Essilor International (Compagnie Generale D’Optique) v. Chris Schultz
Claim Number: FA1005001323982
Complainant is Essilor International (Compagnie
Generale D’Optique) (“Complainant”),
represented by Kay Lyn Schwartz, of Gardere Wynne Sewell, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <essilordirect.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.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 10, 2010.
On May 11, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <essilordirect.com> 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 14, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on May 14, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on June 2, 2010.
On June 9, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
In its Complaint, Complainant contends as follows:
- Essilor, or a predecessor-in-interest, has used continuously, since at least as early as 1972, the trademark “ESSILOR” in connection with various ophthalmic products, including ophthalmic and optical lenses. As a result of Essilor’s extensive use and promotion, the ESSILOR marks have become widely known and recognized among consumers and members of the optics industry as identifying Essilor as the source of ophthalmic products and related services. Essilor has acquired valuable rights and substantial goodwill in the ESSILOR Marks. Essilor is the owner of numerous trademark registrations for the ESSILOR Marks. Therefore, Essilor has rights in the ESSILOR Marks. The fact that Respondent includes the top-level domain designation “.com” or the generic term “direct” does not negate the confusion created by Respondent’s domain name. The disputed domain name is identical or confusingly similar to the ESSILOR trademarks in which Complainant has rights.
- Respondent has no rights or legitimate interests in the <essilordirect.com> domain name. Respondent has not been authorized to use the ESSILOR Marks. Respondent, itself, has no trade or service mark rights in “ESSILOR”, “ESSILOR DIRECT” or <essilordirect.com>. Respondent has not been authorized to use Essilor’s ESSILOR Marks, and has no trade or service mark rights in “ESSILOR”, “ESSILOR DIRECT” or <essilordirect.com>. Nothing on Respondent’s website or in the WHOIS domain name registration information suggests that Respondent is commonly known by “ESSILOR”, “ESSILOR DIRECT” or <essilordirect.com>. Rather, the listed Registrant in the WHOIS record for <essilordirect.com> is “Chris Schultz.” Respondent’s use of the domain name does not constitute a bona fide offering of goods or services pursuant to Policy 4(c); Respondent’s use of the domain name is clearly commercial, and with the intent to misleadingly divert internet consumers. Respondent’s domain name provides various searching categories to third-party competitor sites. Respondent is not offering any type of goods or services, but rather is running third-party advertisements and affiliate advertisements. Upon information and belief, Respondent is using the domain name at issue solely to obtain “referral” fees in connection with an “affiliate” type of marketing program. In other words, Respondent is using the domain name to derive “click-through” fees through web advertising programs. It is well settled that the practice of misdirecting Internet traffic for commercial gain (which would include deriving affiliate commissions) is not a bona fide offering of goods or services under the Policy, and also is not a legitimate non-commercial or fair use of a domain name under the Policy. Even if Respondent is not receiving commission fees, its use of the domain name to direct traffic to its specific website in connection with the third-party links is not a bona fide offering of services pursuant to the Policy. It is well established that the use of a domain name containing a Complainant’s mark in competition with the Complainant does not establish a bona fide commercial use. Essilor submits that Respondent registered and is using the domain solely for the purpose of diverting customers or potential customers of Essilor to Respondent.
- The domain name in dispute was registered and is being used in bad faith. Failure to make a bona fide use of a registered domain name, that contains another’s trademark, as Essilor has demonstrated above with respect to the domain name at issue, is evidence of bad faith registration and use of that domain name. In addition, intentionally trying to divert Internet users to alternative sites is evidence of bad faith. Respondent is using the domain name at issue solely as a device to draw Essilor’s customers to Respondent’s website. Respondent’s selection, registration and use of the domain name at issue, which is clearly a confusingly similar variation of Essilor’s name and corresponding trademarks, was well thought out, inappropriate, and is per se bad faith registration and use according to Policy 4(b)(iii). When Essilor’s consumers and potential customers seek to find information on Essilor, and enter the domain name at issue, the consumer is instead brought to Respondent’s website. Such actions by Respondent were well thought out and intentionally orchestrated in order to increase traffic to Respondent’s website, all at the expense of Essilor, its ESSILOR Marks, and its goodwill. Further, upon information and belief, Respondent was on notice as to the existence of Essilor and its ESSILOR Marks when it registered <essilordirect.com> on April 16, 2010. Actual or constructive knowledge of a commonly known mark at the time of registration is evidence of bad faith. Respondent was aware of Complainant given that it references “ESSILOR” on its site. Even if it did not have actual knowledge, Respondent had at least constructive notice of Essilor’s federal registration for “ESSILOR” (among others), which was registered with the United States Patent and Trademark Office in 1973 – over 30 years before Respondent registered the domain name at issue. In addition, upon information and belief, at the time Respondent registered the domain name at issue, a search of the Internet would have revealed numerous hits and information concerning Essilor, its business, and its ESSILOR Marks. As previous Panels have recognized, continuous and exclusive use of a well-known mark by a Complainant, coupled with the investment of substantial sums of money in promoting the mark over time, creates a situation where Respondent should have been aware of the marks and is deemed to have constructive knowledge of those marks. Since its inception, Essilor has promoted the ESSILOR Marks and has invested millions of dollars in connection with promoting its ophthalmic products under the ESSILOR Marks.
Respondent’s only communication in this proceeding was an email to The Forum, with the following text:
“June 2, 2010.To whom it may concern: Regarding case: FA1005001323982, or the domain name Essilordirect. I was unaware that it was an infringement on Essilor by registering a domain name with the word Essilor in the name. It is not my intention to use this domain name, and I will willingly release the domain name to Essilor. Regards, Chris Schultz”.
Complainant, with its affiliated companies, is one of the world’s largest designers and manufacturers of optical products, with extensive distribution networks in over 100 countries worldwide.
numerous trademark registrations for ESSILOR and other ESSILOR-related names
both in the
Respondent, residing in the
As shown in a printout submitted by Complainant, on April 23, 2010, the disputed domain name resolved to a webpage showing “sponsored listings” such as “lenses at 1-800Contacts” at <www.1800contacts.com>, “70%Off Eyewear Online” at <www.glassesUSA.com>, progressive Tri-focal at <www.debspecs.com>, “pearle vision® Eye Exams” at <www.pearlevision.com>, “lens123.com” at <lens123.com>, “ACUVUE® 2 COLOURS” at <acuvue.com>, “Try B&L SofLens® Daily” at <www.soflens.com/freetrial>, etc. Under “Related Searches”, there were links titled “Kappa”, “Lenses”, “Sears Optical Lenses”, “Essilor”, “Essilor Kappa CTD”, and “Carl Zeiss Lenses”. Several ads apparently posted by the registrar Godaddy.com, Inc. also appear on the webpage of Respondent.
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 concludes that the disputed domain name is confusingly similar to Complainant’s ESSILOR marks.
Complainant has denied that each of the circumstances listed in Policy ¶ 4(c) are present in Respondent’s use of the domain name. Also, Complainant has shown that Respondent’s website at the disputed domain name consists of links to websites of competitors of Complainant, as well as to Complainant’s website. This use of the domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Richard L. Bayless v. Cayman Trademark Trust, FA 648245 (Nat. Arb. Forum April 3, 2006) (finding that the respondent’s use of a domain name that included the complainant’s entire mark to divert Internet users to a website that links to third-party websites unrelated to the complainant, and for which Respondent presumably received click-through fees, is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)).
Taken together, Complainant’s contentions and supporting evidence constitute a prima facie case that Respondent lacks rights or legitimate interests in the domain name. Thus, the burden shifts to the respondent to prove that he does have some right to or interest in the domain name. See Akai Electric Co., Ltd. v. Semi-Tech (Global) Ltd., FA 114653 (Nat. Arb. Forum Sept. 30, 2002) (“Complainant’s presentation of a prima facie case against Respondent shifts the burden to require Respondent to affirmatively demonstrate rights and legitimate interests in the <akai.com> domain name.”); see also Dana Corporation v. $$$ This Domain is For Sale $$$ - MalibuTv@aol.com, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (“Once a complainant has successfully presented its prima facie case illustrating a respondent’s lack of rights or legitimate interests in its domain name, the burden of demonstrating rights and legitimate interests in the domain name shifts to the respondent.”). A respondent’s failure to do so may lead a panel to make an inference of lack of rights and legitimate interests in the domain name. See G.D. Searle & Co. v. Javier Benavides a/k/a None, FA 117024 (Nat. Arb. Forum Sept. 6, 2002 (“Respondent’s failure to rebut Complainant’s prima facie case implies that Respondent does not have any rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii).”).
In his only submission in this proceeding, Respondent stated that he was unaware that registering a domain name containing the word “Essilor” infringes on the ESSILOR Mark, that he did not intend to use the domain name, and that he would willingly release the domain name to Complainant. Whether true or false, neither statement is evidence of any right or legitimate interest in the domain name.
The Panel concludes that Respondent lacks any rights or legitimate interests in the domain name.
Given the renown of Complainant and the fact that a cursory search on the Internet would have yielded numerous results showing Complainant’s mark and ophthalmologic products, the Panel concludes that Respondent was aware of Complainant and its ESSILOR Marks and products when he registered the disputed domain name. It is obvious that such registration was instrumental for Respondent to lure Internet users into visiting commercial websites of Complainant’s competitors, and thus to seek profit from commissions or referral fees, either directly from such competitors or via a pay-per-click system. Whatever the commercial scheme behind Respondent’s behavior, it is clear that Respondent, by using the domain name as shown by Complainant, has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on his website or location.
This is a circumstance of bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <essilordirect.com> domain name be TRANSFERRED from Respondent to Complainant.
Roberto A. Bianchi, Panelist
Dated: June 23, 2010
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