Generic Top Level Domain Name (gTLD) Decisions

Hudson Optical Corporation
COMPLAINANT,

vs.

Vision Corporation
RESPONDENT.

DECISION
Forum File No.: FA0004000094415

The above entitled matter came on for an administrative hearing on June 12, 2000 before the assigned panel on the Complaint of Hudson Optical Corporation (“Hudson”), hereafter “Complainant”, against Vision Corporation (“Vision”), hereafter “Respondent”.  Complainant was represented by: Paul E. Fahrenkopf, Barnes & Thornburg.  Respondent was represented by Michael B. Stewart, Rader, Fishman & Graver PLLC.  Upon the written submitted record, the following  DECISION is made:

PROCEDURAL FINDINGS

Domain Names:                                     EYEVANTAGE.COM;

EYEVANTAGE.NET

& EYEVANTAGE.ORG

Domain Name Registrar:                         Network Solutions, Inc.

Domain Name Registrant:             Vision Corporation

Date of Domain Name Registration:          January 3, 2000

Date Complaint Filed:                     April 7, 2000

Date of Commencement of Administrative Proceeding in accordance with Rule 2(a)^[1] and Rule 4(c):  April 10, 2000

Respondent’s Response in accordance with Rule 5(a): May 1, 2000^[2]

After reviewing the Complaint, and determining it to be in administrative compliance, the National Arbitration Forum (The Forum) forwarded the Complaint to the Respondent on April 10, 2000 in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c).  In compliance with Rule 4(d), The Forum immediately notified Network Solutions, the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainant that the administrative proceeding had commenced.  Respondent submitted a response to The Forum pursuant to Rule 5(a) on May 1, 2000.

On January 3, 2000, Respondent registered the domain names “EYEVANTAGE.COM”, “EYEVANTAGE.NET” and “EYEVANTAGE.ORG” with Network Solutions, the entity that is the Registrar of the domain names.  On April 7, 2000, Network Solutions verified that Respondent is the Registrant for the above domain names, and that further by registering its domain names with Network Solutions, Respondent agreed to resolve any dispute regarding its domain names through ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain Name Dispute Resolution Policy.

FINDINGS OF FACT

1. Complainant’s business was established in 1936 and has been engaged in the business of manufacturing prescription eyeglasses, sunglasses and frames.  The business has expanded to customers in 50 states and six countries.  Complainant filed a U.S. trademark application on August 26, 1999 to register the mark EYEVANTAGE for “prescription eyeglasses, sunglasses and frames”.  Complainant filed an identical Canadian trademark application on January 25, 2000.  By treaty, the Canadian application for a trademark will be considered to have been filed as of the earlier U.S. registration filing, August 26, 1999.  The applications were filed as “intent to use” applications and the record does not reveal any use of the mark prior to the filing of the applications.

2. Although Complainant alleges some minimal use of the Eyevantage mark as early as August 25, 1999, the April 4, 2000 filing with the U.S. Patent and Trademark Office alleges use as of March 7, 2000.

3. Respondent Vision Corporation and Eyevantage.com are subsidiaries of TLC Laser Eye Centers, Inc. a provider of laser vision care.

4. Respondent registered the domain names EYEVANTAGE.COM, EYEVANTAGE.NET and EYEVANTAGE.ORG on behalf of Eyevantage.com Inc. on January 3, 2000.

5. Eyevantage.com is a Delaware corporation which is an internet and web-based company providing e-commerce solutions to manufacturers, suppliers, service providers, distributors and users of health care products/services.

6. In excess of $150,000 has been invested in the development, promotion and marketing of one or more of the EYEVANTAGE domain names.  As of May 1, 2000, Eyevantage.com has received almost 26,000 hits.

7. Eyevantage.com Inc. has used eyevantage.com in interstate and international commerce since January 10, 2000.  Eyevantage.com filed a U.S. trademark application on January 28, 2000, a Canadian trademark application on January 14, 2000 and a European Union trademark application on March 2, 2000.

8. Respondent and Eyevantage, despite complainant’s contention, do not appear to sell eyewear on the website.

9. Complainant’s prayer for relief requests the transfer of the three domain names from respondent to complainant.

CONCLUSIONS

The undersigned certify that they have acted independently and have no known conflict of interest to serve as the arbitrators in this proceeding.  Having been duly selected and being impartial, the undersigned make the findings and conclusions herein.

1. Complainant and Eyevantage.com Inc. each have pending various trademark applications which this panel can not, and will not pass upon.  At this stage, the ownership of the trademark EYEVANTAGE remains to be determined by more appropriate bodies.

2. The trademark issue is not determinative in that the complainant has not met its burden in establishing the final two elements required in order to secure the transfer of the domain names.

3. Before proceeding further, Complainant noted that the Respondent is Vision Care and the domain names were purportedly registered on behalf of a sister corporation, Eyevantage. com Inc. which is in fact the party which has made substantial use of the domain, has invested substantially in it and which engages in business through it.  Although it would appear to be the better practice for Eyevantage.com Inc. to be the registered owner rather than a sister corporation, we do not find this a sufficient basis standing alone to warrant the relief sought by the Complainant.

4. Respondent has demonstrated a legitimate interest in the domain names, albeit for its sister corporation.  The EYEVANTAGE.COM website has been active and engaged in commerce since January 10, 2000 with almost 26,000 hits to the site by May 1, 2000.  Given the nature of the word “eyevantage” and the status of complainant’s trademark applications respondent is not engaged in cybersquatting.

5. Complainant has failed to demonstrate any bad faith on the part of Respondent in registering the domain names.  The domain names were not listed for sale, have never been offered for sale nor is there any evidence that the domain names were registered simply to extract a payment from the Complainant.  Furthermore, the record is barren of any pattern by Respondent of registering any other trademarks as domain names simply for resale.

DECISION

Based upon the above findings and conclusions it is decided as follows:

THE UNDERSIGNED FIND FOR THE RESPONDENT.

The Respondent shall not be required to transfer to the Complainant the domain names EYEVANTAGE.COM, EYEVANTAGE.NET and EYEVANTAGE.ORG.

Dated: June 27, 2000,

Anthony J. Mercorella, JSC (ret), Chair