Value Eyecare Network, Inc. v. chengbiao zhan
Claim Number: FA1110001409927
Complainant is Value Eyecare Network, Inc. (“Complainant”), represented by Stevan H. Lieberman of Greenberg & Lieberman, LLC, Washington, D.C., USA. Respondent is chengbiao zhan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <39dollarglasses.net>, registered with Xin Net Technology Corporation.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 3, 2011; the National Arbitration Forum received payment on October 3, 2011. The Complaint was submitted in both Chinese and English.
On October 7, 2011, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <39dollarglasses.net> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 11, 2011, the Forum served the Chinese Language Complaint and all Annexes, including a Chinese Language Written Notice of the Complaint, setting a deadline of October 31, 2011 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 postmaster@39dollarglasses.net. Also on October 11, 2011, the Chinese Language 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <39dollarglasses.net> domain name is identical to Complainant’s 39DOLLARGLASSES mark.
2. Respondent does not have any rights or legitimate interests in the <39dollarglasses.net> domain name.
3. Respondent registered and used the <39dollarglasses.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Value Eyecare Network, Inc., operates <39dollarglasses.com> domain name, which sells prescription eyeglasses and sunglasses. Complainant claims common law rights in the 39DOLLARGLASSES mark based on its December 6, 2000, registration of the <39dollarglasses.com> domain name and continuous use thereafter. Complainant also has a pending USPTO trademark application for the 39DOLLARGLASSES mark.
Respondent, chengbiao zhan, registered the disputed domain name on July 7, 2007. The disputed domain name resolves to a website showing narratives about eyewear with a link to a competitor’s online eyewear store.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant claims rights in the 39DOLLARGLASSES mark despite not yet holding a U.S. trademark registration. Previous panels have agreed that if Complainant can demonstrate common law rights in the mark under Policy ¶ 4(a)(i), a trademark registration is unnecessary. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant claims common law rights in the 39DOLLARGLASSES mark based on its December 6, 2000, registration of the <39dollarglasses.com> domain name and continuous use thereafter. Complainant has provided evidence of its continuous and extensive use of the mark for over ten years, netting approximately $35 million in sales since 2001. The Panel finds this evidence sufficient to confer rights in the mark under Policy ¶ 4(a)(i). See Toyota Sunnyvale v. Adfero Publ’g Co., FA 921194 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the complainant’s TOYOTA SUNNYVALE mark had acquired secondary meaning sufficient for it to establish common law rights in the mark through continuous and extensive use of the mark since 2003 in connection with a car dealership under that mark); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name).
Respondent’s <39dollarglasses.net> domain name is identical to its 39DOLLARGLASSES mark pursuant to Policy ¶ 4(a)(i). The disputed domain name wholly incorporates Complainant’s mark, and simply changes the top-level domain (“gTLD”) to “.net.” The gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis and therefore cannot distinguish a mark. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel holds that the disputed domain is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
The burden of presenting a prima facie case lies with Complainant. Once this has been done, as is the case here, the burden shifts to Respondent to rebut Complainant’s claims. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). Respondent in this case has failed to produce a Response, which some Panels have construed as evidence that Respondent lacks rights or interest in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). This Panel will nonetheless examine the record according to the Policy ¶ 4(c) factors to determine whether Respondent has rights or legitimate interests in the <39dollarglasses.net> domain name.
Complainant alleges that Respondent is not commonly known by the disputed domain name. The WHOIS information identifies the domain name registrant as “chengbiao zhan,” which bears no resemblance to the <39dollarglasses.net> domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). Complainant further states that it has not authorized Respondent’s use of the 39DOLLARGLASSES mark nor has Respondent ever been affiliated with Complainant in any way. In the absence of any evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant further alleges that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Respondent’s disputed domain name resolves to a website showing narratives about eyewear with a link to a competitor’s online eyewear store. Previous panels have agreed that the use of a disputed domain name to resolve to a website featuring links to Complainant’s competitors violates both Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was 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)); see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). The Panel finds that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel also finds that Respondent’s registration of the disputed domain, after Complainant had previously held it and inadvertently allowed it to expire, evidences a lack of rights or legitimate interests under Policy ¶ 4(a)(ii). See Edmunds.com, Inc. v. Ult. Search Inc., D2001-1319 (WIPO Feb. 1, 2002) (finding that the respondent could not rely on equitable doctrines under the Policy to defend its registration of the disputed domain name after the registration was inadvertently permitted to lapse by the complainant, noting that “Respondent was aware of the Complainant’s well-known business and its mark and intended to exploit the mark”); see also Clark v. HiNet, Inc., FA 405057 (Nat. Arb. Forum Mar. 4, 2005) (finding that the respondent lacked rights and legitimate interests in the domain name because it failed to respond to the complaint and it “opportunistically” registered the domain name when the complainant inadvertently allowed the registration to lapse).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
By operating a similar website with links to Complainant’s competitors in the eyewear industry, Respondent disrupts Complainant’s business in bad faith pursuant to Policy ¶ 4(b)(iii). Through the use of an identical domain name, Respondent increases the likelihood that consumers will visit Respondent’s website, eventually purchasing eyewear from a competitor of Complainant advertised in a link displayed on Respondent’s resolving website. Respondent’s website, therefore, causes Complainant to lose sales to the direct benefit of a competitor. In this way, Complainant’s business is disrupted, which shows Respondent’s bad faith pursuant to Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Respondent’s registration and use of the disputed domain name also exhibits bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). Respondent’s use of an identical domain name substantially increases the likelihood that consumers will believe that Respondent’s site is sponsored by or somehow associated with Complainant. Respondent uses this confusion to drive Internet traffic to its site and collect click-through fees. Respondent attempts to realize commercial gain from the confusion it creates, as greater traffic will lead to a higher click-through rate, in turn leading to a greater financial gain. This constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel further finds bad faith registration and use based on the fact that Complainant previously owned the disputed domain name, which was subsequently registered by Respondent after Complainant inadvertently allowed it to expire. See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”); see also BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where the respondent took advantage of the complainant’s failure to renew a domain name).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <39dollarglasses.net> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 10, 2011
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