The Complainants are Taojing International Ltd., and Zenni Optical, Inc, China, represented by Green & Green Law Offices, United States of America (“United States”).
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2021. On November 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 2021, 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 Complainant on November 5, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 5, 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 November 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2021.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on December 2, 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 BackgroundTaojing International Ltd. owns several trademark registrations in many jurisdictions for ZENNI and for trademarks which include the term ZENNI, such as the following:
United States Trademark Registration No. 3.389.855 ZENNI, registered on February 26, 2008, in Int. class 9;
United States Trademark Registration No. 3.597.735 ZENNI OPTICAL, registered on March 31, 2009, in Int. classes 9 and 35; and
United States Trademark Registration No. 6.438.164 ZENNI.COM, registered on August 3, 2001, in Int. class 9.
Taojing International Ltd. licenses its trademarks and all URL rights therein to the United States corporation Zenni Optical, Inc. The latter is the operator of the web sites ZENNI and ZENNI OPTICAL which consist of computerized online store services in the field of eyeglasses, most of which are prescription, ophthalmic, visual correcting medical devices also called spectacles and related goods.
The disputed domain name
The Complainants claim that the disputed domain name is confusingly similar with the trademarks ZENNI, ZENNI OPTICAL and ZENNI.COM mentioned in paragraph 4 (Factual Background) in which the Complainants have rights; that the Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
The Complainants own the domain names
More specifically, the Complainants allege that the Respondent has no trademark or service mark rights to any ZENNI mark.
The web site to which the disputed domain name resolves contains PPC links that, in the terms of the Complainants, act like a referral catalogue of competing eyeglass sellers and directs Respondent’s users and enables them to just click on the Complainant’s competitors web sites.
The Respondent has made links without permission or license to Eye Glasses websites as a host that appears to offer glasses, classified as Medical Devices from ZENNI competition.
The disputed domain name
The Complainants’ representative sent a cease and desist letter to the Respondent which did not receive any answer, and failed to put an end to the Respondent’s bad faith use of the disputed domain name.
Finally, the Complainants request the Panel to issue a decision ordering that the disputed domain name be transferred to the Complainant.
B. RespondentThe Respondent did not reply to the Complainants’ contentions.
6. Discussion and FindingsAccording to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainants must prove each of the following, namely that:
(i) the disputed domain name is identical or confusingly similar with a trademark or service mark in which the Complainants has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
In the Panel’s view, the Complainants have a common legal interest against the Respondent for having registered the disputed domain name, and therefore considers that it is equitable and procedurally efficient for the Panel to grant the consolidation of their respective grievances in this administrative proceeding, as authorized by Paragraph 10(e) of the Rules. The Panel will refer to the Complainants as “the Complainant”.
A. Identical or Confusingly SimilarThe Panel is satisfied that the Complainant has proved that it has rights in the ZENNI, ZENNI OPTICAL and ZENNI.COM trademarks.
As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar with the trademark. The test involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
The Panel considers that the disputed domain name is confusingly similar with the Complainant’s ZENNI, and ZENNI OPTICAL trademarks.
The disputed domain name contains the Complainant’s trademark ZENNI in its entirety with the addition of “opticil”, a simple misspell and typosquatting of “optical”, which is clearly insufficient to prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks.
The generic Top‑Level Domain (“gTLD”) “com.” is viewed as a standard registration requirement and is generally disregarded under the first element confusing similarity test, as set forth in section 1.11 of WIPO Overview 3.0.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the ZENNI and ZENNI OPTICAL trademarks 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 InterestsPursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a 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 trademark 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, as it is put in section 2.1 of 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 disputed domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
There is no evidence in the present case that the Respondent has been commonly known by the disputed domain name, enabling it to establish rights or legitimate interests therein. The name of the Respondent does not resemble the disputed domain name in any manner.
Furthermore, there is no evidence in the file to prove any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other element to prove that the Respondent has legitimate interests or that it has established rights in the disputed domain name.
Likewise, and as further discussed under section 6.C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name – which is confusingly similar with the Complainant’s ZENNI and ZENNI OPTICAL trademarks – but rather that it intends to use the disputed domain name for the purpose of deriving unfair monitory advantage by confusing Internet users and leading them to believe that the site to which the disputed domain name relates is the official site of the Complainant.
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 disputed domain name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled.
C. Registered and Used in Bad FaithThe Panel is satisfied that the Respondent must have been aware of the Complainant’s trademarks ZENNI and ZENNI OPTICAL mentioned in paragraph 4 above (Factual Background) when it registered the disputed domain name on October 8, 2021.
The Complainant has submitted evidence to support its claim that the trademarks mentioned in paragraph 4 above were registered and used many years before the Respondent registered the disputed domain name.
The Respondent when registering the disputed domain name has targeted the Complainant’s trademarks by including the Complainant’s trademark ZENNI in its entirety and adding “opticil” which, as mentioned above, is a simple misspelling and typosquatting of “optical”, with the intention to confuse Internet users and capitalize on the fame of the Complainant’s name and trademark for its own monetary benefit.
The disputed domain name
The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain name is also a significant factor to consider that the disputed domain name was registered in bad faith (as stated in section 3.2.1 of WIPO Overview 3.0).
The Respondent’s failure to respond to the Complainant’s cease and desist letter sent on April 27, 2021 also supports an inference of bad faith in these circumstances.
The Panel finds that the Respondent has registered and uses the disputed domain intentionally to attempt to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s widely used ZENNI and ZENNI OPTICAL trademarks as to the source, sponsorship, affiliation, or endorsement. This amounts to bad faith under paragraph 4(b)(iv) 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
Miguel B. O'Farrell
Sole Panelist
Date: December 13, 2021