The Complainants are Taojing International Ltd., Hong Kong, China and Zenni Optical, Inc., United States of America (“United States”), represented by Green & Green, United States.
The Respondent is Domain Whois Protect Service, C/O Email Contact at Domainwhoisprotect, India / Hemang Infrasructure Private Limited, India.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2021. On October 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On October 26, 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 the Complainants on December 13, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainants filed an amended Complaint on December 13, 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 the Respondent of the Complaint, and the proceedings commenced on December 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2022.
The Center appointed Nick J. Gardner the sole panelist in this matter on January 26, 2022. 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 BackgroundThe Complainants manufacture and sell a range of spectacles and eyewear. The Complainant Taojing International Ltd. is the owner of numerous trademarks for the word ZENNI, see for example, United States Trademark Registration No. 3,389,855 for the mark ZENNI filed on June 7, 2005, registered on February 26, 2008, with first use in commerce claimed from September 30, 2002. These trademarks are referred to as the ZENNI trademark in this decision. It also owns trademarks for the words ZENNI OPTICAL in various jurisdictions, see for example, United States Trademark Registration No. 3,597,735 for the trademark ZENNI OPTICAL filed on June 12, 2008, registered on March 31, 2009, claiming first use in commerce from September 30, 2002. This trademark is referred to as the ZENNI OPTICAL trademark in this decision. The Complainant Zenni Optical, Inc. is the exclusive licensee for the aforesaid trademarks of the Complainant Taojing International Ltd.
The Complainants own the domain names
The Disputed Domain Names were registered on September 15, 2006, and April 13, 2007, and resolve to websites (the “Respondent’s Websites”) which are in substance parking pages comprising a number of click through links to third party sites offering eyewear for sale. The Panel infers these sites are probably automatically generated.
5. Parties’ Contentions A. ComplainantA significant proportion of the Complaint is directed at what the Complainants describe as “deep links” by which it means the content of websites which are linked to via click through links which appear on the Respondent’s Websites. The Panel is not convinced this analysis is helpful or particularly relevant. It seems likely to the Panel that the Respondent’s Websites are standard “parking pages” containing algorithmically generated links to third party sites. The fact that this occurs is relevant for reasons discussed below, but further analysis of the third party sites in question is not, in the Panel’s opinion, of significant relevance. Ultimately given the Panel’s analysis (see below) it does not matter. The Panel does not propose to repeat the Complainants’ submissions on this issue nor address it in its analysis.
The Complaint is set out in considerable detail but the essence of the Complainants’ case is as follows.
The Complainants say that for the purposes of this dispute, the interests of the Complainants are co‑extensive, and their grievance against the Respondent arises from common legal interests.
Each of the Disputed Domain Names is confusingly similar to the Complainants’ trademarks. They are each manifestly typographical variations of the Complainants’ trademark and clearly deliberately chosen as such.
The Respondent has no rights or legitimate interests in the ZENNI trademark or the ZENNIOPTICAL trademark or any misspelling of either of these.
The Disputed Domain Names have been registered and are being used in bad faith. The Complainants make numerous points in this regard but in conclusion say that it is certain from the nature of the Respondent’s use of the confusingly similar and almost identical Disputed Domain Names that the Respondent is intentionally attempting to attract for commercial gain, Internet users to the Respondent’s Websites or other on-line location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Websites or location or of a product or service on the Respondent’s Websites or location. They also say some of the links on the Respondent’s Websites link to the Complainants’ own website and this amounts to the Respondent fraudulently deriving click through revenue from the Complainants themselves.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings 6.1. Preliminary Matters A. Joint ComplainantsThe Panel accepts the Complainants’ submission that for the purposes of this dispute, the interests of the Complainants are co-extensive, and their grievance against the Respondent arises from common legal interests. The Panel agrees that it is equitable and procedurally efficient to consolidate the claims of Taojing International Ltd. and Zenni Optical, Inc. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 4.11.1 and panel decisions cited therein.
B. No ResponseThe Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909).
C. Respondent IdentityThe Panel also notes this is a case where one Respondent (Domain Whois Protect Service, C/O Email contact at domainwhoisprotect) appears to be a privacy or proxy service. The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview 3.0 at section 4.4.5, as follows:
“Panel discretion
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case, the Panel considers the substantive Respondent to be HEMANG INFRASRUCTURE PRIVATE LIMITED and references to the Respondent are to that person.
6.2. Substantive MattersParagraph 4(a) of the Policy states that the Complainants must prove each of the three following elements in respect of the Disputed Domain Names: (i) the Disputed Domain Names are identical to 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 the Disputed Domain Names; (iii) the Disputed Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly SimilarThe Panel finds that the Complainants have rights in the ZENNI OPTICAL trademark. The Panel finds that each of the Disputed Domain Names is confusingly similar to the ZENNI OPTICAL trademark. Each of the Disputed Domain Names is manifestly a typographical variation of the Complainants’ trademark.
The Panel agrees in this regard with the approach set out in WIPO Overview 3.0, section 1.9, namely:
“Is a domain name consisting of a misspelling of the complainant’s trademark (i.e., typosquatting) confusingly similar to the complainant’s mark?
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.”
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Names for the purpose of determining whether they are identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
Accordingly, the Panel finds that the Disputed Domain Names are confusingly similar to the Complainants’ trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interests in a domain name:
“(i) before any notice to you 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 organisation) 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 to tarnish the trademark or service mark at issue.”
None of these apply in the present circumstances. The Complainants have not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use the ZENNI OPTICAL trademark. The Complainants have prior rights in the ZENNI OPTICAL trademark, as the Complainants have been using it in commerce since 2002, which precedes the registration of the Disputed Domain Names in 2006 and 2007. The Complainants have therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names and thereby the burden of production shifts to the Respondent to produce relevant evidence demonstrating any rights or legitimate interests in respect of the Disputed Domain Names (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). The Panel finds that the Respondent has failed to produce any evidence to establish any rights or legitimate interests in the Disputed Domain Names. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad FaithIn the present circumstances, the Panel concludes that the Respondent chose to register domain names that are confusingly similar to the Complainants’ ZENNI OPTICAL trademark in order to attract Internet traffic when Internet users seeking the Complainants make a typographical mistake. Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Panel concludes that 4(b)(iv) applies as the Disputed Domain Names are likely to attract Internet traffic because of confusion with the Complainants’ trademark, and the Respondent derives commercial gain as a result. The Respondent’s Websites linked to the Disputed Domain Names comprise a series of Pay-Per-Click (“PPC”) links to other third-party websites. The Panel infers that some consumers, once at these websites will follow the provided links and click through to other sites which offer products some of which may compete with those of the Complainants. The Respondent presumably earns click-through linking revenue as a result. The Panel infers the Websites could be automatically generated. This does not however matter. It is well established that where a domain name is used to generate revenue in respect of click-through traffic, and that traffic has been attracted because of the domain name’s association with the complainant, such use amounts to use in bad faith, see for example Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald’s Corporation v. ZusCom,WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396.
See also WIPO Overview 3.0, section 3.5:
“Can third-party generated material ‘automatically’ appearing on the website associated with a domain name form a basis for finding bad faith?
Particularly with respect to ‘automatically’ generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests).
Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.”
The further fact that some of those links lead to the Complainants’ own website means the Internet users are in effect paying click through revenue (likely) to the Respondent to finally reach the Complainants’ own website, and affirms that the traffic is attracted because of the association of the Disputed Domain Names with the Complainants. This is an additional way in which the Respondent derives a commercial gain and leads to a finding of bad faith.
Accordingly, the Panel finds the Respondent has registered and used the Disputed Domain Names in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.
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,
Nick J. Gardner
Sole Panelist
Date: February 9, 2022