WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
1-800 Contacts, Inc. v. Imagemakers1
Case No. DTV2004-0003
1. The Parties
The Complainant is 1-800 Contacts, Inc. of Draper, Utah, United States of America, represented by Brinks Hofer Gilson & Lione of Chicago, Illinois, United States of America.
The Respondent is Imagemakers1 of California, United States of America.
2. The Domain Names and Registrar
The disputed domain names , and are registered with Network Solutions, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center ") on February 27, 2004. On March 2, 2004, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the domain names at issue. On March 5, 2004, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 11, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 5, 2004.
The Center appointed Mark Partridge as the sole panelist in this matter on May 10, 2004. 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
Complainant 1-800 Contacts, Inc. is a retailer of contact lenses. It has enjoyed $US300,000,000 in sales, and has spent more than US$60,000,000 in advertising for the mark 1800CONTACTS since 1995.
The 1800CONTACTS mark was registered on the Principal Register of the United States Patent and Trademark Office on January 21, 2003, (Reg. No. 2,675,866), based on an application filed July 8, 1999. Complainant also owns a registration of a related design mark containing 1800CONTACTS issued on July 13, 2003, (Reg. No. 2,731,114), based on an application filed October 2, 2000.
Respondent registered the Domain Names on February 27, 2003. Respondent's WHOIS listing for the registrations identifies a fictitious postal address, "privet, privet, privet, CA 90000, US.").
In December 2003 and January 2004, Respondent made unsolicited offers to sell said Domain Names to Complainant for US$11,500. When making the offer, Respondent said it was "going to start a company selling wall paper and contact paper but decided on something else." Complainant rejected the offer and sent a cease and desist letter to Respondent's email address demanding transfer of the Domain Names. Respondent did not respond to the demand.
5. Parties' Contentions
A. Complainant
Complainant contends that the Domain Names are confusingly similar to its 1800CONTACTS mark; that Respondent has no rights or legitimate interests in the Domain Names; and that Respondent registered and used the Domain Names in bad faith, as shown, inter alia, by Respondent's use of fictitious registration information and unsolicited offer to sell the Domain Names.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant's prior United States registrations established that Complainant owns rights in the trademark 1800CONTACTS. The Domain Names are confusingly similar to Complainant's mark, differing only in trivial ways that are not sufficient to rebut a finding in Complainant's favor.
B. Rights or Legitimate Interests
The record indicates that Respondent is not commonly known by any of the Domain Names, and there is no indication that Respondent owns any trademark or service mark rights in the Domain Names. Further, there is no indication that the Domain Names have been used for a bona fide offering of goods or services or for a legitimate noncommercial or fair use purpose.
The Policy recognizes that demonstrable preparations to make bona fide use before notice of any dispute may support a finding of legitimate interest in the Respondent's favor. Paragraph 4(c)(i). There is no evidence of such preparations here. Respondent's statement to Complainant, that it was "going to start a company" selling contact paper, is insufficient. First, a bald intention to use, even if plausible, does not, on its own, evidence "demonstrable preparations." Second, Respondent's stated intention is not plausible since the plural "contacts" is an unlikely choice for a store selling "contact" paper. Instead, Respondent's statement reads merely as a pretext to avoid an adverse finding under the Policy.
C. Registered and Used in Bad Faith
The Policy indicates that evidence of bad faith registration and use includes circumstances that indicate a domain name was acquired for the purpose of selling the domain name to the owner of a corresponding trademark for an amount in excess of out-of-pocket costs. Paragraph 4(b)(i).
Here, Respondent made an unsolicited offer to sell the Domain Names to the owner of the corresponding trademark for an amount well in excess of any reasonable cost incurred in acquiring the Domain Names. These circumstances demonstrate bad faith registration and use of the Domain Names, and no evidence has been presented to contradict that finding.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names , and be transferred to the Complainant.
Mark Partridge
Sole Panelist
Dated: May 14. 2004
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