optical products and eyeglasses. Particularly, Zenni Optical Inc. has been granted an exclusive trademark license by Taojing International Ltd. under which it conducts an online eyeglasses business since 2002, which is currently conducted through its official online shops hosted at “www.zenni.com” and “www.zennioptical.com”. The Complainants own a portfolio of trademark registrations for ZENNI and ZENNI OPTICAL, for instance, United States trademark registration number 4345783, registered on June 4, 2013 for ZENNI and United States trademark registration number 3597735, registered on March 31, 2009 for ZENNI OPTICAL. The disputed domain name was created on May 25, 2011 and is linked to an active website, displaying what are presumed to be pay-per-click hyperlinks to third party providers of eyeglasses and optical products and services, which include competitors of the Complainants. The Complainants also provide evidence that they first sought to settle this matter amicably through a cease-and-desist letter sent to the Respondent on March 31, 2020, to which they received no answer. 5. Parties’ Contentions A. Complainants The Complainants essentially contend that the disputed domain name is confusingly similar to their trademarks for ZENNI and ZENNI OPTICAL, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith. The Complainants essentially contend that the Respondent chose to register the disputed domain name by willfully misspelling (and therefore “typosquatting”) the Complainants’ trademarks for ZENNI OPTICAL to create consumer confusion and obtain unlawful financial gains. The Complainants also contend that the disputed domain name is linked to an active website, displaying what are presumed to be pay-per-click hyperlinks to third party providers of competing optical and eyeglass products and services. The Complainants essentially contend that such use does not confer any rights or legitimate interests in respect of the disputed domain name and constitutes use in bad faith. The Complainants request the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings 6.1 First Preliminary Issue: Consolidation of Complainants The Complainants request consolidation in regard to the Complainants. In this regard, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) states in section 4.11.1: “In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.” The Panel has carefully reviewed all elements of this case, giving particular weight to the following elements: the fact that the Complainant Taojing International Ltd. is the owner of the ZENNI and ZENNI OPTICAL trademarks, under which the Complainant Zenni Optical, Inc. was granted an exclusive license and conducts its business, and that the Respondent targets the same marks through the registration of the disputed domain name. The Panel concludes that the Complainants have common grievances regarding the use of their trademarks in the disputed domain name by the Respondent, and the Panel rules that permitting the consolidation would be fair and equitable to all Parties involved and would safeguard procedural efficiency. The Panel therefore allows the request for consolidation of the Complainants. 6.2. Second Preliminary Issue: Language of proceedings Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainants state that, to the best of their knowledge, the language of the Registration Agreements is both in Chinese and in English. However, on July 8, 2020, the Center notified the Complainants that the language of the Registration Agreement is Chinese. The Complainants submitted their amended Complaint in English and Chinese on July 21, 2020, while still requesting that English be the language of the proceeding. The Respondent did not make any comments on the language of the procedure and did not submit any arguments on the merits of the case. The Panel has carefully considered all elements of this case, in particular, the Complainants’ request that the language of proceedings be English; the fact that the Respondent did not comment on the language of the procedure and did not submit arguments on the merits (while it had the right to do so in Chinese or English); the fact that the disputed domain name contains words in English and that the website hosted at the disputed domain name is exclusively in English, from which the Panel deducts that the Respondent understands, and is able to communicate in English; and the fact that Chinese as the language of proceedings could lead to unwarranted costs for the Complainants. In view of all these elements, the Panel rules that the language of proceedings shall be English. 6.3. Discussion and Findings on the merits The Policy requires the Complainants to prove three elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; (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. Based on the evidence and arguments submitted, the Panel’s findings are as follows: A. Identical or Confusingly Similar The Panel finds that the Complainants have established that they have valid rights in the marks ZENNI and ZENNI OPTICAL, based on their registration and intensive use of the same as a trademark in several jurisdictions. Moreover, as to confusing similarity, the WIPO Overview 3.0, section 1.9, states: “A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.. In this case, the Panel considers that the disputed domain name was selected by intentionally misspelling the Complainants’ trademarks for ZENNI and ZENNI OPTICAL, incorporating such trademarks in their entirety, except that a single character (“n”) is added to such trademarks. According to the Panel, this is a clear case of intentional misspelling of the Complainants’ trademark, or “typosquatting”. Accordingly, the Panel rules that the disputed domain name is confusingly similar to the Complainants’ trademark and finds that the Complainants have satisfied the requirements of the first element under the Policy. B. Rights or Legitimate Interests On the basis of the evidence and arguments submitted, the Panel finds that the Complainants make out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainants, is not a bona fide provider of goods or services under the disputed domain name and is not making legitimate noncommercial use or fair use of the Complainants’ trademarks. The Panel also notes that the Respondent is not commonly known by the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply. Moreover, upon review of the facts, the Panel notes that the disputed domain name directs to an active webpage containing what are presumed to be pay-per-click hyperlinks to third party providers of eyeglasses and other optical products and services. In the Panel’s view, this shows the Respondent’s intention to divert consumers for commercial gain to such websites hosted by direct competitors of the Complainants, by taking unfair advantage of the goodwill and reputation of the Complainants’ trademarks for ZENNI and ZENNI OPTICAL (see also previous WIPO UDRP decisions in this sense such as Maker Studios, Inc. v. ORM LTD / Contact Privacy Inc. Customer 0137258808,WIPO Case No. D2014-0918 and Comerica Incorporated v. Balticsea LLC / Contact Privacy Inc. Customer 0131519121,WIPO Case No. D2013-0932). On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainants have satisfied the requirements of the second element under the Policy. C. Registered and Used in Bad Faith The registration of the disputed domain name, which incorporates the Complainants’ trademark for ZENNI OPTICAL in its entirety, with the addition of a single character “n”, is clearly intended to mislead and divert consumers away from the Complainants’ official websites to the website linked to the disputed domain name. Given the Respondent’s intentional typosquatting, the Panel finds that the registration of the disputed domain name was obtained in bad faith. Moreover, even a cursory internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainants owned registered trademarks in ZENNI and ZENNI OPTICAL. In the Panel’s view, the preceding elements clearly indicate the bad faith of the Respondent, and the Panel therefore rules that it has been demonstrated that the Respondent registered the disputed domain name in bad faith. As to use of the disputed domain name in bad faith, the website linked to the disputed domain name displays what are presumed to be pay-per-click hyperlinks to third party providers of competing eyeglasses and optical products and services, which shows that the Respondent is misleading and diverting consumers for commercial gain to the websites of such competitors. This leads the Panel to conclude that the Respondent is using the disputed domain name in bad faith, to take unfair advantage of the Complainants’ trademarks. The Panel therefore rules that it has been demonstrated that the Respondent is using the disputed domain name in bad faith. Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainants have satisfied the requirements of the third element under 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 Deanna Wong Wai Man
Sole Panelist
Date: September 3, 2020
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