Complainant is Taojing International Limited, Hong Kong, China, and Zenni Optical, Inc., United States of America (“United States”), represented by Green & Green Law Offices, United States.
Respondent is Registration Private, Domains By Proxy, LLC, United States, / Steven Williams, United States.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2021. On August 31, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 31, 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 Complainant on September 2, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on September 2, 2021.
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 Respondent of the Complaint, and the proceedings commenced on September 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2021. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on September 29, 2021.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on October 6, 2021. 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.
On October 7, 2021, Complainant submitted an unsolicited supplemental filing. The Panel will duly consider this filing below.
4. Factual BackgroundComplainants are a Hong Kong, China company that is owner of various marks comprising the sign ZENNI and an American company that is its worldwide exclusive licensee, offering corrective eyeglasses and related goods and services under the ZENNI and ZENNI OPTICAL marks. Complainant Taojing International Limited is the proprietor of numerous trademark registrations, including the following:
- United States Trademark Registration No. 3389855 for ZENNI (word mark), registered on February 26, 2008, for goods in class 9;
- United States Trademark Registration No. 3597735 for ZENNI OPTICAL (word mark), registered on March 31, 2009, for goods and services in classes 9 and 35.
- United States Trademark Registration No. 6438164 for ZENNI.COM (word mark), registered on August 3, 2021, for goods in class 9.
Complainant Zenni Optical, Inc. operates its primary business websites at the domains “www.zennioptical.com” and “www.zenni.com”.
The disputed domain names were registered on the following dates:
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The disputed domain names redirect to the website of Warby Parker, an American company offering corrective eyeglasses.
The record contains a copy of a cease-and-desist letter sent to Registrar by Complainants dated August 17, 2021. The record does not reflect a response to this letter.
5. Parties’ Contentions A. ComplainantComplainants’ contentions may be summarized as follows.
Complainants request consolidation of the proceedings for the following reasons. Complainants have a common grievance against Respondent because Complainant Taojing International Limited is the owner of the trademarks which it licenses exclusively to Zenni Optical, Inc., which is the operator of the websites located at the domain names
Complainants request admission of an unsolicited supplemental filing containing a cease-and-desist letter from counsel for Warby Parker Inc. to Respondent dated September 23, 2021. In this letter, counsel asserts that Warber Parker Inc. is the proprietor of United States trademark registrations for the WARBY PARKER mark and operates a consumer retail website at “www.warbyparker.com”. Counsel demands that Respondent cease using the disputed domain names to redirect to the Warby Parker website. The letter requests a response from Respondent by September 30, 2021. The filing does not reflect Respondent’s response thereto.
Under the first element, Complainants state that Complainant Taojing International Limited is the proprietor of the famous trademarks ZENNI, ZENNI OPTICAL, and ZENNI.COM, which it has registered in various jurisdictions since 2002. Complainant Zenni Optical, Inc. operates online retail stores in the field of eyeglasses in numerous countries including the United States. These goods are also offered through Amazon.com, Inc. The disputed domain names contain Complainant’s marks. The manner of using the disputed domain names to redirect to the website of Complainants’ competitor Warby Parker infringes Complainant’s trademark rights.
Under the second element, Complainants state that Respondent has used Complainants’ marks to created the disputed domain names, which redirect to the website of Complainants’ competitor. Complainants believe that Respondent is receiving payments for click-throughs that convert to customer purchases. Said conduct is fraudulent and deprives Internet users of the full benefits of Complainants’ goods and services. Complainants also believe that Respondent uses its links to the Warby Parker website to gather information on Complainants’ customers. Respondent has no connection to Complainants.
Under the third element, Complainants state that the disputed domain names are being offered for sale. The competition between Complainant and Warby Parker, which has been reported in the press, is being used by Respondent to misdirect Internet users to the Warby Parker website. Respondent gains income from any purchases made on that site following the click-through. The disputed domain names were registered to prevent Complainants from reflecting the marks in a corresponding website, and were registered for the primary purpose of disrupting the business of Complainant. Complainants submit evidence that Warby Parker Inc., the owner of the website to which the disputed domain names redirect, also objects to said conduct.
Complainants request transfer of the disputed domain names.
B. RespondentRespondent did not reply to Complainants’ contentions.
6. Discussion and Findings 6.1 Preliminary Issues A. Consolidation of Multiple ComplainantsPursuant to paragraph 10 of the Rules:
(a) the Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.
(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
[…]
(e) A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.
The principles to assess a request to consolidate multiple complainants are set forth in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1.
Noting the circumstances of the case, the Panel considers that Complainants have demonstrated that they have a specific common grievance against Respondent. Complainant Taojing International Limited is the owner of the trademarks at issue, and Complainant Zenni Optical, Inc. is the exclusive licensee of the trademarks at issue. Respondent does not challenge Complainants’ assertions to this effect. The Panel finds that, under the circumstances, it would be equitable and procedurally efficient to permit the consolidation. Accordingly, the Panel accepts Complainants’ request to consolidate the present proceedings pursuant to the Rules, paragraph 10(e). Complainants are hereinafter referred to as “Complainant”.
B. Supplemental FilingThe Panel has a duty to “ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”, Rules, paragraph 10(b). To this end, pursuant to paragraph 12 of the Rules, “the Panel may request, at its sole discretion, further statements or documents from either of the Parties”.
At the same time, however, pursuant to Paragraph 10(c) of the Rules, “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition”. Accordingly, unsolicited supplemental filings are generally discouraged. Exceptionally, they may be accepted to consider material new evidence or to provide a fair opportunity to respond to arguments that could not reasonably have been anticipated. See WIPO Overview 3.0, Section 4.6, and cases cited thereunder.
Complainant’s supplemental filing contains a copy of a cease-and-desist letter sent by counsel for Warby Parker Inc. to Respondent objecting to Respondent’s use of the disputed domain names to redirect to the Warby Parker website. The letter is dated September 23, 2021, a date following the commencement of these proceedings. In the view of the Panel, this letter constitutes relevant new evidence to support the assertions in the Complaint. The Panel additionally notes that the filing was provided during the time the Panel was considering the case. Respondent was provided with a copy of the unsolicited filing by Complainant at the contact information supplied by the Registrar but the Center has not received Respondent’s response to it.
The Panel therefore shall take into consideration the supplemental filing made by Complainant.
6.2 Substantive IssuesParagraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) Respondent has registered and is using the disputed domain names in bad faith.
A. Identical or Confusingly SimilarComplainant has provided evidence establishing that it has trademark rights in the ZENNI, ZENNI OPTICAL, and ZENNI.COM marks through registrations in the United States and other jurisdictions. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview 3.0, section 1.2.1.
In comparing Complainant’s marks with the disputed domain names, the Panel finds that the disputed domain names are confusingly similar to Complainant’s marks. Each disputed domain name comprises Complainant’s ZENNI or ZENNI OPTICAL mark in their entirety.
It is the well-established view of UDRP panels that the generic Top-Level Domains, in this case, “.store”, “.online”, “.vision”, “.xyz”, and “.company,” are viewed as a standard registration requirement and as such are generally disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsThe circumstances stated in the Complaint and evidence in support set forth in the annexes thereto indicate that Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not authorized by Complainant and has no trademark rights in the ZENNI or ZENNI OPTICAL marks. The disputed domain names contain Complainant’s marks in their entirety, thereby suggesting sponsorship or endorsement by the trademark owner. Further, the gTLDs selected clearly imply a connection with Complainant as a proprietor of an online shop selling corrective eyewear. Such use cannot confer rights or legitimate interests. See, for example, WIPO Overview 3.0, section 2.5.1.
Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain names.
Respondent has not provided evidence of any rights or legitimate interests. There is no evidence that Respondent is commonly known by the disputed domain names, or that there are any circumstances or activities that would establish Respondent’s rights therein. The disputed domain names redirect to the website of Complainant’s competitor. There is no evidence that the disputed domain names have been registered or are being used for a legitimate noncommercial purpose. Rather, the evidence clearly demonstrates that Respondent is using the disputed domain names to confuse Internet users by redirecting them to the website of Complainant’s competitor. Such conduct is clearly misleading and cannot confer rights or legitimate interests on Respondent. See WIPO Overview 3.0, section 2.5.3, and cases cited thereunder.
Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of a disputed domain name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds that Complainant has demonstrated Respondent’s bad faith registration and use of the disputed domain names. Complainant’s rights in its ZENNI and ZENNI OPTICAL marks predate the registration the disputed domain names by approximately a decade. The disputed domain names reflect Complainant’s ZENNI and ZENNI OPTICAL marks in their entirety, together with gTLDs that imply a connection to Complainant. On this evidence, the Panel finds that Respondent was aware of Complainant when registering the disputed domain names.
The Panel finds that Respondent has demonstrated bad faith by using the disputed domain names to redirect Internet users to the website of Complainant’s competitor. The record contains evidence that said competitor also objects to these actions as an infringement of trademark rights. Respondent has provided no evidence of actual or contemplated good-faith use of the disputed domain names, nor does the Panel find that any such use is plausible. Moreover, Respondent has concealed his identity and failed to respond to Complainant’s cease-and-desist letter. All these factors support a holding of bad faith registration and use of the disputed domain name. See WIPO Overview 3.0, section 3.1.4, and cases cited thereunder.
The Panel therefore finds that Complainant has established the third element under paragraph 4(a) of the Policy.
7. DecisionFor 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,
Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: October 20, 2021