ECCA Enterprises, Inc. v. Eyefinity
Claim Number: FA0905001261978
Complainant is ECCA Enterprises, Inc. (“Complainant”), represented by J.
Daniel Harkins, of Cox Smith Matthews Incorporated,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <visionworkseyecare.org>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 8, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 11, 2009.
On May 11, 2009, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <visionworkseyecare.org> domain name is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 12, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 1, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on June 22, 2009.
On June 25, 2009 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant alleges that the domain name <visionworkseyecare.org> should no longer be registered with Respondent but that it should be transferred to Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is confusingly similar to Complainant’s registered trademark VISIONWORKS, Respondent has no rights or legitimate interests in the domain name and it has been registered and subsequently used in bad faith. Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to Complainant.
In support of its case on the first of these three elements, Complainant relies on the registered VISIONWORKS trademark to which reference has already been made (“the VISIONWORKS mark”) and says that the domain name is confusingly similar to the trademark.
Complainant then contends, to establish the second element, that Respondent has no rights or legitimate interests in the domain name because when it registered the domain name Respondent had constructive notice of Complainant’s registered VISIONWORKS mark because a search would have shown that the mark was a registered trademark of Complainant, Complainant’s domain name <visionworkseyewear.com> was registered prior to the registration of Respondent’s domain name <visionworkseyecare.org>, Respondent did not reply to Complainant’s efforts to resolve the dispute, the parties have never had a business relationship of any kind and Complainant has never granted a licence for use of its trademark to Respondent.
Finally, Complainant contends that the domain name was registered and is being used in bad faith. It contends that this is so because Respondent registered the disputed domain name 20 years after Complainant filed its federal registration for the VISIONWORKS mark and Respondent was therefore on constructive notice of Complainant’s rights in the mark prior to registration and use of the domain name; Respondent has used the VISIONWORKS mark on its web page to derive profit; the disputed domain name is but a few letters different from Complainant’s domain name; Respondent’s conduct shows an intent to divert internet users to Respondent’s site for commercial gain; Respondent has evinced an intention to sell the domain name; and Respondent is not making fair use of the domain name by using it as part of a legitimate business.
The Response is in the form of a written
submission from Dr Jennifer Patterson an optometrist in private practice at one
location which is in Frisco in the State of
Dr Patterson makes the following points. She
registered the name Vision Works Eyecare, P.A. with the Texas Secretary of
State in 2003. The only conflict or confusing similarity of which she was
advised was that there was a company in
The domain name, <visionworkseyecare.org>, reflects the name of her optometric practice. She did not register the name to sell the name.
VISIONWORKS has asked her to release <visionworks.com>, which she does not own. Her domain name has always had the suffix <.org>, not <.com>.
VISIONWORKS does not have any opticals in
VISIONWORKS does not offer eye care, perform eye examinations or treat eye disease.
Complainant uses VISIONWORKS as one word, whereas Dr Patterson’s practice uses the name and Vision Works Eyecare, P.A.
Complainant claims that the Respondent is trying to benefit from a confusingly similar name, but she, Dr Patterson did not know about Complainant when she registered the name.
Complainant does not have locations in
Respondent has a completely different business model from Complainant.
She is open to placing a disclaimer on her website that states that she no affiliation with Complainant or VISIONWORKS.
She did not offer to sell the domain name. She was asked to give up her domain name and completely change the name of her business. Dr Patterson had replied that if Complainant wanted her to change her name after practicing under that name and building name recognition in Frisco for six years, there would be a significant cost for her to change everything to a new name, including new signs, business cards, scrubs for employees, bags, eyeglass cases, branded solutions, cleaning cloths, logo design, advertising mailers to notify my patients of the new name and other items. She had responded that all of those things would cost her around $50,000 and if Complainant wanted her to change her business name, she would do so if Complainant would pay for the changes.
She had never intended, nor did she understand how she might have confused potential patients.
Dr Patterson also contends that if one searches the internet for ‘vision works’ or ‘visionworks online’, the website invites potential clients to enter their zip code to find promotional offers. If the user enters 75034, the zip code for Dr Patterson’s area, the user will be directed to EyeMasters, another of the Complainant’s companies making special offers. This is actually more detrimental to her office. Patients here do not know that there is an optical chain in another state named VISIONWORKS. When they are searching for Dr Patterson’s office, the ECCA website tops the list and directs them to her immediate competition at EyeMasters across the street.
Complainant is a supplier of optical goods
and services in the
Complainant is the registered proprietor of the trademark Registered No. 1,339,695 for VISIONWORKS, registered with the United States Patent and Trademark Office (“USPTO”) on June 4, 1985.
Respondent is an
optometrist in private practice in
Respondent registered the disputed domain name on August 19, 2004.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant
has established rights in the VISIONWORKS mark pursuant to Policy ¶ 4(a) (i)
through Complainant’s registration of the mark with the United States Patent
and Trademark Office (“USPTO”) (Reg. No. 1,339,695 issued June 4, 1985). See
Complainant argues that the domain name <visionworkseyecare.org> is confusingly similar to Complainant’s VISIONWORKS mark. The Panel finds that the disputed domain name contains Complainant’s mark in its entirety, adds “eyecare,” a generic term with an obvious relationship to Complainant’s business, and adds the generic top-level domain (“gTLD”) “org.”
It is now well established that the addition of generic terms, especially generic terms with an obvious relationship to a complainant’s business operation, create a confusing similarity between the disputed domain name and the mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly similar to the complainant's mark since it merely adds the word “auction” used in its generic sense).
The question therefore resolves itself into whether in the present case the word ‘eyecare’ has an obvious relationship to Complainant’s business operation. Put in different words, the question is whether an objective bystander, comparing the disputed domain name and the trademark, would assume that the word ‘eyecare’ covered the nature of the business in which Complainant was engaged. The matter is not completely free from doubt, for a company using the trademark VISIONWORKS might be engaged in a business other than optometry. But in the opinion of the Panel and on the balance of probabilities, some internet users would assume that the domain name as a whole was referring to the business activities of Complainant. As such the domain name is confusingly similar to the trademark.
The Panel also finds that the addition of a gTLD such as ‘.org’ is irrelevant in distinguishing a disputed domain name from a registered mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) and Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000).
Accordingly, the Panel finds that Respondent’s <visionworkseyecare.org> domain name is confusingly similar to Complainant’s VISIONWORKS mark and Complainant has made out the first of the three elements that it must establish.
Under paragraph Policy ¶ 4(a) (ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the disputed domain name.
But by virtue of Policy ¶ 4(c), it is open to a respondent to establish its rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] 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.
Thus, if Respondent proves any of these elements or indeed anything else that shows that it has a right or interest in the disputed domain name, Complainant will have failed to discharge its onus and the Complaint will fail.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under paragraph 4(a) (ii) of the Policy and then the burden shifts to Respondent to show that it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Panel finds that Complainant has made out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. That prima facie case arises from the following circumstances: the domain name incorporates the whole of the VISIONWORKS mark; the trademark was registered on June 4, 1985 , but the domain name was not registered by the Respondent until August 19, 2004 by which time the Complainant had been using the mark for almost 20 years and had acquired at least some prominence in its field; the parties have never had a business relationship of any kind and Complainant has never granted a licence for use of the VISIONWORKS mark to Respondent.
That being so, the burden of proof then shifts to the Respondent to show on the balance of probabilities that it has a right or legitimate interest in the domain name.
The Panel finds that Respondent has discharged its burden and that it has a right or legitimate interest in the domain name. That is so for the following reasons.
Respondent’s argument, which the
Panel accepts, is first, that before it registered the domain name it made
reasonable inquiries as to whether it could legitimately register the name
Vision Works Eyecare by inquiring of the Secretary of State for
Secondly, as has been seen above, Respondent will have established a right or legitimate interest in the domain name if it can show:
“4(c)…(i) before any notice … of the dispute … 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…”
The evidence is that notice of the dispute was received by Respondent shortly after February 8, 2008 when the first cease and desist letter was sent by Complainant’s lawyers to Respondent. The unchallenged evidence is also that prior to that date and from August 19, 2004, Respondent had used the domain name in connection with offering services as an optometrist and in the provision of eye care. Those services are a bona fide offering of goods and services and by the words of the Policy give rise to a right or legitimate interest in the domain name.
Naturally, Respondent could not avail itself of that provision if it appeared that in registering the domain name it knew of Complainant and was trying to trade on its reputation, for its use of the domain name would not then be bona fide. But the evidence is not to that effect.
“Complainant’s case for bad faith
depends upon a theory of constructive notice adopted from
Most panels have declined to
introduce the concept of constructive notice into the [Policy]. However, where
a complainant had a
The exception stated above may be somewhat over-generalized. Most of the cases in which a panel has found bad faith registration without proof or a reasonable inference of actual knowledge of complainant’s mark involved either a distinctive mark, see, e.g., Champion Broadcasting Sys., Inc. v. Nokta Internet Techs., WIPO Case No. D2006-0128 (WUNR); Biogen, Inc. v. Kel Ellis, KELCO, WIPO Case No. D2002-0679 (Avonex); Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 (Kate Spade), or some additional indication of cybersquatting, e.g., Factory Mutual Ins. Co. v. Valuable Web Names, WIPO Case No. D2008-1014 (link to complainant’s website); Briefing.com, Inc. v. Cost Net Domain Manager, WIPO Case No. D2001-0970 (typosquatting). Especially when the mark is an everyday word or phrase panels tend more often to decline to find registration in bad faith based upon a claim of constructive notice, even when the parties are both American. E.g., Mandel v. CSC Labs., Inc., WIPO Case No. D2006-0719 (“Complainant’s assertion that, pursuant to the constructive notice provision of U.S. trademark law, Respondent should be charged with notice of Complainant’s rights in the SKIN DOCTOR mark as of its date of registration, i.e., May 23, 1995, is rejected by the Panel. While some panels have relied upon the doctrine of constructive notice in UDRP proceedings, most panels have declined to do so.”); Thompson v. Weddingchannel.com, Inc., WIPO Case No. D2002-0086 (weddingplanner).
The normal rule for establishing registration in bad faith is that the respondent must have actual knowledge of the mark in question, and have actively targeted that mark in order to benefit from the mark’s value. See Edward Don & Co. v. Black Bayou LLC/Domain Adm’r, WIPO Case No. D2008-1373. These matters may sometimes be proven inferentially, but there must be some factual basis for the Panel to make the necessary inference. The parties’ evidence in this proceeding contains nothing from which that inference could be made. Complainant’s mark does not appear from the provided record to be famous in the trademark sense, indeed Complainant has provided no evidence of its renown in the United States (where Respondent is based) or anywhere else – in the language of Policy decisions, there is no showing that the mark consisting of a common word is associated exclusively or primarily with its owner or that “that some identifiable audience [including respondent] was aware of use of the phrase as a designation of origin of goods and services.” See Edward Don & Co., D2008-1373 (emphasis added).
Those remarks are equally applicable in the present case. No doubt Complainant has achieved prominence in its field, but there is no evidence of the fame of the VISIONWORKS mark to the extent that any inference can be drawn that Respondent should be taken to have known of it. Indeed, the evidence is to the contrary, as Complainant does not trade under the name Visionworks in Texas, where Dr. Patterson practices, but actively promotes another name, EyeMaster, in that State, and has geared its search engine so that it is the latter name and nor Visionworks that internet users are directed towards when they enter the zip code for the area in which Dr. Patterson operates. The Panel is therefore unable to conclude on the evidence that Respondent or Dr. Patterson knew or should be taken to have known that there was a similar business using the trademark VISIONWORKS in the region where she intended to use the domain name. There is therefore no reason to conclude that Respondent’s use of the domain name was anything other than legitimate.
Finally, Complainant has submitted in effect that Respondent cannot rely on Policy ¶ 4(c) as the domain name is not being used by Respondent but by Dr. Patterson. The Panel does not accept that argument as, on the evidence, Dr. Patterson’s use of the domain name in her business can only be as an agent or under some other approved arrangement with Respondent.
For these reasons, Respondent has established that it has a right or legitimate interest in the domain name, and Complainant has failed to make out the second of the three elements that it must establish.
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000‑0003.
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
“(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out‑of‑pocket costs directly related to the domain name; or
(ii) the respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.”
In view of the previous finding, it is not necessary to examine the element of bad faith, but much of that finding is equally applicable to this issue; See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
It should be said, however, in view of the allegations made against Respondent, that the Panel makes a finding that the domain name was registered and has been used in good faith. The facts do not come within any of the criteria in Policy ¶ 4(b) that may be used to show bad faith. In particular, it cannot be said that Respondent registered the domain name for the purpose of selling it, merely because Dr. Patterson asked for payment for giving up the business name. Complainant was in effect asking her to give up her business name and all that went with it, including the names of branded products used in the business and the goodwill that must have been built up since 2003. In those circumstances it would be surprising if she had not asked for compensation. Certainly, it cannot be concluded from the evidence that Respondent’s primary intention in registering the domain name was to sell it to Complainant.
It should also be noted that
Complainant’s lawyers’ last cease and desist letter was dated April 11, 2008
and yet the Complaint was not filed until May 8, 2009, over a year later.
Although laches or delay is not generally accepted as a defence to UDRP
proceedings, this unexplained delay gives rise to some doubt whether
Complainant believed Respondent had been guilty of bad faith in registering and
using the domain name. Complainant’s case is that Respondent was “…misleadingly
capturing consumers of the mark at issue and diverting unsuspecting consumers
of Complainant’s services to Respondent’s website.” It is difficult to accept
that this was happening in reality, especially as there was no Visionworks
For these reasons, Complainant’s claim that the domain name was registered and used in bad faith also fails.
Having failed to establish all three of the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
The Honourable Neil Anthony Brown QC
Dated: July 1, 2009
National Arbitration Forum
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