ECCA Enterprises, Inc. v. Sarah Ito d/b/a
Visionworks Optometry
Claim Number: FA0905001264609
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@visionworksoptometry.com,
postmaster@visionworksoptometry.net, postmaster@visionworksoptometry.org, and
postmaster@evisionworks.com 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.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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.
FINDINGS
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.
3.
Visionworks
Inc. provides optical goods and services under the trademark at 80 locations in
the
4.
Neither
Complainant nor Visionworks Inc. has authorized Respondent to use the trademark
or to register a domain name incorporating the trademark.
5.
Respondent
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.
DISCUSSION
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.
ICANN’s UDRP Rule 3(c) states that “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.”
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
(ii) you (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 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, D2003‑0453 (WIPO July 24, 2003) 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.
DECISION
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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