ECCA Enterprises, Inc. v. Sarah Ito d/b/a Visionworks Optometry
Claim Number: FA0905001264609
Complainant is ECCA Enterprises, Inc. (“Complainant”), represented by J. Daniel Harkins, of Cox Smith Matthews Incorporated,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <visionworksoptometry.com>, <visionworksoptometry.net>, <visionworksoptometry.org>, and <evisionworks.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 22, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 26, 2009.
On May 26, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <visionworksoptometry.com>, <visionworksoptometry.net>, <visionworksoptometry.org> and <evisionworks.com> domain names are 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 June 3, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 23, 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 email@example.com, firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on June 23, 2009.
On June 27, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.
On July 2, 2009 the Panel issued an Order for Additional Submissions (discussed later) to be provided by Respondent by July 9, 2009. On July 4, 2009, Respondent sent Additional Submissions to the National Arbitration Forum which were deemed complete.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant asserts rights in the trademark VISIONWORKS and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
The detail of the Complaint is included where necessary in the Discussion which follows.
Respondent broadly denies each of Complainant’s allegations and claims rights in the domain names.
The detail of the Response is included where necessary in the Discussion which follows.
The following factual matters are either not in dispute, or are asserted by one party and are not contradicted by the other party and are not inconsistent with the evidence:
1. Complainant is the proprietor of United States Federal trademark registration number 1,339,695 issued June 4, 1985 for the mark VISIONWORKS. The registration claims a first date of use of the trademark in commerce of August 13, 1984.
2. Complainant has licensed Visionworks Inc. to use the trademark.
Inc. provides optical goods and services under the trademark at 80 locations in
4. Neither Complainant nor Visionworks Inc. has authorized Respondent to use the trademark or to register a domain name incorporating the trademark.
provides optometric services at a single location in
6. Respondent registered the disputed domain names on the following dates: <visionworksoptometry.com> November 2, 2002
<evisionworks.com> August 24, 2004
<visionworksoptometry.net> October 31, 2008
<visionworksoptometry.org> March 18, 2009
7. Complainant sent a cease and desist letter to Respondent by registered mail on March 16, 2009.
8. Respondent filed a US Federal trademark application for VISIONWORKS OPTOMETRY on March 27, 2009.
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 Complaint names four domain name registrants but a single Respondent.
The National Arbitration Forum’s Supplemental Rule (1)(d) defines “ ‘The Holder of a Domain Name Registration,’ … means the single person or entity listed in the WHOIS registration information at the time of the filing of the Complaint with the Forum; and once the registrar has verified registration, is limited to the single person or entity as verified by the registrar” and states that “Complainant wishing to make an argument for a single Respondent having multiple aliases must comply with Supplemental Rules 4(f) and 17(a)(i).”
Rule 4(f) states that “arguments alleging Respondent aliases must be included in the Complaint for Panel consideration” and Rule 17 (a)(i) states that “Complaints alleging multiple aliases will be subject to an increased filing fee.”
Complainant has paid the increased filing fee. Complainant states that all four disputed domain names resolve to websites that advertise the optometric services of Sarah Ito, who does business under the trade name “Visionworks Optometry”. Complainant states that although the WHOIS registrant information for each domain name is slightly different – i.e., the registrant is either Sarah Ito or Visionworks Optometry, with different addresses and/or telephone numbers – “each of the disputed domain names is owned and controlled or operated by Sarah Ito”.
The Panel has examined the evidence and is in no doubt that it is proper to allow the one Complaint to proceed in relation to the four disputed domain names and against one common Respondent. Its final Order will apply with equal force to all four domain names.
Paragraph 4(a)(i) of the Policy requires Complainant to show rights in the claimed trademark and to show that the disputed domain names are at least confusingly similar to the trademark.
The Policy does not distinguish between registered and unregistered trademark rights however a trademark registered with a national authority is prima facie evidence of trademark rights for the purposes of the Policy.
By virtue of its US Federal trademark registration the Panel finds Complainant to have rights in the trademark VISIONWORKS.
Complainant argues that <visionworksoptometry.com>, <visionworksoptometry.net>, <visionworksoptometry.org> and <evisionworks.com> are confusingly similar to Complainant’s trademark.
Respondent contends, amongst other things, that there is no confusion because (1) Respondent offers optometric services whilst Complainant is more concerned with the sale of optical goods, (2) the parties operate far from each other in mutually exclusive regions of the United States, (3) the trademark is composed of common words that have everyday meaning, (4) third parties are using the same or similar names for the same or similar businesses.
The consensus of panelists applying the UDRP is that these are factors to be assessed under legitimacy of Respondent’s use or its good faith use or adoption of the name and not under paragraph 4(a)(i) of the Policy. The test under paragraph 4(a)(i) is whether the trademark and domain name have confusing similarity, those matters aside.
It is also widely accepted that the addition of a gTLD such as “.com” is trivial and will not of itself have any influence on the assessment of confusing similarity between trademark and domain name.
Stripped of their gTLDs, the disputed domain names differ from the trademark by only the addition of the word “optometry” or the letter “e”. The Panel finds (i) that in the context of the dispute the word “optometry” is non-distinctive, (ii) that in the context of electronic commerce the letter “e” is non-distinctive, and (iii) that the additions are insufficient to create a meaningful distinction over the trademark.
The Panel finds each of the disputed domain names to be confusingly similar to Complainant’s trademark and so Complainant has satisfied the first limb of the Policy.
Complainant has the burden to establish that Respondent has no rights or legitimate interests in the domain name. Nevertheless, it is well settled that Complainant need only make out a prima facie case, after which the onus shifts to Respondent to demonstrate rights or legitimate interests.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to 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
(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.
Subparagraph 4(c)(iii) has no application to the facts of this case since Respondent’s use is, by its own admission, commercial.
Subparagraph 4(c)(i) requires a certain state of affairs to have existed before Respondent had any notice of the dispute. Complainant suggests that Respondent was on constructive notice of its rights, but for the purposes of paragraph 4(c)(i) of the Policy, the relevant determination is the date when Respondent first had notice of the dispute. Imputed knowledge of Complainant’s trademark registration is not notice of the dispute. Imputed knowledge of Complainant’s business is likewise not notice of the dispute.
The Complaint was preceded by a registered letter of demand dated March 16, 2009. Complainant’s evidence is that Respondent received that letter on March 19, 2009. The question is whether what was done by Respondent prior to March 19, 2009 amounted to use of the disputed domain names in connection with a bona fide offering of services.
There is little doubt on the evidence that from a time in 2002, Respondent was making demonstrable preparations to use a name corresponding to the domain names in connection with an offering of optometric services. That said, the use must have been bona fide and numerous decisions under this Policy have held that use is not bona fide where it looks to be a violation of Complainant’s trademark rights.
Questions of trademark infringement are matters for a forum with greater inquisitorial powers, however Panel is of the opinion that there is a serious question as to whether Respondent’s use of the domain names is actionable in the face of Complainant’s Federal trademark registration. For that reason the Panel does not consider Respondent’s pre – March 19, 2009 offering bona fide in terms of paragraph 4(c)(i) of the Policy.
Subparagraph 4(c)(ii) might assist Respondent if it can be said that, either as an individual or business, Respondent has been commonly known by the domain names. The WHOIS information for the domain names lists the registrant as “Sarah Ito (d/b/a Visionworks Optometry)” or as “Visionworks Optometry (a/k/a Sarah Ito)”.
The relevant material in the Response consists of entries of Respondent’s name in local, business and professional directories. There are also copies of pages from Respondent’s website referring to local media exposure given to the business.
The Merriam - Webster dictionary defines “common” as, inter alia, “of or relating to a community at large” or “known to the community”. Those definitions are consistent with the way in which formative panels have interpreted this aspect of the Policy and are consistent with the philosophy of paragraph 4(c)(ii) which is to endow rights or legitimate interests on those with a proven interest in a pre-existing name by which they are already commonly known.
That said, professional, business or local listings and directories do not of themselves establish that a business enterprise is commonly known by a name in the sense just defined. They say nothing of the public and community recognition of a business. A business which has only recently been established and has no community presence whatsoever might already be listed in such directories. For that matter, it is not unknown for directories to continue to list businesses long defunct and no longer possessed of any goodwill.
On the other hand, attention given to a business by newspaper or television might be highly relevant in establishing that a respondent is commonly known by a name. Nonetheless, evidence from a party’s own website is necessarily self-serving and must be viewed with caution. In this case, the references to local publicity on the Respondent’s website contain no direct evidence of the claims and must be given little, if no, weight.
For those reasons, Panel issued a Procedural Order inviting Respondent to “provide further and better evidence of its claim that it is commonly known by the domain names.” Having failed to properly understand the intention of the Policy, Respondent also failed to properly understand the invitation. Respondent may have benefited by professional representation. The evidence received pursuant to the Procedural Order consists of material such as tax office records, fictitious name permits, professional insurance documentation and a chamber of commerce listing, all being material which goes to show beyond any doubt the existence of the Respondent’s business under a name corresponding with the domain names, but not the commonality of that name in the relevant sense. For the reasons given, neither the Response nor the additional evidence, assists the Respondent under paragraph 4(c)(ii).
The Panel can take
into account circumstances other than those specifically set out in paragraph
4(c) of the Policy. Respondent has argued that it does not operate
in the same field as Complainant. Panel
considers that in terms of the establishment of genuine independent rights, the
sale of optical goods on the one hand and the offering of optometric services
on the other, is in terms of the Policy a distinction
without a difference. Respondent has also
argued that the parties operate in different regions of the
The Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in all four disputed domain names. In making that finding, Panel is influenced by (i) Respondent’s failure to respond to the letter of demand; (ii) Respondent’s registration of the domain name <visionworksoptometry.org> within days of the letter of demand; (iii) Respondent’s application to register the trademark VISIONWORKS OPTOMETRY with the USPTO within a very short timeframe after the letter of demand; (iv) inclusion in the trademark application of a claim to first use of that trademark which date is unsupported in any way by the evidence or by the further evidence; (v) the fact that even a cursory Internet search shows Complainant to have a clear business presence in the United States.
Paragraph 4(b) of the Policy sets out the circumstances which shall be evidence of the registration or use of a domain name in bad faith. They are:
(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; 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 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 your website or location or of a product or service on your website or location.
What is noteworthy about Paragraph 4(b) is that all four bad faith examples there described are cases of both registration and use in bad faith. Paragraph 4(b)(iv) stands alone from its three companion examples in its focus on bad faith use, as contrasted with bad faith registration. Panelist finds that Respondent’s conduct falls squarely with paragraph 4(b)(iv) for the following reasons. First, the likelihood of confusion as between trademark and the domain names has already been established. Secondly, use for commercial gain is acknowledged in the Response. Thirdly, in Paule Ka v. Korenek, the panel held that the reference to the registrant’s intention in paragraph 4(b)(iv) of the Policy should be regarded as importing an objective, rather than a subjective, test. The panel in that case wrote:
… how is the ‘intentional’ element required under paragraph 4(b)(iv) to be defined? The Panel is guided in its consideration of the issue by the fact that a subjective test of intent (thus considered more or less as a mens rea element) would be difficult if not impossible to apply given that credibility must be assessed only on the basis of documentary evidence. It is difficult to enter the minds of the parties to determine their subjective intent. The proper test in this Panel’s view is whether the objective consequence or effect of the Respondent’s conduct is to free ride on the Complainant’s goodwill, whether or not that was the primary (subjective) intent of the Respondent.
The Panel finds bad faith under paragraph 4(b)(iv) of the Policy and so Complainant has established the third and final element in relation to all four domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <visionworksoptometry.com>, <visionworksoptometry.net>, <visionworksoptometry.org>, and <evisionworks.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: July 20, 2009
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