Taojing International Limited and Zenni Optical, Inc. v Casey Lewis
WIPO Case No. D2022-2934
•14-11-2022
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Taojing International Limited and Zenni Optical, Inc. v. Casey Lewis
Case No. D2022-2934
1. The Parties
The Complainants are Taojing International Limited, Hong Kong, China and Zenni Optical, Inc., United
States of America (“United States”), represented by Green & Green, United States.
The Respondent is Casey Lewis, Canada.
2. The Domain Name and Registrar
The disputed domain name <zeni.exchange> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2022.
On August 9, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 11, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on August 31, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on September 9, 2022.
The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 15, 2022. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2022. The Response due date was extended to
October 24, 2022 as requested by the Complainant. The Center received informal communications from the notified the Commencement of Panel Appointment Process to the Parties on November 7, 2022.
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The Respondent’s email dated November 8, 2022 requested an extension of the due date for the Response
until November 10, 2022. The Center advised the Respondent, in accordance with paragraph 5(e) of the appear to be any exceptional circumstances, the period for the Response would not be extended.
The Center appointed Steven A. Maier as the sole panelist in this matter on November 9, 2022. The Panel
finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and
Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the
Rules, paragraph 7.
The Panel notes that the Complaint as filed (being the fourth amended Complaint) originally included four other disputed domain names in addition to the disputed domain name in this proceeding. Those four other disputed domain names were in the common ownership of a party other than the Respondent and were withdrawn from the proceeding following a settlement agreement between the relevant parties. The prior inclusion of these other disputed domain names is relevant to the communications received from the Respondent as further referenced below.
4. Factual Background
The Complainant Taojing International Limited (“Taojing”) is a corporation registered in Hong Kong, China.
The Complainant Zenni Optical, Inc (“Zenni Optical”) is a corporation registered in California, United States.
Taojing is the owner and Zenni Optical a licensee of the trademark registrations referred to below. For
convenience, Taojing and Zenni Optical will be referred to collectively as “the Complainant” in the remainder
of this Decision.
The Complainant is the owner of trademark registrations for the marks ZENNI and ZENNI OPTICAL, including for example the following:
- United States trademark registration number 4345783 for the word mark ZENNI, registered on June 4,
2013 for goods comprising “Eyeglasses; Frames for eyeglasses and pince-nez; Spectacles” in International
Class 09.
- United States trademark registration number 3597735 for the word mark ZENNI OPTICAL, registered on
March 31, 2009 for goods and services comprising “Eyeglass cases; Eyeglass frames; Eyeglass lenses;
Eyeglasses; Reading eyeglasses” in International Class 09 and “On-line retail store services featuring
eyeglasses” in International Class 35.
The disputed domain name was registered on May 2, 2018.
The Complainant exhibits evidence that the disputed domain name has resolved to a Registrar-operated
“parking page” website headed “zeni.exchange” and which appears to comprise sponsored links. The links
are of significance in this case and are as follows:
“Zenni Eyeglasses
Zenni Optical
Zenni Optical Glasses
Zenni
Eyeglasses
Order Wines Online
Optical Glasses
Wine to Buy Online
Wine Delivered”
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The website concludes with a disclaimer stating “The Sponsored Listings displayed above are served
automatically by a third party. Neither Parkingcrew nor the domain owner maintain any relationship with the
advertisers.”
5. Parties’ Contentions
A. Complainant
The Complainant submits that it is one of the world’s leading retailers of eyeglasses, having sold over 20
million pairs of mostly prescription glasses. It exhibits evidence of media coverage relating to its services
and business profile. It also provides evidence of its online retail operations at “ and
“
The Complainant submits that the disputed domain name is identical or confusingly similar to its trademarks
ZENNI and ZENNI OPTICAL. It contends in particular that the term “zeni” is identical to its mark ZENNI, but for the omission of one letter “n” which is a common typing error, and that it has a similar look and feel to the
ZENNI trademark. It further submits that including of the term “exchange” will lead Internet users to believe
that the disputed domain name links to a website for exchanging the Complainant’s eyeglasses.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It contends that the Respondent has no trademark or other rights in respect of the ZENNI mark and is making neither bona fide offering goods or services nor legitimate noncommercial or fair use of the disputed domain name. The Complainant says that using the disputed domain name to link to a parking
page comprising pay-per-click (“PPC”) links cannot amount to legitimate use of the disputed domain name,
since certain of these links compete with the Complainant and seek to capitalize on its goodwill. It refers to
the Respondent’s website as “an online shopping mall of the Complainant’s competitors as catalogs of
eyeglass sellers for the user.” It exhibits in this regard pages from the websites to which the PPC links
resolve, which include online eyewear retailers named “Eyebuydirect”, “Glassesshop.com”, and “Warby
Parker”, as well as pages from the Complainant’s own website. The Complainant adds that the other PPC
links, to e.g. “Wines Delivered”, have no connection with the disputed domain name.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. It states that its ZENNI and ZENNI OPTICAL trademarks are widely known and that the Respondent has
carefully engineered the disputed domain name to “typosquat” upon those trademarks. The Complainant
submits that the deliberately confusing use of a domain name to lure Internet users to a website is in itself
evidence of bad faith. The Complainant further submits that the positioning of the disputed domain name on
the Respondent’s webpage, together with the fact that certain of the sponsored links refer to, and on
occasions link to, the Complainant itself, creates the impression that the Complainant is endorsing or
sponsoring those links, which are in fact to its competitors’ websites. The Complainant states that the
Respondent is using the disputed domain name to exploit the reputation of the Complainant and cannot disclaim responsibility for the relevant PPC links by claiming they are automatically generated.
The Complainant requests the transfer of the disputed domain name.
B. Respondent
The Respondent did not file a formal Response to the Complainant’s contentions. In his emails referred to
above, however, he refers to the other disputed domain names which were originally included in the
proceedings, all of which referred to finance, and questions why an eyeglass company has a claim to domain
names of this nature. He also contends that “zeni” and the Complainant’s trademark ZENNI are completely
different terms, the former being a Japanese word for “money” and the latter being an invented term. The
Respondent seeks clarification of whether the Complainant claims trademark rights in “zeni” or only ZENNI.
He states that he is being subjected to a “domain hijacking attempt” by the Complainant.
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6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it has registered trademark rights in the mark ZENNI. The disputed
domain name comprises the term “zeni” together with the generic Top-Level Domain (“gTLD”) “.exchange”.
The Panel finds that the term “zeni” is both visually and aurally similar to the Complainant’s trademark
ZENNI. Further, while the gTLD may be disregarded for the purposes of paragraph 4(a)(i) of the Policy, the
Panel considers that this would not prevent a finding of confusing similarity between the disputed domain
name and the Complainant’s trademark. The Panel therefore finds that the disputed domain name is
confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the
Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the
Respondent has failed to rebut the Complainant’s prima facie case and has not submitted any relevant
explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate
interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph
4(c) of the Policy or otherwise.
Furthermore, the Panel finds that the Respondent has used the disputed domain name for the purpose of a parking page containing PPC links, including those which name the Complainant, which resolve to the
websites of competitors of the Complainant and in some cases to the Complainant’s own website. While it
may be legitimate to use a domain name comprising a “dictionary” word to offer goods or services genuinely
related to that term and not to target a third-party trademark[1], the Panel does not find the term “zeni” to be a
dictionary word or that the Respondent has used it in connection with any such alleged meaning, e.g. for the purpose of goods or services relating to Japanese money. Instead, the Panel finds that the Respondent has used the disputed domain name for the purposes of a website which is likely to confuse Internet users into
believing it is owned or operated by, or otherwise legitimately associated with, the Complainant, in order to
redirect such Internet users to competing websites and others unrelated to the Complainant. This cannot
constitute either bona fide commercial use or legitimate noncommercial or fair use of the disputed domain
name and the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the
disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy includes the conjunctive requirements that the Respondent must both have
registered and used the disputed domain name in bad faith. Based on the Respondent’s use of the disputed
domain name and his failure to provide any credible explanation for his registration and use of the disputed domain name, the Panel infers that the Respondent is more likely than not to have registered the disputed
domain name in the knowledge of the Complainant’s trademark and business with the intention of using it for
the purpose of the PPC links referred to above.
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The Panel repeats its findings set out above with regard to the Respondent’s use of the disputed domain
name. The Panel finds not only that the Respondent has used the disputed domain name to attract Internet
users to its website, but also that it has named the Complainant on that website and included links to the
Complainant’s own website, with the effect of exacerbating the confusion between the Complainant and its
trademarks and the PPC links offered by the Respondent. The Panel endorses the Complainant’s
submission that the Respondent cannot disclaim responsibility for the material appearing on his website by claiming (as is stated on the website itself) that the relevant links are automatically generated and that the relevant advertisers are not connected with the Respondent[2].
The Panel therefore finds particular that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of
confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its
website or of a product or service on its website (paragraph 4(b)(iv) of the Policy).
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <zeni.exchange>, be transferred to the Complainant.
/Steven A. Maier/
Steven A. Maier
Sole Panelist
Date: November 14, 2022
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