1-800 Contacts, Inc. v. Piyush Tiw
Claim Number: FA1704001728280
Complainant is 1-800 Contacts, Inc. ("Complainant"), represented by Dawn M. David of Holland & Hart LLP, Utah, USA. Respondent is Piyush Tiw ("Respondent"), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <1800contacts.online>, registered with NameCheap, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 21, 2017; the Forum received payment on April 21, 2017.
On April 21, 2017, NameCheap, Inc. confirmed by email to the Forum that the <1800contacts.online> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 April 26, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 2017 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@1800contacts.online. Also on April 26, 2017, 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.
An email message was received from Respondent on April 26, 2017, offering to transfer the disputed domain name to Complainant "at cost." Complainant replied, stating a willingness to settle the matter through transfer of the domain name, but not to pay any cost associated with the transfer. In an email message received on May 15, 2017, Respondent again offered to transfer the domain name, but stated that he was unable to provide an authorization code because of a transfer lock imposed as a result of the dispute. Respondent repeated his offer to transfer the domain name in yet another email message, dated May 26, 2017. However, the Parties do not appear to have come to a final agreement to settle
the matter before the Panel.
Having received no formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 25, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 a formal response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the largest online retailer of contact lenses in the United States, with two thirds of all online sales and more than 8 million customers. Complainant has used the 1800CONTACTS mark in connection with this business since its founding in 1995. The mark is registered in the United States in both standard character and stylized form. Complainant asserts that the mark has become famous as a result of Complainant's extensive sales and marketing.
In August 2016, Respondent registered the disputed domain name <1800contacts.online>, using a private registration service in an apparent attempt to conceal his identity. Complainant states that Respondent has never been associated or affiliated with Complainant, and has never been authorized to use Complainant's mark. The disputed domain name does not resolve to a website.
Complainant contends, on the above grounds, that the disputed domain name is identical or confusingly similar to Complainant's mark; that Respondent has no rights or legitimate interests in the domain name; and that the domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 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 (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.").
The disputed domain name <1800contacts.online> corresponds to Complainant's 1800CONTACTS mark, adding only the ".online" top-level domain, making it identical to Complainant's mark for purposes of paragraph 4(a)(i) of the Policy. See, e.g., Nutri/System IPHC, Inc. v. Jushita Rahman, FA 1689153 (Forum Sept. 19, 2016) (finding <nutrisystem.online> identical to NUTRISYSTEM); see also 1-800 Contacts, Inc. v. Imagemakers1, DTV2004-0003 (WIPO May 14, 2004) (finding <1800contacts.tv> confusingly similar to 1800CONTACTS). The Panel so finds.
Under the Policy, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's well-known mark without authorization, and Respondent does not appear to have made any use of the domain name. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that the domain name was acquired "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 [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
These instances set forth in paragraph 4(b) are illustrative rather than exhaustive, and bad faith may be found based upon other circumstances in appropriate cases. See Hotel Plaza Ltd., Parkroyal Hospitality Management Pte Ltd. (PHM) v. DomainWorks Inc./PARKROYAL.COM c/o Whois IDentity Shield/Vertical Axis, Inc., D2008-1760 (WIPO Mar. 18, 2009). Furthermore,
a domain name may be so closely connected with a well-known trademark that its very use by someone with no connection to the trademark owner may support an inference of bad faith. See, e.g., U.S. Smokeless Tobacco Company LLC v. Na Shan, FA 1713085 (Forum Feb. 24, 2017); Altria Group, Inc. & Altria Group Distribution Co. v. Yu Fan / Fanyu, FA 1683563 (Forum Aug. 18, 2016).
Respondent does not appear to have made any active use of the disputed domain name. In the absence of any explanation from Respondent, the Panel considers it reasonable to infer that Respondent registered the domain name intending to use it in a manner calculated to create and exploit confusion with Complainant's mark, most likely either by selling the domain name or by using it to attract Internet users seeking Complainant, and that Respondent is maintaining the domain name for that purpose. See, e.g., U.S. Smokeless Tobacco Company LLC v. Na Shan, supra (finding bad faith registration and use of <skoal.site> under similar circumstances). Respondent's use of a privacy registration service to conceal his identity, although not itself dispositive, is a further indication of bad faith. See, e.g., Hammy Media, Ltd. & xHamster IP Holdings Ltd v. WhoisProtectService.net / PROTECTSERVICE, LTD., FA 1725445 (Forum May 10, 2017). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <1800contacts.online> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: May 29, 2017
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