Complainant is Vision Service Plan d/b/a VSP Corporation and Eyefinity, Inc., United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
Respondent is Robert Stewart, Hush IP LLC, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2021. On October 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on October 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 27, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 28, 2021.
The Center appointed Phillip V. Marano as the sole panelist in this matter on December 1, 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.
4. Factual BackgroundEstablished in 1955 in Oakland, California, United States, VSP Corporation is a vision care health insurance company operating in one hundred countries, including the United States. Eyefinity, Inc. is a subsidiary of VSP Corporation which offers optometry practice management and cloud-based electronic health record services. (As discussed below, VSP Corporation and Eyefinity, Inc. are herein together referred to as “Complainant”.) Complainant owns valid and subsisting registrations for the EYEFINITY trademark in numerous jurisdictions, including the trademark for EYEFINITY, United States Reg. No. 2559899, which was registered on April 9, 2002.
The disputed domain name was registered on February 25, 2016. At the time this Complaint was filed, the disputed domain name resolved to a pay-per-click website with hyperlink advertisements, including “Find Me an Eye Doctor”, “Vision Providers”, and “Vision Center”, all to goods and services in competition with Complainant.
5. Parties’ Contentions A. ComplainantComplainant asserts ownership of the EYEFINITY trademark and has adduced evidence of trademark registrations in numerous jurisdictions around the world, including in the United States, since 2002. The disputed domain name is confusingly similar to Complainant’s EYEFINITY trademark, according to Complainant, because it contains the EYEFINITY trademark in its entirety, with one typographical error: transposition of the letters “i” and “t” near the end of the disputed domain name.
Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: the lack of any trademark assignment, license, sale, transfer, or authorization between Complainant and Respondent; the lack of any evidence that Respondent is known by the disputed domain name or holds any trademark rights in the disputed domain name; Respondent’s commercial use of the disputed domain name to resolve to a website including hyperlink advertisements for third-party services in competition with Complainant; and Respondent’s intention to confuse Internet users by employing a letter inversion misspelling in the disputed domain name.
Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including: the similarity between the disputed domain name and Complainant’s EYEFINITY trademark; Respondent’s monetization of the disputed domain name through a pay-per-click parking website with hyperlinks to services in competition with Complainant; and Respondent’s intentional letter transposition typosquatting of the EYEFINITY trademark.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsTo succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy:
i. the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights; and
ii. 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.
Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 (“A respondent’s default would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true […] UDRP panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g. where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); see also The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a)”).
In addition, affiliates and trademark licensees can be considered to have rights in a trademark under the UDRP for the purposes of standing to file a complaint. WIPO Overview 3.0, Section 1.4. UDRP panels most often have accepted consolidated complaints in situations where multiple complainants have demonstrated common legal interests in the trademark rights on which a complaint is based, typically involving commonality based on an agency, licensing, or affiliate relationship between the co-complainants. See, e.g., ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc.,WIPO Case No. D2008-0936. The Panel finds that for the purpose of this dispute, the interests of the two Complainants are co-extensive based on the parent-subsidiary affiliate relationship between VSP Corporation and Eyefinity, Inc., and that it is appropriate for them to proceed as joint Complainants. See, e.g., Vision Service Plan d/b/a VSP Corporation and Eyefinity, Inc. v. Privacy.co.com Privacy ID# 845818, Savvy Investments, LLC Privacy ID# 845818,WIPO Case No. D2019-2497; Volkswagen Group of America, Inc. v. Kim Hyeonsuk a.k.a. Kim H. Suk, Domain Bar, Young N. and Kang M.N., WIPO Case No. D2014-1596; Starwood Hotels & Resorts Worldwide Inc., et. al. v. Media Insight a/k/a Media Insights,WIPO Case No. D2010-0211 (“The consolidation of multiple complainants in a single complaint generally should be permitted if the complainants have a truly common grievance against the respondent, and it is equitable and procedurally efficient to do so.”)
A. Identical or Confusingly SimilarOwnership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0, section 1.2.1. Complainant submitted evidence that the EYEFINITY trademark has been registered in numerous jurisdictions, including the United States, since 2002, long before the disputed domain name was registered by Respondent. Thus, the Panel finds that Complainant’s rights in the EYEFINITY trademark have been established pursuant to the first element of the Policy.
The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s EYEFINITY trademark. In this Complaint, the disputed domain name is confusingly similar to Complainant’s EYEFINITY trademark because, disregarding the “.com” generic Top-Level Domain (“gTLD”) and the transposition of two letters, the trademark is effectively contained in its entirety within the disputed domain name. WIPO Overview 3.0, section 1.7. (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name […] [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar [...]”). In regards to gTLDs, such as “.com” in the disputed domain name, they are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0, section 1.11.
It is well established that domain names which consist of common, obvious, or intentional misspellings of trademarks are considered to be confusingly similar for the purposes of the first element of the Policy. WIPO Overview, section 1.9 (“Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters […] (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers”). See, e.g., Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043 (“This is clearly a ‘typosquatting’ case where the disputed domain name is a slight misspelling of a registered trademark to divert internet traffic […] In fact, the domain name comprises the Complainant’s trademark […] with a single misspelling of an element of the mark: a double consonant ‘s’ at the end.”). In this Complaint, the disputed domain name is a typographical variation of the EYEFINITY trademark where the letters “i” and “t” are merely transposed.
In view of, Complainant’s registration for the EYEFINITY trademark, Respondent’s incorporation of that trademark into the disputed domain name, and Respondent’s clear attempt at typosquatting on the EYEFINITY trademark, the Panel concludes that Complainant has established the first element of the Policy.
B. Rights or Legitimate InterestsComplainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview 3.0, section 2.1.
It is evident that Respondent, identified by WhoIs data for the disputed domain name as “Robert Stewart” and “Hush IP LLC”, is not commonly known by the disputed domain name or Complainant’s EYEFINITY trademark.
Service of pay-per-click advertisements through the disputed domain name attempts to trade off the goodwill of Complainant and accordingly cannot constitute any bona fide offering of goods or services using the disputed domain name. WIPO Overview 3.0, section 2.9 (Unless “genuinely related to the dictionary meaning” of the disputed domain, “[pay-per-click] links do not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of Complainant’s mark or otherwise mislead Internet users.”) See, e.g., Volkswagen AG v. Privacy Protection Services,WIPO Case No. D2012-2066 (use of a domain name in connection with a web page that “only contains advertisements as sponsored links” is “for presumed commercial gain”); Zions Bancorporation v. Domain Administrator, Fundacion Private Whois,WIPO Case No. D2014-0465 (“a parking website containing sponsored links […] cannot be considered either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name as the Respondent is unduly profiting from the Complainant’s goodwill by misleading Internet users to its website”); and Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck,WIPO Case No. D2014-0206 (a disputed domain name “pointing to awebsite featuring PPC [pay-per-click] links […] could not be construed as a bona fide orlegitimate noncommercial or fair use”). Here, Respondent’s use of the disputed domain name to resolve to a website with pay-per-click advertisements for services in direct competition with Complainant cannot constitute any bona fide offering of goods or services.
In view of the absence of any evidence supporting any rights or legitimate interests in the disputed domain name, and Respondent’s attempts to misdirect Internet traffic to advertisements for services in direct competition with Complainant by trading off the goodwill of Complainant’s EYEFINITY trademark, the Panel concludes that Complainant has established the second element of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name:
i. circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or
ii. Respondent has registered the disputed domain name in order to prevent the owner of the trademark 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.
Respondent registered the disputed domain name on February 25, 2016, long after Complainant registered its EYEFINITY trademark in the United States.
In addition, use of a domain name incorporating Complainant’s trademark to redirect Internet users to Respondent’s website, containing pay-per-click hyperlinks to services in direct competition with Complainant, serves as strong evidence of bad faith under paragraph 4(b)(iv) of the Policy. WIPO Overview 3.0, section 3.1.4 (“Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: […] seeking to cause confusion for respondent’s commercial benefit, even if unsuccessful […] the lack of a respondent’s own rights to or legitimate interests in a domain name [or] redirecting the domain name to a different respondent-owned website. […]”). Here, the disputed domain name misappropriates Complainant’s EYEFINITY trademark and resolves to Respondent’s website that contains pay-per-click advertisements like “Vision Providers” for services in direct competition with Complainant. Accordingly, the Panel finds that use of the disputed domain name will divert potential customers from Complainant’s business to the website under the disputed domain name by attracting Internet users who mistakenly believe that the disputed domain name is affiliated with Complainant, and which may further mistakenly believe that the services offered on this website are authorized services offered by Complainant, or by an entity licensed by Complainant.
>Furthermore, the act of “typosquatting” or registering a domain name that is a common misspelling of a mark in which a party has rights has often been recognized as evidence of bad faith registration per se. WIPO Overview 3.0, section 3.2.1 (“Particular circumstances UDRP panels take into account in assessing whether the respondent’s registration of a domain name is in bad faith include: (i) the nature of the domain name (e.g., a typo of a widely known mark […]”). See also Paragon Gifts, Inc. v. Domain.Contact,WIPO Case No. D2004-0107 (citing National Association of Professional Baseball Leagues, d/b/a Minor League Baseball v. Zuccarini,WIPO Case No. D2002-1011); ESPN, Inc. v. XC2,WIPO Case No. D2005-0444 (finding that the practice of “typosquatting”, of itself, is evidence of the bad faith registration of a domain name). The Panel concurs with this approach. It is evident that Respondent registered and used the typosquatted disputed domain name to intentionally attract, for commercial gain, Internet users to the website linked to disputed domain name in a manner that confuses and misleads Internet users. Thus, the Panel infers Respondent’s bad faith based on the fact that the Respondent is trying to gain profit of mistakes such as typographical errors made by Internet users, when inputting the expression “eyefintiy”, mistakenly transposing the letters “i” and “t”, instead of “eyefinity” into a web browser.
Finally, this Complaint presents a quintessential example where Respondent has engaged in a pattern of bad faith registration and use within paragraph 4(b)(ii) of the Policy. WIPO Overview 3.0, section 3.1.2. (“This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names, even where directed at the same brand owner.”) The Panel has noted several UDRP cases where Respondent was found to have registered and used domain names in bad faith, all of which resulted in decisions against Respondent. These cases demonstrate that Respondent has repeatedly targeted in bad faith well-known third party trademarks. See, e.g., Andrey Ternovskiy dba ChatRoulette v. Robert Stewart / Hush IP LLC,WIPO Case No. D2018-1680; Lego Juris A/S v. Robert Stewart, Hush IP LLC,WIPO Case No. D2016-1314.
In view of the conclusion that Respondent is a serial cybersquatter, Respondent’s typosquatting on Complainant’s EYEFINITY trademark, and Respondent’s attempts to misdirect Internet traffic to advertisements for services in direct competition with Complainant by trading off the goodwill of Complainant’s EYEFINITY trademark, the Panel concludes that Complainant has established the third element 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 name
Phillip V. Marano
Sole Panelist
Date: December 15, 2021