1-800 Contacts, Inc. v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2105001944841
Complainant is 1-800 Contacts, Inc. (“Complainant”), represented by Thomas A. Agnello of Michael Best & Friedrich LLP, Wisconsin, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue <1800conacts.com>, registered with Media Elite Holdings Limited.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 12, 2021; the Forum received payment on May 12, 2021.
On May 18, 2021, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <1800conacts.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name.
Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 May 19, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 8, 2021 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@1800conacts.com. Also on May 19, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 10, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the 1800CONTACTS.COM and 1800CONTACTS marks established by its ownership of the trademark and service mark registrations set out below. In addition, Complainant submits that it has established rights and goodwill in the mark through its long and extensive use of the marks, internationally, including on the Internet for its contact lenses retail business.
To illustrate its long use of the mark it refers to examples of where it has been mentioned in published media over the years and in particular refers to a New York Times newspaper article from June 21, 2004 identifying Complainant and its mark which has been submitted in an annex to the Complaint. Compliant has also submitted a historical screenshot of historical website from December 22, 1996.
Complainant alleges that the disputed domain name is almost identical to its 1800CONTACTS.COM and1800CONTACTS marks arguing that in each case the disputed domain name is merely a misspelling of the marks, omitting the first letter “t” to create the impression of being identical to Complainant’s trademark. Panels consistently find that misspelling a mark and adding a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(1). Citing Nasdaq Inc. v. Abdellatif Shatila, FA2104001940806 (Forum May 6, 2021) (finding <nasdaw.com> domain to be confusingly similar to Complainant’s NASDAQ mark),
It is submitted that the generic Top-Level Domain (“gTLD”) <.com> extension which is not part of 1800CONTACTS mark may be ignored for purposes of comparison as it would be perceived to be a necessary technical requirement for the domain name.
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name arguing that there is no evidence that Respondent is commonly known as or operates a business or other organization under the disputed domain name, which further supports the position that Respondent has no rights or legitimate interest in the disputed domain name. See Experian Limited, Experian Information Solutions Inc. v. Brenda Needham, D2011-1162 (WIPO Aug. 18, 2011) (concluding that Respondent had “no rights or legitimate interests in the disputed domain name” because no evidence showed that Respondent was commonly known as, identified by, or operated a business or other organization under the disputed domain name).
Furthermore, it is contended that Respondent is engaged in typosquatting, by registering and using a misspelling of Complainant’s marks in the disputed domain name. Complainant submits that such typosquatting demonstrates Respondent’s lack of rights or legitimate interests in the disputed domain name.
Moreover, Complainant refers to a screenshot of the website to which the disputed domain name resolves which is annexed to the Complainant. Respondent’s website contains no content except for click-through advertising of products and services in categories that are competing with Complainant. It is argued that it is well-settled that this is not a bona fide offering of goods or services. See Regions Bank v. jun yin, FA 2012001923914 (Forum Jan. 11, 2021) (“Using a disputed domain name to host hyperlinks that compete with a complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).”).
Complainant also alleges that the disputed domain name was registered in bad faith arguing that Respondent obviously registered and uses the disputed domain name in bad faith and with actual knowledge of Complainant’s marks. Three of Complainant’s United States federal trademarks were registered before Respondent registered the disputed domain name which further evidences the registrant’s knowledge of Complainant’s mark.
Complainant further contends that the disputed domain name is being used in bad faith and refers to the screenshot which is annexed to the Complaint, that shows that the website to which the disputed domain name resolves contains hyperlinks to websites offering competing goods and services. See Health republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii)).
Complainant adds that Respondent’s typosquatting itself evinces bad faith registration and use of the mark under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a retailer of contact lenses and has provided services since 1995 using the 1800CONTACTS.COM and 1800CONTACTS marks for which it holds a portfolio of trademark registrations including the following United States federal registrations:
· United States registered service mark 1800CONTACTS.COM, registration number 3833549, registered on the Principal Register on August 17, 2010, for services in international class 35;
· United States registered service mark 1800 CONTACTS, registration number 2675866, registered on the Principal Register on January 21, 2003 for services in international class 35;
· United States registered service mark 1800 CONTACTS and Design, registration number 2731114, registered on the Principal Register on July 1, 2003 for services in international class 35;
· United States registered trademark and service mark 1800 CONTACTS (Stylized), registration number 5131335, registered on the Principal Register on January 31, 2017 for goods and services in international classes 9, 35.
Complainant has an established Internet presence and maintains a website to which its own domain name <1800contacts.com> resolves.
The disputed domain name was registered on September 6, 2014 and resolves to a website with no content except click-through links.
There is no information available about Respondent, which is the registrant of the disputed domain name, except for that provided in the Complaint, the Registrar’s WhoIs and the additional information provided by the Registrar in response to the enquiry from the Forum seeking confirmation details of the registration of the disputed domain name for the purposes of this Complaint.
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."
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has provided uncontested evidence that it has rights in the 1800CONTACTS.COM and 1800CONTACTS marks established by its ownership of the trademark and service mark registrations described above.
In addition, Complainant has shown that it has rights and goodwill in the marks through long and extensive use of the marks in its business as a retailer of contact lenses including online.
The disputed domain name <1800conacts.com> is composed of the number “1800” in combination with the elements “con”, “acts” and the generic Top-Level Domain (“gTLD”) extension <.com>.
These elements, taken together, represent misspellings of Complainant’s 1800CONTACTS.COM and 1800CONTACTS marks, in each case merely omitting the first letter “t” in the word “contacts” to form the nonsense word “conacts”. The element “conacts” has no meaning other than a misspelling of “contacts”. Overall, the impression created is that the disputed domain name is composed of Complainant’s marks.
Unusually Complainant’s 1800CONTACTS.COM contains the <.com> gTLD extension. Normally for the purposes of evaluating confusing similarity between the disputed domain name and Complainant’s mark, the gTLD extension may be ignored but in this case it is relevant because it makes the entirety of the domain name almost identical to the 1800CONTACTS.COM mark.
This Panel finds therefore that the disputed domain name is confusingly similar to both the 1800CONTACTS.COM and 1800CONTACTS marks in which Complainant has rights.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out an uncontested prima facie case that Respondent has no rights or legitimate interests in the disputed domain name because
· Respondent is not commonly known by the disputed domain name;
· there is no evidence that Respondent operates a business or other organization under the disputed domain name;
· Respondent is engaged in typosquatting, by registering and using a misspelling of Complainant’s marks.
It is well established that, as in this case, once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts the respondent to prove such rights or interests. Respondent has failed to discharge the burden of production in this proceeding. This Panel must therefore find that on the balance of probabilities, Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has satisfied this Panel that on the balance of probabilities the disputed domain name was registered in bad faith because the disputed domain name was registered with Complainant’s marks in mind, subsequent to Complainant’s use and registration of the 1800CONTACTS.COM and 1800CONTACTS marks.
The disputed domain name was registered a long time ago in September 6, 2014. However, the earliest service mark registration relied upon by Complainant was registered on August 17, 2010. Compliant has also submitted a historical screenshot of historical website from December 22, 1996 and the New York Times newspaper article shows that Complainant had a well-established reputation in June 21, 2004.
It is well established that delay in bringing a Complaint does not in itself defeat an application and the equitable doctrine of laches does not apply in proceedings under the Policy.
Complainant’s marks are very distinctive, and it is implausible that the disputed domain name was chosen and registered for any reason other than to make reference to, and take predatory advantage of Complainant’s marks, goodwill and reputation.
Additionally, Complainant has satisfied this Panel that on the balance of probabilities that the disputed domain name is being used in bad faith. The evidence shows that the disputed domain name resolves to a website with no content other than what are on the balance of probabilities pay-per-click links to third party sites. Complainant has adduced in evidence a screenshot of the website which shows that each of these links relate to contact lenses. The Panel is conscious that the links generated on a site such as this can be manipulated and changed depending on the browsing history of the searching device. It is not necessary to delve into how these links were generated in this example. It is sufficient to find that the website has the capacity to generate such competing links and that Respondent is using Complainant’s name, trademarks, goodwill and reputation to misdirect and lure Internet users to Respondent’s website for Respondent’s profit.
Furthermore, the evidence clearly shows that Respondent is engaged in typosquatting which in itself constitutes bad faith registration and use of the disputed domain name. Respondent’s use of the confusingly similar domain name will inevitably create confusion and divert Internet traffic intended for Complainant to Respondent’s website with a serious risk of diverting the user to third party competing sites.
As this Panel has found that on the balance of probabilities the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in its application for transfer of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <1800conacts.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: June 11, 2021
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