Lens Boys Inc. v. RANDOLPH WEIGNER and LENSFAST LLC
Claim Number: FA1312001535384
Complainant is Lens Boys Inc. (“Complainant”), represented by Neal L. Slifkin of Harris Beach PLLC, New York, USA. Respondent is RANDOLPH WEIGNER and LENSFAST LLC (“Respondent”), New Hampshire, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <contactlensesking.com> and <contactlenskings.com>, registered with DomainPeople, 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, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 19, 2013; the National Arbitration Forum received payment on December 19, 2013.
On December 19, 2013, DomainPeople, Inc. confirmed by e-mail to the National Arbitration Forum that the <contactlensesking.com> and <contactlenskings.com> domain names are registered with DomainPeople, Inc. and that Respondent is the current registrant of the names. DomainPeople, Inc. has verified that Respondent is bound by the DomainPeople, Inc. 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 December 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 2014 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@contactlensesking.com, postmaster@contactlenskings.com. Also on December 19, 2013, 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.
A timely Response was received and determined to be complete on January 8, 2014.
On January 17, 2014, 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.
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.
Complainant requests that the disputed domain names be transferred from Respondent to Complainant.
A. Complainant
In its Complaint, Complainant contends the following:
The disputed domain names are confusingly similar to Complainant’s CONTACT LENS KING mark, and to Complainant’s domain name <contactlensking.com>. The only difference between the <contactlensesking.com> domain name and Complainant’s mark and <contactlensking.com> domain name is that the Respondent used the plural “lenses” where Complainant’s mark and domain name use the singular “lens.” The only difference between the <contactlenskings.com> domain name and Complainant’s mark and <contactlensking.com> domain name is that Respondent used the plural “kings” where Complainant’s mark and domain name use the singular “king.” Consumers are not likely to notice these minor differences.
Respondent has no rights to or legitimate interests in either of the disputed domain names. Respondent is known by, and operates its business from the domain name <contactlens.com>. Respondent is not commonly known by the disputed domain names, and Complainant has not granted Respondent permission to use either of them.
Until recently, the websites at the disputed domain names redirected to Respondent’s webpage at the website <contactlens.com>, or posted links on the websites at the disputed domain names that brought users to product pages at Respondent’s site, at which Respondent offers its own goods for sale. This redirection and posting of links is not a bona fide offering of goods or services pursuant to UDRP Paragraph 4(c)(i), or a legitimate noncommercial or fair use under UDRP Paragraph 4(c)(iii).
Later, the disputed domain names were redirected to a parking page. Respondent’s failure to use them further shows Respondent’s lack of rights or a legitimate interest in the disputed domain names. Before the disputed domain names redirected to a parking page, the page at the disputed domain names contained links to products for sale at Respondent’s <contactlens.com> website. Each product link on the parking page linked to a product page at Respondent’s <contactlens.com> website. Simply stated, Respondent was using the disputed domain names to compete with Complainant. Its use of the confusingly similar disputed domain names was designed to draw Internet traffic intended for <contactlensking.com> so that Respondent would receive sales of products instead of Complainant. This is neither a bona fide offering of goods or services under UDRP Paragraph 4(c)(i) nor a legitimate noncommercial or fair use under UDRP Paragraph 4(c)(iii). Thus, Respondent does not have rights or any legitimate interests in either of the disputed domain names.
Respondent’s registration and use of the disputed domain names is in bad faith. The use of the confusingly similar disputed domain names was transparently designed to redirect traffic intended for Complainant’s site to Respondent’s site, where Respondent sells its own goods. Because of the similarity of the disputed domain names to Complainant’s mark CONTACT LENS KING and to Complainant’s domain name <contactlensking.com>, at least some consumers were likely to be deceived into visiting Respondent’s page. Respondent’s use of the disputed domain names thus constitutes an attempt to attract, for commercial gain, users to Respondent’s site by creating a likelihood of confusion with Complainant’s mark CONTACT LENS KING as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and services offered on Respondent’s website in violation of UDRP ¶ 4(b)(iv). Such use of the disputed domain names also disrupts the business of Complainant in violation of UDRP ¶ 4(b)(iii).
Redirecting users to a parking page, as Respondent has now configured the disputed domain names, still disrupts Complainant’s business, in violation of UDRP ¶ 4(b)(iii). Winding up at a parking page, when seeking Complainant’s website, would discourage users from doing business with Complainant. This is continuing bad faith use. The use of the disputed domain names by Respondent was transparently designed to redirect traffic intended for Complainant’s site to Respondent’s website, where Respondent sells its own goods. Because of the similarity of the disputed domain names to Complainant’s mark CONTACT LENS KING and to Complainant’s domain name <contactlensking.com>, at least some consumers were likely to be deceived into visiting Respondent’s page. Respondent registered the disputed domain names in 2006 and 2007. By that time, Complainant had been using its CONTACT LENS KING mark for over two years, conducting a competing business at the domain name <contactlensking.com>. At minimum, the confusing similarity between the disputed domain names and Complainant’s CONTACT LENS KING mark and pre-existing <contactlensking.com> domain name constitutes exceptionally strong circumstantial evidence that Respondent registered the disputed domain names with knowledge of Complainant’s mark. Further, Respondent never made a bona fide offering for sale of goods or services at the disputed domain names, and instead only used them to redirect customers to its <contactlens.com> domain name. Thus, the registration of the disputed domain names was also in bad faith. Accordingly, the Panel should find that Respondent registered and used the disputed domain names in bad faith pursuant to UDRP Paragraph 4(a)(iii). Respondents’ registration and use of the domain names <contactlensesking.com> and <contactlenskings.com> is in bad faith.
B. Respondent
In its Response, Respondent contends as follows:
Respondent registered the <contactlenskings.com> domain name on August 21, 2006, and the <contactlensesking.com> domain name on August 8, 2007. Lens Boys Inc. did not file for the CONTACT LENS KING trademark until January 25, 2008 and was not granted a trademark until December 2, 2008. Subsequent to Lens Boys Inc. grant of the trademark Respondent was notified by Complainant’s attorney that the trademark for CONTACT LENS KING had been issued and the attorney at the time requested Respondent to cease using the domain name <contactlenskings.com>. Respondent immediately complied. Subsequent to that request Respondent received another request to cease using <contactlensesking.com>, with which from an overabundance of caution Respondent again complied. Since that time and until the domain names were recently suspended by the registrar both domain names resolved to the same free template website 101.com, as the domain names had to resolve somewhere. This website sells no products whatsoever, nor is it defamatory, offensive, confusing or controversial to anyone in any way, nor has Respondent ever discussed the sale of the domains with Lens Boys Inc. or any other party.
It is common not only in the contact lens industry but in nearly every industry to register multiple domain names. In fact the practice is so common that Complainant itself owns and is currently using the domain names <replacemycontactlenses.com> and <replacemylenses.com> to divert traffic from its competitor’s trademarked website <replacemycontacts.com> to Complainant’s <contactlensking.com> website. Complainant also owns and uses the <shipmylenses.com> domain name to divert traffic from its competitor’s < shipmycontacts.com> website. Respondent does not concede that its use of either of the disputed domain names has violated any trademark, nor does it concede anyone was likely to be confused by Respondent’s past use of the disputed domain names. The websites <contactlens.com> and <contactlensking.com> are completely different in color, design and layout and are both clearly marked with the name of the websites, <contactlens.com> and <contactlensking> at the very top right of the home pages which a visitor to the website is likely to see first. Respondent has never represented that it is in any way owned by or affiliated with <contactlensking.com>. In addition Complainant has presented no proof that anyone was ever confused by the use of either of the disputed domain names. The disputed domain name <contactlensesking.com> bears at most only a passing resemblance to <contactlensking.com>. The terms ‘contact lens’ and ‘contact lenses’ are entirely generic and cannot of themselves be trademarked. As part of Complainant’s filing for its CONTACT LENS KING trademark, Complainant had to disclaim the term ‘contact lens’ on the grounds it was completely generic or it would not have been granted the trademark. Nor can Complainant prove anyone was ever once confused or in fact ever actually used the <contactlensesking.com> domain name to reach the <contactlens.com> website. Would anyone consider “contactlensprince” or “contactlensesqueen” to likewise be confusing? Respondent believes the <contactlensesking.com> domain name should not have been included in the Complaint. Both Parties view registering multiple domains akin to bidding on trademarked Google Adwords. Neither practice is likely to be confusing nor has it been shown in this dispute anyone was ever confused, although that is the underlying justification for this Complaint. In 1-800 Contacts, Inc. v. Lens.com, Inc., 2008 U.S. Dist. LEXIS 99940 (D. Utah Dec. 9, 2008) the court found: “Perhaps in the abstract, one who searches for a particular business with a strong mark and sees an entry on the results page will naturally infer that the entry is for that business,” the panel held. “But that inference is an unnatural one when the entry is clearly labeled as an advertisement and clearly identifies the source, which has a name quite different from the business being searched for.” The foregoing was recently upheld by the 10th Circuit Court of Appeals. United States Court of Appeals for the Tenth Circuit 1-800 Contacts, Inc. v. Lens.com, Inc. Filed July 16, 2013. The same decision begins, “The Lanham Act, 15 U.S.C. §§ 1051–1127, prohibits the infringement of trademarks (used to identify products) and service marks (used to identify services). It was enacted in 1946, but because it speaks in general terms it can be applied to technologies unimagined at the time of enactment. One such technology, the Internet, has created a number of challenging issues.” Respondent agrees, and believes that until such time as all similar concerns are fully adjudicated at the Federal level no individual in or outside the legal system can make a sound decision as to what is or is not confusing or what is or is not allowed regarding a domain name dispute such as this. In the meantime Respondent would agree to not link <contactlenskings.com> to Respondent’s <contactlens.com> website.
Complainant owns U. S. service mark CONTACT LENS KING, Reg. No. 3,539,216, Reg. Date December 2, 2008, filed on January 25, 2008, covering mail order and telephone order services in the field of contact lenses and related products; and computerized online ordering services featuring contact lenses and related products, in International Class 35. According to this registration the date of first use/first use in commerce is April 20, 2004.
Complainant submitted evidence showing continuous and exclusive use of the service mark CONTACT LENS KING for approximately nine years since 2004.
The disputed domain name <contactlensesking.com> was registered on August 21, 2006. The disputed domain name <contactlenskings.com> was registered on August 8, 2007.
It appears that presently the disputed domain names are inactive. On January 29, 2014, the Panel tried to connect its browser to the websites at the disputed domain names and obtained two legends, stating, “Server not found. Firefox can't find the server at www.contactlenskings.com”, and “Server not found. Firefox can't find the server at www.contactlensesking.com.”
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.
Complainant has shown to the satisfaction of the Panel that it has trademark rights in the CONTACT LENS KING federal mark No. 3,539,216. The disputed domain name <contactlensesking.com> only differs from Complainant`s mark in that its component “lenses” is in the plural where in Complainant’s mark “lens” is in the singular. The component “kings” in the disputed domain name <contactlenskings.com> is in the plural while Complainant’s mark has it in the singular (“king”). Also, in both disputed domain names the “.com” gTLD is added. In the Panel’s opinion, these minor differences are inapt to distinguish the disputed domain names from Complainant’s mark.
Respondent argues that the terms ‘contact lens’ and ‘contact lenses’ are entirely generic and cannot of themselves be trademarked, and that as part of Complainant’s filing for its CONTACT LENS KING trademark, Complainant had to disclaim the term ‘contact lens’ on the grounds it was completely generic or it would not have been granted the trademark. The Panel believes that this argument does not hold because trademarks issued by the USPTO are presumed to be valid until cancelled, and there is no evidence of cancellation of Reg. No. 3,539,216. One must not forget that CONTACT LENS KING is a composite mark, so that the fact that one of its components is disclaimed does not diminish the fact that, as a whole, it is a valid mark.
Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant’s CONTACT LENS KING mark.
The fact that the disputed domain names were registered before the filing and registration dates of U.S. service mark CONTACT LENS KING Reg. No. 3,539,216 does not alter the Panel’s finding on confusing similarity, since the well-established test for the requirement of Policy ¶ 4(a)(i) is a straightforward comparison between the complainant’s mark, whatever its date of registration or filing, and the disputed domain name. The date of registration of the disputed domain names certainly has a bearing on the requisite of registration in bad faith; this issue is examined below.
It is well established that a complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to the respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant contends that Respondent is not commonly known by the disputed domain names, and that it has not authorized Respondent to register them. Also, Complainant contends that until recently, the websites at the disputed domain names redirected to Respondent’s webpage at the website <contactlens.com>, or contained links that brought users to product pages at <contactlens.com>, at which Respondent offers its own goods for sale. Alternatively, the disputed domain names were redirected to a parking website including links to Respondent’s website <contactlens.com>. Complainant further contends that this redirection, parking and posting of links is not a use in connection with a bona fide offering of goods or services pursuant to UDRP Paragraph 4(c)(i), nor a legitimate noncommercial or fair use under UDRP Paragraph 4(c)(iii). Complainant also argues that the fact that the disputed domain names were parked in a parking site shows Respondent’s lack of rights or a legitimate interest in the disputed domain names. In the Panel’s opinion, these contentions and supporting evidence of Complainant, considered together, are apt to constitute a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names.
For its part, Respondent contends that “contact lens” and “contact lenses” are generic terms. Apparently Respondent is suggesting that it has a right or legitimate interest in using these terms in their generic meaning. However, Complainant has shown that Respondent registered and used the disputed domain names in full, as composite expressions, that is including the terms “king” and “kings,” in order to mislead Internet users looking for Complainant, and drive Internet traffic to its own website, where it offers products in competition with Complainant. Accordingly, the Panel cannot accept Respondent’s argument based in the “generic” character of the disputed domain names.
Since Respondent does not present any other argument in its own favor, the Panel concludes that Complainant made out its case, that Respondent lacks any rights or legitimate interests in the disputed domain names.
It is well-established that a finding of registration in bad faith requires that a respondent be aware of, and have the complainant’s mark in mind (targeting) at the time of registering the disputed domain name. In the instant case, Respondent registered the disputed domain names in 2006 and 2007, before Complainant applied for the CONTACT LENS KING mark in January 2008. This might lead a panel to conclude that there was no registration in bad faith since the respondent could reasonably not have known of the complainant’s mark at the time of registering the domain name. However Complainant submitted uncontested evidence to the satisfaction of the Panel, showing continuous and exclusive use of the service mark CONTACT LENS KING since 2004, as follows:
- Since April 2004, Complainant has been offering mail order, telephone order and computerized online ordering of contact lenses and related products, using the mark to identify itself as the source of those goods and services.
- Complainant registered its domain name <contactlensking.com> on October 10, 2003.
- Since at least 2004, Complainant has, through an affiliate, sold contact lenses and related products via the website <contactlensking.com>.
- Complainant has made substantial investments in its CONTACT LENS KING mark, including payment of tens of thousands of dollars each year since 2004 to promote its advertisements using Google AdWords. In total, Complainant has spent over $2 million on its Google AdWords advertising since 2004.
From this evidence, the Panel concludes that by the time Respondent registered the disputed domain names, Complainant had established common law rights in the CONTACT LENS KING mark, which had by then acquired secondary meaning, prior to its USPTO filing and registration in 2008. This means that Respondent, a competitor of Complainant in the business of online selling of contact lenses, could reasonably not have ignored, and most likely knew of and targeted, its competitor’s mark CONTACT LENS KING when it registered the confusingly disputed domain names, i.e., Respondent registered the disputed domain names in bad faith. See Sittercity Inc. v. Domain Administrator, FA 1450145 (Aug. 15, 2012) (“In this case, Respondent registered the domain name on November 27, 2004, which is some considerable time after Complainant began using its mark on September 15, 2001. While Respondent claims it registered the disputed domain name before Complainant acquired rights to the mark, this Panel finds to the contrary (even though Respondent acquired the disputed domain name (November 27, 2004) before Complainant filed its application with the USPTO on January 3, 2005).”).
As to use in bad faith, Complainant has shown that Respondent first redirected the disputed domain names to its website <contactlens.com>, at which Respondent offers contacts lenses and other goods for sale in competition with Complainant. Later, the disputed domain names resolved to a parking page containing links to products offered on Respondent’s website <contactlens.com>. The Panel believes that both uses of the disputed domain names reveal Respondent’s intent to unduly extract profit from the confusion created among Internet users presumably looking for Complainant’s services and products on websites at the disputed domain names. Thus, the Panel agrees with Complainant that Respondent, in using the disputed domain names as above described, has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location, which is a circumstance of registration and use in bad faith of the disputed domain names pursuant to Policy paragraph 4(b)(iv).
For these reasons, the Panel finds that the disputed domain names were registered and are being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <contactlensesking.com> and <contactlenskings.com> domain names be TRANSFERRED from Respondent to Complainant.
Roberto A. Bianchi, Panelist
Dated: January 30, 2014
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