The Complainants are Taojing International, Ltd., Hong Kong, China (the “First Complainant”) and Zenni Optical, Inc., United States of America (“USA” or “US”) (the “Second Complainant”), represented by Green & Green Law Offices, USA.
The Respondent is Super Privacy Service LTD c/o Dynadot, USA / Shuo Wu, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2020. On July 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 14, 2020, 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 Complainants on July 17, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on July 20, 2020. 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 14, 2020. The Center appointed Karen Fong as the sole panelist in this matter on August 28, 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 First Complainant, based in Hong Kong, China, is the owner of the trade marks ZENNI and ZENNI OPTICAL and the Second Complainant, based in the USA is its exclusive licensee. The Complainants are in the business of operating an online retail eyewear and optical accessories shop under the websites “www.zenni.com” and “www.zennioptical.com” since 2002. For convenience, they will be referred to as the “Complainant” hereafter. The Complainant owns the ZENNI and ZENNI OPTICAL trade marks in many jurisdictions including in the USA, the European Union, and China. The trade marks submitted in evidence include the following: - US Trade Mark Registration No. 3389855 for ZENNI in class 9 registered on February 26, 2008; - US Trade Mark Registration No. 3597735 for ZENNI OPTICAL in classes 9 and 35 registered on March 31, 2009 (individually and collectively, the “Trade Marks”). The Respondent, based in China, registered the Domain Name on January 27, 2020. The Domain Name is connected to a website with pay-per-click links featuring the descriptions – “Prescription Eyeglasses”, “Prescription Frames” and the like, all being products and services identical to those of the Complainant (the “Website”). One of the link names also includes the Trade Mark, ZENNI. All the links resolve to websites of the Complainant’s competitors. The Complainant’s representatives sent a cease and desist letter to the Respondent on March 31, 2020. The Respondent did not respond. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Marks, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. General According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that: (i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name was registered and is being used in bad faith. 6.2. Substantive Analysis A. Identical or Confusingly Similar The Panel is satisfied that the Complainant has established that it has rights to the Trade Marks. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name. In this case, the Domain Name consists of a misspelling of the Trade Mark, ZENNI OPTICAL in that there is an extra “m” in between the two letters “n” in the word ZENNI. Section 1.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), states that a domain name which consists of a common, obvious, or intentional misspelling of a trade mark is considered by panels to be confusingly similar to the relevant mark for the purposes of the first element. In this case, the Trade Marks are clearly recognizable in the Domain Name. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”. It is viewed as a standard registration requirement (section 1.11 of the WIPO Overview 3.0). The Panel finds that the Domain Name is confusingly similar to the Trade Marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers. Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant. The Complainant contends that it is not affiliated with the Respondent and has not licensed or otherwise authorised the Respondent to use the Trade Marks or register the Domain Name or any domain name. Neither is the Respondent commonly known by the Domain Name. The Respondent’s unauthorised use of the Trade Mark in the Domain Name in relation to pay-per-click websites is not bona fide or legitimate noncommercial or fair use of the Domain Name. The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement. The Panel is satisfied that the Respondent must have been aware of the Trade Marks when it registered the Domain Name given the Trade Marks were registered prior to registration of the Domain Name, the Domain Name consists of a misspelling of the Trade Marks and the fact that the Website is a pay-per-click website which has links to websites of the Complainant’s competitors. It is implausible that the Respondent was unaware of the Complainant when it registered the Domain Name. In the WIPO Overview 3.0, section 3.2.2 states as follows: “Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.” The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Name is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). In light of the above, the Panel finds that registration is in bad faith. The Panel also finds that the actual use of the Domain Name is in bad faith. The Website is a pay-per-click site which has been set up for the commercial benefit of the Respondent. It is highly likely that Internet users when typing the Domain Name into their browser, or finding them through a search engine would have been looking for a site operated by the Complainant rather than the Respondent. The Domain Name is likely to confuse Internet users trying to find the Complainant’s official website. Such confusion will inevitably result due to the incorporation of the Trade Marks as the most prominent element of the Domain Name. The Complainant alleged that one of the Complainant’s sellers was actually confused and this was how the Complainant became aware of the Domain Name. However, no evidence was submitted to substantiate this. Notwithstanding this, it is clear that the Respondent employs the fame of the Trade Marks to mislead Internet users into visiting the Website instead of the Complainant’s. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s Website is authorised or endorsed by the Complainant. The Panel therefore also concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) 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 Karen Fong
Sole Panelist
Date: September 14, 2020
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